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2014 Supreme(Del) 3397
IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
Sandisk Corporation - Appellant
Versus
Shivji Electronics - Respondent
CS (OS) No. 2642/2012
Decided On : 16-12-2014
For the Appellant :Shwetasree Majumder and Prithvi Singh, Advocate.
The unrebutted evidence of infringement and the entitlement to punitive damages in cases of trademark infringement and passing off.
Headnote:
Trademark Infringement - SanDisk - Trademark Act, 1999, Section 29 - Copyright Act, 1957, Section 51 - Indian Evidence Act, 1872, Section 65B
Fact of the Case:
The plaintiff filed a suit for permanent injunction against trademark infringement, copyright infringement, passing off, and other claims against the defendants, who were found selling counterfeit SanDisk products.
Finding of the Court:
The court found in favor of the plaintiff, granting permanent injunction and punitive damages of Rs. 5 lakhs, citing previous cases to support the award of punitive damages.
Issues: Trademark infringement, copyright infringement, passing off, and entitlement to punitive damages.
Ratio Decidendi: The court held that the plaintiff's evidence of infringement was unrebutted, leading to the acceptance of the plaintiff's claims. The court also relied on previous cases to support the award of punitive damages.
Final Decision: The plaintiff was granted a decree of permanent injunction and awarded punitive damages of Rs. 5 lakhs.
JUDGMENT :
Manmohan Singh, J.-
1. The plaintiff has filed a suit for permanent injunction restraining infringement of trademark "SanDisk", copyright, passing off, rendition of accounts of profits, damages and delivery up against the defendants.
2. The suit along with interim application was listed before Court on 31st August, 2012. After hearing, detailed ex-parte ad interim injunction order was passed restraining the defendants, their partners, servants, agents, representatives etc. from manufacturing, selling, offering for sale such products, that infringe the plaintiff's trademarks, 'sanDisk' and its 'sanDisk' logo and/or are identical or deceptively similar to the plaintiff's product packaged and sold under the trademark 'sanDisk', 'sanDisk' logo and 'Red Frame' logo.
3. Upon service of interim order, the defendants appeared. However, no written statement was filed and accordingly the right to file the written statement was closed vide order dated 18th April, 2013. The interim order dated 31st August, 2012 was made absolute vide order 18th April, 2013. Thereafter, the defendants stopped appearing and consequently, the defendants are proceeded ex parte vide order dated 22nd July, 2014.
4. Learned counsel for the plaintiff stated that their documents are mainly printout of electronic record and third party documents which shall be proved during the trial and there is no document to be put through admission/denial and hence, accordingly, admission/denial was concluded vide order dated 20th December, 2013.
5. Brief facts as stated in the plaint are that the plaintiff, a Fortune 500 and S & P 500 company, is the world's largest dedicated provider of flash memory storage solutions under the house mark 'sanDisk'. The plaintiff designs, develops and manufacturers data storage solutions in a range of form factors using the flash memory, controller and firmware technologies. It was founded in 1988 by Dr. Eli Harari and Sanjay Mehrotra, both non-volatile memory technology experts.
6. The plaintiff's brand 'sanDisk' is recognized around the world and the plaintiff's pioneering flash memory technology is integrated into products from top electronics companies and is marketed to both other equipment makers as well as direct to consumers.
7. The plaintiff creates transformational memory products at world-class manufacturing facilities that produce more than two million products each day. It serves three high growth mega markets- mobile, computing and consumer electronics - each of which increasingly requires flash memory to deliver compelling benefits to consumers and businesses.
8. The plaintiff became a publicly traded company on NASDAQ in November, 1995 and as of September, 2014, its market capitalization stood at USD 22 billion. Such is the demand for the plaintiff's products globally that as on date, approximately 3,00,000 storefronts worldwide stock and sell the plaintiff's products, taking the plaintiff's annual revenues in the year 2013 to USD 6.17 billion. The plaintiff's advertising, research and development spend in 2013 stood at USD 761.6 million which manifests in the immense brand recall for the plaintiff's trademark 'sanDisk' in the minds of customers worldwide. Within a mere 26 years, the plaintiff has grown from a three person Silicon Valley startup to a global leader with more than 5,500 employees.
9. The plaintiff's trademark 'sanDisk' has been registered in favour of the plaintiff in more than 150 countries of the world, both as a word mark as well as a label. In addition to the worldwide trademark registrations, the plaintiff is also the registered proprietor of both variety of words marks and device marks in India as elaborated in Annexure A to the plaint. The plaintiff's house mark 'sanDisk' is registered under Trademark Application No. 1249761 in Class 9 since 14th November, 2003 and the 'sanDisk' logo is registered under Trademark Application No. 1249762 in Class 9 since 14th November, 2003. The plaintiff also owns common
