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IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Western Digital Technologies Inc. - Appellant
Versus
Raaj Computer - Respondent
CS(Comm) 677 of 2019 & IAs 17475-76 of 2019
Decided On : 21-09-2022
Counterfeiting - Trade Marks - Trade Marks Act, 1999 - Sections 30(3), 30(4) - Infringement of trade marks, passing off goods, tampering with products, and unfair trade practices - Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd. & Anr, 2012 SCC OnLine Del 5172; Amway India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd. & Anr, 2019 SCC OnLine Del 9061 - The plaintiff, a renowned manufacturer of computer hard-disk drives, sought a permanent injunction against the defendant for selling infringing goods bearing the plaintiff's registered trade marks 'WESTERN DIGITAL' and 'WD'. The plaintiff proved infringement of its trade marks by the defendant through tampering with products, passing off old and used hard-disk drives as new, and counterfeiting the plaintiff's products. The court granted injunctive reliefs and awarded damages to the plaintiff, holding the defendant liable for unfair trade practices and dilution of the plaintiff's trade marks.
Fact of the Case:
The plaintiff, a leading computer hard-disk drive manufacturer, filed a suit seeking a permanent injunction against the defendant for selling infringing goods bearing the plaintiff's registered trade marks 'WESTERN DIGITAL' and 'WD'. The plaintiff proved that the defendant was involved in counterfeiting, tampering with products, and passing off old and used hard-disk drives as new, leading to deception, loss, and injury to consumers.
Finding of the Court:
The court found the defendant guilty of infringing the plaintiff's trade marks, passing off goods, tampering with products, and engaging in unfair trade practices. The court granted injunctive reliefs and awarded damages to the plaintiff, holding the defendant liable for dilution of the plaintiff's trade marks and unfair trade practices.
Issues: Infringement of trade marks, passing off goods, tampering with products, unfair trade practices, and liability for damages.
Ratio Decidendi: The defendant's actions constituted infringement of trade marks, passing off goods, tampering with products, and engaging in unfair trade practices, leading to deception, loss, and injury to consumers. The court relied on legal precedents to establish the defendant's liability and grant injunctive reliefs and damages to the plaintiff.
Final Decision: The suit was decreed in favor of the plaintiff, granting injunctive reliefs and awarding damages of Rs. 3,00,000/- (Rupees Three Lakh only) to the plaintiff, along with costs of the suit.
JUDGMENT
1. The present suit has been filed by the plaintiff seeking inter alia a decree of permanent injunction restraining the defendant, its proprietor, partners, representatives and/or others acting for and on its behalf from selling, offering for sale, advertising or otherwise dealing in infringing goods which bear the plaintiff's registered trade marks 'WESTERN DIGITAL'
, and/or 'WD' (hereinafter referred to as 'Western Digital trade marks')
FACTUAL BACKGROUND
2. It is the case of the plaintiff that the plaintiff-company was founded in April 1970 as 'General Digital', and in July 1971, it adopted its current name and trade mark 'WESTERN DIGITAL' as part of its corporate name. The plaintiff, a wholly-owned subsidiary of Western Digital Corporation, is one of the largest computer hard-disk drive manufacturers in the world.
3. The plaintiff is a world-renowned manufacturer and marketer of inter alia storage devices, media players, routers/switches/bridges, comprising of Original Equipment Manufacturer (in short, 'OEM')/ system manufacturer, desktop, and enterprise, solid state drives (in short 'SSDs'), software and mobile applications which are marketed and sold under the plaintiff's 'Western Digital trade marks'.
4. 'WESTERN DIGITAL' is the most essential feature of the plaintiff's corporate name, and is also used as a trade mark by the plaintiff-company, either as a standalone or as a conjunctive mark. The plaintiff's 'WD' logo, is which is its corporate logo, is present on all the labels and packaging of their goods.
5. The plaintiff has applied for and is the registered proprietor of the 'Western Digital trade marks' in India. The details of trade mark registrations granted in favour of the plaintiff in Class 5 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act') are as follows:
| Trade Mark | Number | Class | Date | Goods |
| WESTERN DIGITAL | 1345682 | 9 | March 18, 2005 | COMPUTER PRODUCTS, NAMELY, DISK DRIVES |
| WD | 1349235 | 9 | April 6, 2005 | COMPUTER PRODUCTS, INCLUDING, HARD DRIVES |
| WD | 1325732 | 9 | December 14, 2004 | COMPUTER PRODUCTS, NAMELY HARD DRIVES |
6. The plaintiff also owns and maintains several websites whose domain names contain 'WESTERN DIGITAL' or 'WD' and are used for marketing and selling goods bearing the 'Western Digital trade marks', the details whereof are given in paragraph 12 of the plaint.
7. The plaintiff submits that the Western Digital trade marks have been registered in many countries such as Australia, China, Singapore, Canada, the European Union, France, Hong Kong, New Zealand, Russia, Singapore, Switzerland, and the United States of America and the United Arab Emirates, to name a few. The plaintiff has provided details of the revenue earned by the plaintiff-company, up until the filing of the present suit, in paragraph 15 of the plaint.
8. The plaintiff further states that it has invested large sums of money in advertising and promoting the goods bearing the 'Western Digital trade marks' world-wide as well as in India. Since the year 2005, the plaintiff has spent more than Rs. 20 Crore to build the 'WESTERN DIGITAL' and 'WD' brands in India.
9. The plaintiff further asserts that they have been extensively advertised in all major international magazines including 'Wired', 'Rolling Stone', 'Fast Company', 'PC Adviser', 'PC Pro', 'Computer opper', and 'The Gadget Show Magazine', to name only a few. All these magazines are widely circulated and read in India as well. The 'Western Digital trade marks' are also regularly advertised in Indian publications as also on various television and satellite channels around the world.
10. The plaintiff claims that the goods manufactured and sold by them bearing the 'Western Digital trade marks' have been the recipient of numerous awards around the world from leading trade publications such as 'PC World'
Trademark owners can prevent unauthorized sales of altered goods bearing their marks, affirming the right to trade mark integrity and consumer protection.
The judgment establishes the application of summary judgment in cases where a party lacks substantive defense and the evidence supports the claim of infringement.
The impugned marks are deceptively similar to Plaintiff's registered marks, leading to public deception, and the Court passes a summary judgment in favor of the Plaintiff.
The main legal point established in the judgment is the entitlement of the plaintiff to a permanent injunction for passing off its mark 'SANDHI SUDHA' and the consideration of the defendants' non-rep....
The court established that the sale of counterfeit medical devices constitutes a grave offense endangering public health, warranting both compensatory and exemplary damages.
The central legal point established in the judgment is the infringement of a registered trademark under the Trademarks Act, 1999, and the entitlement to a permanent injunction and damages for the vio....
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