Sandisk LLC v. Vinod Kumar & Anr
In the High Court of Delhi
CS (Comm) 901/2017
Before Justice Manmohan
Decided on July 06, 2018

Relevancy of the Case: Permanent injunction restraining the defendant from selling counterfeit products with an exact replica of the plaintiff’s trade dress

Statutes and Provisions Involved

• The Trade Marks Act, 1999
• The Copyright Act, 1957 (Section 2(c), 14)

Relevant Facts of the Case

• The plaintiff, Sandisk LLC (formerly Sandisk Corporation), is one of the 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.
• In October 2013, an investigator hired by the plaintiff found that the defendant was dealing in counterfeit products bearing the plaintiff’s logo and trade dress. A photographic comparison shows that the counterfeit products look identical to the original products.
• In February 2014, the court granted the ex parte ad interim injunction in favour of the plaintiff. Thereafter, the defendants entered appearance and filed their written submission. However, they did not conduct any cross-examination. In February 2018, the court allowed an interim application and discharged the defendants’ counsel. Thereafter, the proceedings have continued ex parte.

Prominent Arguments by the Advocates

• The plaintiff’s counsel submitted the defendants’ packaging is an exact replica of the plaintiff’s trade dress.

Opinion of the Bench

• The defendants have neither denied the documents nor led any evidence. They do not have any real prospect of defending the claim.
• It is a clear case of infringement of the plaintiff’s registered trade mark.

Final Decision

• The court passed decreed the suit in the plaintiff’s favour.