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Judgment
120 paragraphs · 1,704 words,,,
Manmohan, J",,,
I.A. 15226/2018,,,
Present application has been filed under Order VIII Rule 10 read with XIII-A Rule 2 read with section 151 of the Code of Civil Procedure, 1908,",,,
for summary judgment.,,,
It is pertinent to mention that the present suit has been filed for permanent injunction restraining infringement of trade mark, copyright, passing off,",,,
rendition of account of profits, damages and delivery up. The prayer clause in the present suit is reproduced hereinbelow:-",,,
“47. In the light of the foregoing, it is most respectfully prayed that this Honâ€ble Court may be pleased to issue:",,,
a) An order for permanent injunction restraining the Defendants, their proprietors/ partners, servants, agents and all others in active concert with them",,,
from manufacturing, marketing, offering for sale, selling, advertising, directly or indirectly dealing in any product bearing the Plaintiffâ€s registered",,,
trademarks “SanDiskâ€, the  logo, “Cruzer Blade†and the “Red Frame Logo†and/or any mark/s confusingly or deceptively similar thereto,",,,
amounting to infringement of the Plaintiffs†registered trademarks as are mentioned in Paragraph 15 of the Plaint.,,,
b) An order for permanent injunction restraining the Defendants, their partners/proprietor, servants, agents and all others in active concert with them",,,
from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in product packaging identical or deceptively similar to the",,,
product packaging of the Plaintiffs†products bearing the registered,,,
trademarks†“SanDiskâ€,“CruzerBladeâ€,the",,,
 logo and the “Red Frame Logo†amounting to infringement of copyright of the Plaintiffs in the said product packaging.,,,
c) An order for delivery up to the Plaintiffs by the Defendants of all infringing goods, advertising material, blocks, dies etc. bearing the Plaintiffâ€s",,,
trademarks and/or product literature that appears on its packaging for the purposes of erasure/destruction.,,,
d) An order for rendition of accounts of profits directly or indirectly earned by the Defendants from their wrongful conduct and infringing activities and,,,
a decree for the amount so found due to be passed in favour of the Plaintiffs.,,,
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 Honâ€ble Court may deem fit and proper in the facts and circumstances of the case.â€,,,
Vide order dated 05th July, 2018 this Court granted an ex parte ad interim injunction in favour of the plaintiff and against the defendant. The",,,
relevant portion of the ex-parte injunction order is reproduced herein below:-,,,
“Consequently, till further orders, the defendants, their 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  logo, “Cruzer Blade†and the Red Frame Logo and/or any mark/s confusingly or",,,
deceptively similar in any manner whatsoever.â€,,,
On 05th July, 2018, this Court also appointed two Local Commissioners. During the local commissions, the defendant nos. 2 to 4 were found selling",,,
counterfeit products infringing the plaintiffâ€s trademark. Vide order dated 30th August, 2018, they were impleaded as defendants.",,,
Vide order dated 30th August, 2018 the defendant no.1 was proceeded ex-parte. Since none appeared for the defendant nos. 2 to 4 despite service,",,,
they were proceeded ex-parte on 31st October, 2018.",,,
The contentions and submissions advanced by learned counsel for the plaintiff are as under:-,,,
i. It is stated in the plaint that the plaintiff no.1 is a company founded in 1998 and is one of the world's largest dedicated provider of flash memory,,,
storage solutions under the mark SanDisk and has been directly selling its products in the Indian market since 2005. The plaintiff no.1 designs,",,,
develops and manufactures data storage solutions in a range of form factors using the flash memory, controller and firmware technologies. It is stated",,,
that the plaintiff no.2 is the wholly owned subsidiary of the plaintiff no.1 and is the registered user of the trademarks “SanDisk†the  logo and the,,,
Red Frame Logo.,,,
ii. It is stated in the plaint that the plaintiff no 1â€s pioneering flash memory technologies, which are marketed directly to retail consumers and",,,
enterprises as well as to other equipment makers, are integrated into and/or used in a wide range of consumer electronic devices, i.e. mobile phones,",,,
tablets, digital cameras etc. 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.,,,
iii. It is stated in the plaint that the plaintiffs possess both common law trade mark rights as well as trade mark registrations for the mark SanDisk in,,,
more than 150 countries worldwide. It is stated that the plaintiffs are also the registered proprietor of both, a variety of word marks and device marks",,,
in India, including the logo and the Red Frame logo, since 2013 and 2009 respectively, under Class 9 of the Trade Marks Act, 1999 and all these",,,
trademarks are valid and subsisting.,,,
iv. It is averred in the plaint that the plaintiff no.1 sells its memory cards in a unique packaging and some of the key elements which are common to its,,,
product packaging are reproduced hereinbelow:,,,
A. Red product packaging with white lettering.,,,
B. “Red Frame Logo†which describes the capacity of the memory card, on the top right corner.",,,
Particulars of
Products","Price of
Original
product","Quantity
discovered
during the
Local
Commission",Total Cost
8 GB Pen Drive,350,3,1050
16 GB Pen
Drive",500,2,"12,000
64 GB Pen,950,1,950
Drive,,,
8 GB microSD,350,7,"2,450
16 GB microSD,500,18,"9,000
32 GB microSD,600,13,"7,800
Total,,66,"33,250
Particulars of
Products","Price of
Original
product","Quantity
discovered
during the
Local
Commission",Total Cost
16 GB Ultra
microSD",700,33,"23,100
32 GB Ultra
microSD",800,47,"37,600
Total,,80,"60,700
Coordinate Benches of this Court in M/s General Electric Company v .Mr. Altamas Kha & Others CS(OS) No. 1283/2006 decided on 18.12.2008,,,
and Microsoft Corporation v. Yogesh Papat & Anr. 118 (2005) DLT 580 have granted compensatory damages based on certain assumptions of sales.,,,
The relevant portions of the said judgments are reproduced hereinbelow:-,,,
A) M/s General Electric Company v. Mr. Altamas Kha & Others CS(OS) No. 1283/2006 decided on 18.12.2008:,,,
“13. The next question which arises is of the claim of the plaintiff for damages. The Chartered Accountant engaged by the plaintiff by his,,,
unrebutted evidence assessed the loss caused to the plaintiff to be of Rs.25 lac. The claim for damages in the plaint was however confined to Rs.20,,,
lac only. As aforesaid, 23 Dehumidifiers were seized by the court commissioner from the premises of the defendants and were left in the superdari of",,,
the defendant No.1… The evidence of the plaintiff shows that the defendant was selling each Dehumidifier for approximately Rs.25,000/-. The",,,
defendant avoided to show his books of accounts also. From large consignment of 23 Dehumidifiers seized from the premises of the defendants, it is",,,
apparent that the defendant No.1 was dealing in large volumes. The cost of the Dehumidifiers to the defendants has not been established but,,,
considering that in the last few years, the return on investments in stocks and mutual funds itself has been in excess of 15%, it can safely be assumed",,,
that the defendants would be carrying CS(OS) No.1283/2006 Page 9 of 10 on business for returns in excess of return on investments in stocks and,,,
mutual funds. Following the said principle I assume that the defendants had a margin of 22 to 25% at least on each Dehumidifier i.e. of over,,,
Rs.5,000/- on each Dehumidifier. On this basis I consider the award of damages in the sum of Rs.10 lacs as appropriate.",,,
B) Microsoft Corporation v. Yogesh Papat & Anr. 118 (2005) DLT 580:,,,
“6. Plaintiff has also affidavit by way of evidence of Shri Sanjiv Sharma, a Chartered Accountant. Said evidence brings on record and proves the",,,
following:,,,
xxxx xxxx xxxx xxxx,,,
(iii) On the assumption that the defendant sell approximately 100 computers a year, which is purely assumptive, on the further assumption that keeping",,,
in view the operating systems Windows 1998, 400 computers would be loaded with said system, lesser sales of the other software, assumption would",,,
be that 200 computers and 20 computers respectively were loaded with the Software Office 2000 STD and Visual Studio 6.0, on the cost per unit of",,,
the licensed software estimated loss of business to the plaintiff comes to Rs. 64 lacs.,,,
xxxx xxxx xxxx xxxx,,,
Though assumptive i.e. based on the assumption of sale of 100 computers each year and on the basis of the popularity of the computer software,",,,
as also sold computers being loaded with the pirated software, loss of profit to the plaintiff in sum of Rs. 19.75 lacs stands established.",,,
It may be true that the financial loss is based on certain assumption, but it cannot be helped for the reason the defendant has chosen to remain ex",,,
parte.â€,,,
Consequently, the suit is decreed in favour of the plaintiffs and against defendants in terms of para 47(a) and (b) of the plaint along with costs. The",,,
costs shall amongst others include the lawyers†fees as well as the amounts spent on purchasing the court fees. The Bill of Cost already filed by the,,,
plaintiff shall be scrutinised by the learned Registrar. The plaintiff is also held entitled to compensation of Rs. 1,99,500/- to be paid by the defendant",,,
no.1, Rs 3,64,200/- by the defendant no.2, Rs 45,600/- by the defendant no.3 and Rs. 14,400/- by the defendant no. 4.",,,
However, keeping in view the judgments of this Court in Super Cassettes Industries Private Limited v. HRCN Cable Network 2017 (72) PTC 556",,,
[Del] and in Hindustan Unilever Limited Vs. Reckitt Benckiser India Limited, 2014 (57) PTC 495 [Del] [DB], this Court is of the opinion that the",,,
plaintiffs are not entitled to any punitive damages.,,,
The defendants shall hand over the goods seized by the Local Commissioners to an authorised representative of plaintiffs for destruction within,,,
three weeks.,,,
Registry is directed to prepare a decree sheet accordingly. Accordingly, the present suit stands disposed of.",,,