In the present case, Sandisk LLC has filed for permanent injunction restraining infringement of trademark and copyright, rendition of account of profits and damages against the defendants. Sandisk LLC is one of the world’s largest provider of flash memory storage solution and selling in India since 2005.
Plaintiffs possess not just common law trade mark rights but also trademark registrations for the mark SanDisk in more than 150 countries worldwide. Moreover, in India they have registered word mark and device marks in India including SanDisk house mark, logo and the Red Frame logo.
They have adopted to a unique packaging for selling its memory cards which consists of the following features –
- red product packaging with white lettering
- A “Red Frame Logo” which describes the capacity of the memory card on the top right corner.
- The Sandisk logo in a unique font in white lettering prominently at the bottom.
Plaintiffs stated that defendant no. 1 was engaged in marketing and selling of counterfeit microSDHC cards with identical trademarks and packaging along with a deceptively similar product bearing the mark ‘Zeenjer Digital’.
Local Commissioner has visited the premises of defendants 1 and 3 and seized 277 microSDHC cards and 73 microSDHC cards respectively bearing the plaintiffs’ SANDISK trademark packaging. Another Local Commissioner visited the premises of defendant no. 4 and seized 475 infringing products bearing the plaintiffs’ SANDISK trademark packaging. Another Local Commissioner visited premises of defendant 5 to 8 and seized the following –
|S. No.||Name of Defendant||Quantity of infringing goods seized and sealed|
|1.||Defendant no. 5||62 infringing/counterfeit SANDISK microSD, microSDHC cards and USB flash drives|
|2.||Defendant no. 6||6 infringing/counterfeit ‘SANDISK’ USB flash drives and 17 Zeenjer Digital microSD cards (bearing a deceptively similar products packaging as the Plaintiffs’ ‘SANDISK’ microSDHC/microSD cards)|
|3.||Defendant no. 7||6 infringing/counterfeit ‘SANDISK’ USB flash drives|
|4.||Defendant no. 8||144 infringing/counterfeit ‘SANDISK’ microSD adaptors.|
Delhi High Court observed that due to extensive use, the plaintiffs’ mark SANDISK, logo and Red Frame logo have acquired reputation and goodwill globally as well as in India.
Delhi High Court agreed that defendants are using the registered trade mark SANDISK and its product packaging to sell counterfeit products with a view to trade upon and benefit from the reputation and goodwill of the plaintiffs’ mark and pass off its services as that of the plaintiffs.
Further, Court agreed that use of the trademark SANDISK, logo and Red Frame logo used by defendants’ amounts to infringement of plaintiffs’ trademark which is bound to cause incalculable losses, harm and injury to the plaintiffs and immense harm to the public in general.
Court relied on M/s General Electric Company v Mr. Altamas Kha & Others and Microsoft Corporation v Yogesh Papat & Anr. to grant compensatory damages based on certain assumption of sales. However, Court denied punitive damages to the plaintiffs by relying on Super Cassettes Industries Private Limited v HRCN Cable Network and Hindustan Unilever Limited v Reckitt Benckiser India Limited.