J U D G M E N T

SANJEEV NARULA, J. (Oral):

I.A. 3600/2023 (under Order XIII-A Rule 3 and 6(1)(a) r/w Section 151 of CPC seeking summary judgment)

1. The present suit, inter-alia, seeks permanent injunction restraining infringement of Plaintiff’s registered trademarks, copyright, passing off, rendition of accounts, damages, delivery-up, among other ancillary reliefs.

2. The facts narrated in the suit: Plaintiff – ‘SanDisk LLC’ (formerly ‘SanDisk Corporation’), a US corporation, registered in the State of Delaware, is engaged in the business of providing data storage solutions. It is one of the world’s largest dedicated providers of flash memory storage solutions under the house mark ‘SanDisk’ since the year-1995. Plaintiff’s data storage solutions pride themselves on incorporating essential components such as flash memory, controller, and firmware technologies. Plaintiff possesses trademark registrations in more than 150 jurisdictions apart from India, including USA, European Community, China, Canada, etc. In India, they have variety of word and device marks under registrations under house mark ‘SanDisk’, details whereof [hereinafter collectively “SanDisk Trademarks”]

are set out below:

3. Plaintiff has invested considerable time and currency to market and advertise products bearing the SanDisk Trademarks by way of campaigns and product launches specifically catering to the Indian market since the year- 2005. They sell their products in India through their country-wide network of official national distributers who have been authorised to import and distribute in the Indian market original SanDisk products directly from Plaintiff or their subsidiaries. This distribution network is selected to ensure that genuine products bearing SanDisk Trademarks and packaging are sold/

offered for sale at every offline retail outlet or e-commerce portals.

4. Plaintiff’s SanDisk Trademarks are extensively advertised and popularised and enjoy immense goodwill and cachet. High Court of Judicature at Bombay in Commercial IP Suit (L) No. 8349 of 2021 vide order dated 31st March, 2021,1 prima facie found the mark ‘SanDisk’ to have all attributes to qualify as a “well known trade mark”, under Section 2(1)(zg) r/w Section 11(6) of the Trade Marks Act, 1999 [hereinafter “Trademarks Act”]. They sell their memory cards and USB flash drives in a distinct and unique packaging, which constitutes as original “artistic work” within the meaning of Section 2(c) of the Copyright Act, 1957 [hereinafter “Copyright Act”], and thus, are entitled to exclusive rights therein under Section 14(c) of the Copyright Act. Key elements of Plaintiffs’ packaging include: (a) Red product packaging with white lettering; (b) Red frame logo [‘ ’] describing the capacity of the device; and (c) SanDisk logo [‘ ’]. 5. Plaintiff is aggrieved with Defendants indulging in unauthorized third- party distribution of counterfeit microSDHC cards and Cruzer Blade USB

1 Titled – SanDisk LLC v. Mahender and Anr.

Flash Drives bearing Plaintiff’s SanDisk Trademarks ‘SanDisk’, ‘

’, ‘Cruzer Blade’ and Red Frame Logo [‘ ’] with identical, packaging as that of Plaintiff’s products. In August 2019, Plaintiff gained knowledge of use of the said marks in Old Lajpat Rai Market. To ascertain the extent and identity of person(s) involved in manufacturing, selling, marketing and distributing counterfeit products using Plaintiff’s SanDisk Trademarks, an investigator was deputed to survey the market which revealed: Mr. Amit/ Defendant No. 1 [operator/ owner of display counter opp. Shop No. 695 at Old Lajpat Rai Market, Delhi - 110006 – hereinafter “Location 1”] and several other temporary/ makeshift est