Infringement of trade marks and passing off can lead to permanent injunction, rendition of accounts of profits, damages, and delivery up of infringing goods.

MANMOHAN, J.

1. Present suit has been filed for permanent injunction restraining infringement of trade mark, passing off, rendition of account of profits, damages, delivery up, etc. against the defendant. The prayer clause in the present suit is reproduced hereinbelow:-

“(a) An order for permanent injunction restraining the defendants, its partners, proprietors, servants, agents and all others in active concert with them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in infringing products bearing the plaintiff’s SanDisk trademarks being SANDISK, and the Red Frame Logo;

(b) An order for permanent injunction restraining the Defendant, its partners, proprietors, servants, agents and all others in active concert with them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in products in packaging that is identical to the plaintiff no. 1’s product packaging so as to result in an act of passing off its goods as those of Plaintiff No. 1 or doing business in a manner as may suggest a connection of association with the Plaintiff;

(c) An order for rendition of accounts of profits directly or indirectly earned by the Defendant from the infringing activities and wrongful conduct and a decree for the amount so found due to be passed in favour of the Plaintiffs;

(d) An order for delivery up to the Plaintiffs by the Defendant of all infringing goods, advertising material, blocks, dies etc. bearing the Plaintiffs’ trademarks and/or product literature that appears on its packaging for the purposes of erasure/destruction;

(e) A sum of Rs.1,00,01,000/- for a decree of damages as valued for the purposes of this suit towards loss of sales, reputation and goodwill of the Plaintiffs’ trademarks caused by the activities of the Defendants;

(f) An order as to the costs of the proceedings;

(g) Any further order as this Hon’ble Court may deem fit and proper in the facts and circumstances of the case.”

2. Vide order dated 13th October, 2017, this Court granted an ex parte ad interim injunction in favour of the plaintiffs and appointed a Local Commissioner to visit the premises of the defendant. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

“9. Accordingly, till further orders, the defendant, its partners, proprietors, servants, agents and all others in active concert with them are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly in dealing in infringing products bearing the plaintiffs’ trademarks SANDISK, and the Red Frame logo.”

3. The Local Commissioner visited the premises of the defendants on 17th October, 2017 and seized 493 units of microSDHC cards bearing the plaintiffs’ SANDISK trademark/product packaging. The seized products were sealed by the Local Commissioner and were given on Superdari to the defendant. The relevant portion of the Local Commissioner’s report is reproduced hereinbelow:-

“10. An inventory of the impugned products was made and we recovered 493 pieces. A list of product particulars is provided below:

The said products were kept in a sealed carton. I have signed on all the sides of the said carton to ensure that the products cannot be tampered by the Defendant. The Plaintiff’s counsel supplied the Defendant with suit papers in the matter.”

4. Vide order dated 03rd April, 2018, the defendant was proceeded ex parte and the ad injunction was confirmed till the disposal of the suit.

5. The relevant facts of the present case are that the plaintiff No. 1, a company founded in 1998, is one of the world's largest dedicated providers of flash memory storage solutions under the house mark SANDISK and has