India: Delhi High Court disposes of the suit against Ishu Narang regarding infringement

Source: WWW.delhihighcourt.nic.in

On April 11, 2018, The Delhi High Court, in the case of Sandisk LLC vs Ishu Narang passed an order in favor of Sandisk LLC (hereinafter referred to as Plaintiff) issuing permanent injunction restraining  Ishu  Narang (herein after referred to as Defendant no. 2), their partners, proprietors, servants, agents and all others in active concert or participation with them, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in packaging and/or products  which infringe the Plaintiff’s copyright in the artistic work comprised in the color  scheme, product layout or any substantial part thereof.

The Court directed the Defendant to pay INR 4,45,000 (US$ 6659 approx.) for value of goods seized at its premises and hand over those goods for destruction to the Plaintiff.

Brief Background

• The Plaintiff, a Fortune 500 and S&P 500 company, was incorporated under the laws of State of Delaware. It is the world’s largest dedicated provider of flash memory storage solutions which designs, develops and manufactures data storage solutions under the mark SANDISK.
• The Plaintiff is using the trademark SanDisk since 1988 for consumer electronic goods throughout the world.
• The Plaintiff is a registered proprietor of the mark SANDISK and has both common law trademark rights along with trademark registrations in more than 150 countries. Its trademark is used extensively and continuously globally since 1995 and in India since 2005.
• In the last week of May 2015, the Plaintiff came to know that large quantities of counterfeit SanDisk memory cards were being sold in the market. Thereafter, the Plaintiffs filed a suit in this Court seeking permanent injunction restraining infringement of trade dress, copyright, passing off; rendition of account of profits, damages and delivery up.
• The Court arrayed the suit John Doe, since the Defendant was unknown.  The Court vide order dated May 29, 2015 appointed a Local Commissioner.
• The Local Commission so appointed, found Defendant No.2, selling counterfeit products infringing the Plaintiff’s trademark and had seized a total of 890 infringing goods on June 10, 2015 from the premises of the Defendants.

   Issues

• Whether the Plaintiff is entitled to relief of permanent injunction restraining infringement of trade dress, copyright, passing off; rendition of account of profits, damages and delivery up against the Defendant?

   Plaintiff’s Contentions

• It was submitted that the Local Commission appointed by this Court seized a total of 890 infringing goods on June 10, 2015 from the premises of Defendant no.2.

• The Plaintiff stated that the total value of goods seized from the Defendant’s premises was INR 4,45,000 (USD 6603 approx.). He prayed the same to be granted.

Observations by the Hon’ble Court 

• The Court took note of  Order XIII-A of the Code Of Civil Procedure, 1908, and observed that Defendant No. 2 has no real prospect of defending the claim as the Defendant had not filed its written statement; therefore, a summary judgement was passed.
• Thereafter, the Court held that the Defendant was liable to pay to the Plaintiff for the value of goods seized by the Local Commissioner and the legal costs incurred by the Plaintiff.

Order

The Court passed an order of permanent injunction against the Defendant along with INR 4,45,000 to be paid to the Plaintiff for the value of goods seized at the premises of the Defendant. Further, the Court ordered that the Defendant shall hand over the goods seized by the Local Commissioner to the Plaintiff for destruction on May 14, 2018.