Sandisk LLC v. Manish Vaghela & Ors
In the High Court of Delhi
CS (Comm) 69/2017
Before Justice Jayant Nath
Decided on July 23, 2018

Relevancy of the Case: Permanent injunction restraining online sellers from infringing the plaintiff’s trademark and copyrights

Statutes and Provisions Involved

• The Trade Marks Act, 1999
• The Copyright Act, 1957 (Section 2(c))

Relevant Facts of the Case

• The plaintiff, Sandisk LLC (formerly Sandisk Corporation), is one of the world’s largest dedicated flash memory storage solutions providers. It is a Fortune 500 company. The plaintiff is the registered user of the mark SanDisk and the Red Frame logo.
• The plaintiff has trademark registrations for their mark in more than 150 countries. It has used this mark extensively, continuously, and without interruptions since 1995. For the Red Frame logo, it obtained trademark registration in India under Class 9 of the Trade Marks Act, 1999.
• An investigator hired by the plaintiff found that the defendant was dealing in loose microSD cards on Amazon. The same memory cards were also available on ShopClues. The first defendant was selling these memory cards through an entity called mmshop. The investigator placed an order for two memory cards. On Further enquiry, he found that the second defendant has an available stock of about 2000-3000 memory cards.
• On comparison of the plaintiff’s memory card and the defendant’s memory card, there are sticking similarities.
  • The defendants have copied the entire trade dress of the plaintiff, including the colour scheme.
  • The defendants have used the plaintiff’s tagline verbatim.
  • They have used the Red Frame logo, the plaintiff’s registered trademark.

Prominent Arguments by the Advocates

• The plaintiff’s counsel submitted that the extent of copying shows the defendants’ intent to dupe the consumers and exploit the plaintiff’s goodwill. The plaintiff owns artistic work in the Red Flame logo and the unique packaging style. These works qualify for protection under Section 2(c) of the Copyright Act, 1957.

Opinion of the Bench

• The Local Commissioner’s report indicates a seizure of 800 products infringing the plaintiff’s trade dress.
• Based on available information, the defendants are guilty of violating the copyrights in the plaintiff’s artistic work.

Final Decision

• The court passed a decree in favour of the plaintiff, along with awarding damages of a sum of ₹10 lakhs.