Summary judgment can be granted in commercial disputes when the defendant lacks real prospects of successfully defending the claim.

JUDGMENT

Amit Bansal, J. (Oral)

I.A.5297/2023 (O-XIII A R-3 & 6(1)(a) of CPC for Summary Judgment) & CS(COMM) 992/2018

1. The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the trademark and copyright of the plaintiffs, passing off and other ancillary reliefs

PLEADINGS IN THE PLAINT

2. The case set up by the plaintiffs in the plaint is as follows:

2.1. Plaintiff no.1, SanDisk LLC is an entity existing under the laws of the state of Delaware, USA. The plaintif no.1 is the registered proprietor of the trademarks SanDisk, [IMG] (logo), the red frame logo [[IMG]], SanDisk Ultra and Cruzer Blade (hereinafter `San Disk trademarks'). Plaintiff no.2, SanDisk India Device Design is a sister concern of the plaintiff no.1 and is the registered user of the SanDisk trademarks. The plaintiffs design, develop and manufacture data storage solutions in a range of form factors using flash memory, controller and firmware technologies.

2.2. The plaintiffs are the registered proprietor of the trademark SanDisk and SanDisk formative marks in Class 9 of the Trade Marks Act, 1999. Details of the plaintiffs SanDisk trademarks registered in India have been tabulated in paragraph no.15 of the plaint. The earliest registration of the plaintiffs. SanDisk mark is of 14th November, 2003. The said marks of the plaintiffs are also registered by the plaintiff no.1 in various foreign countries.

2.3. The plaintiff no.1 sells its memory cards in a unique and distinct packaging. The packaging of the plaintiffs qualifies as an `original artistic work' within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiff is entitled to the exclusive rights in the same.

2.4. The plaintiff no.1 has been selling its products in the Indian market since 2005. It is further stated that approximately 3,00,000 storefronts worldwide stock and sell the plaintiffs' products and the plaintiffs spend hundreds of millions of dollars in research and development of their products and on advertising.

2.5. In June 2018, the plaintiffs discovered that some unauthorised third-parties were marketing and selling counterfeit micro SDHC cards and USB flash drives bearing the identical trademarks and packaging as the plaintiffs' products marketed and sold under the trademarks `SanDisk' and `Cruzer Blade'. Pursuant thereto, the plaintiffs availed the services of an investigator, to ascertain the business activities of the defendant. The investigator purchased samples of the counterfeit products bearing the mark `SanDisk' and `Cruzer Blade' from the defendant. Photographs of the said counterfeit products have been filed long with the plaint.

2.6. Accordingly, the plaintiffs have filed the present suit.

PROCEEDINGS IN THE SUIT

3. This Court, vide order dated 5th July, 2018 granted an ex parte ad interim injunction in favour of the plaintiffs under I.A.8516/2018, restraining the defendant from dealing in any product or packaging bearing the plaintiffs' registered trademarks SanDisk, [IMG] (logo), the red frame logo [[IMG]], and Cruzer Blade. The relevant portion of the said order is as under:

"Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement is made out in favour of the plaintiffs and balance of convenience is also in their favour. Further, irreparable harm or injury would be caused to the plaintiffs if an interim injunction order is not passed.

Consequently, till further orders, the defendant, its proprietors/partners, servants, agents and all others in active concert with them are restrained from manufacturing, marketing, selling, offering for sale, advertising, directly or indirectly dealing in any product or any product packaging bearing the plaintiffs' registered trademarks SanDisk, the [IMG] logo, 'Cruzer Blade' and the Red Frame Logo and/or any mark/s or confusingly or deceptively similar in any manner whatsoever."

4. Vide the aforesaid order, a Local Commissioner wa