High Court of DelhiCS(COMM)/1168/2018

Sandisk Llc & ANR. v. Mahavishnu Mobile Accessories & ANR.

2024-04-24Hon'Ble Mr. Justice Anish Dayal16 pages

$~12 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 1168/2018, I.A. 13925/2018, I.A. 7026/2024 & I.A. 7027/2024 SANDISK LLC & ANR.

..... Plaintiffs Through:

Ms. Devyani Nath and Mr. Srinivas Venkat, Advs.

versus MAHAVISHNU MOBILE ACCESSORIES & ANR. ..... Defendants Through:

CORAM:

HON'BLE MR. JUSTICE ANISH DAYAL

O R D E R

% 24.04.2024 I.A. 7027/2024 (Exemption from filing original/clearer copies etc.) 1.

Exemption is granted, subject to all just exceptions. 2.

Applicant shall file legible, clear, and original copies of the documents on which the applicant may seek to place reliance before the next date of hearing.

Accordingly, the present application is disposed of. I.A. 7026/2024 (under Order XIII-A, CPC seeking summary judgment) 1.

This application has been filed under Order XIII-A of the Code of Civil Procedure, 1908 by the plaintiff seeking summary judgment in terms of The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

Prayer in para 49 (a) - (f) of the plaint.

The said suit had been filed seeking a decree of permanent injunction restraining the defendants, and all those acting for and, on their behalf, from manufacturing, marketing, selling, promoting, directly or indirectly dealing in any product bearing the plaintiff's registered mark 'SanDisk', the logo, 'Cruzer Blade' and the 'Red Frame Logo', or any other mark which is confusingly or deceptively similar thereto, amounting to infringement of the plaintiff's registered trademark. 3.

Subsequent to notices and summons being issued, defendant Nos.2-4 did not appear and were proceeded ex parte. Defendant No.1 did not appear despite service, after initially engaging the plaintiff for settlement. His right to file written statement was closed on 04th March, 2024 by the order of the Joint Registrar. In these circumstances, summary judgment is sought by the plaintiff.

Plaintiff No.1 is an entity organised under the laws of State of Delaware in the United States of America. While plaintiff No.2 is an Indian company and a wholly owned subsidiary of plaintiff No.1. The plaintiff has registrations in the following marks:

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

The plaintiff also sells its memory cards in a unique and distinct packaging which are pictorially represented as under: 6.

The grievance was against the defendants, who were found to be engaging in marketing and selling counterfeit Micro SDHC Cards and USB flash drives under the registered trademarks of the plaintiff and in a packaging identical/deceptively similar to that of the plaintiff. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

Plaintiff claims that the SanDisk brand is recognised all through the world and is based on the pioneering flash memory technologies. An ex parte ad interim was passed in their favour on 08th October, 2018 in the following terms:

This Court had recorded the background facts of this matter in the said decision on 08th October, 2018 which are reproduced as under: The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

This Court has perused these facts, and considering that they stand unrebutted by the defendants, this Court is of the opinion that the plaintiff is entitled to a summary judgment. Documents related to the averments have also been perused by the Court. It is also noted that Local Commissioners have been appointed by the Court on 08th October, 2018 and seizures were made which are tabulated in para 26 of the application, and are extracted as under:

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

10.

Accordingly, a decree is being passed in terms of Prayer in para 49 (a) and (b) of the plaint, which are as under:

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

11.

In respect of costs and damages, the decision of this Court in Koninlijke Philips N.V. v. Amazestore, 2019 SCC OnLine Del 8198, as also in Inter Ikea Systems BV v. Sham Murari, 2018 SCC OnLine Del 11221, are apposite. In Koninlijke Phillips (supra), this Court has stated as under: "41. Keeping in view the aforesaid, this Court is of the view that the rule of thumb that should be followed while granting damages can be summarised in a chart as under:- # Degree of mala fide conduct Proportionate award (i) First-time innocent infringer Injunction The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

(ii) First-time knowing infringer Injunction + Partial Costs (iii) Repeated knowing infringer which causes minor impact to the Plaintiff Injunction + Costs + Partial damages (iv) Repeated knowing infringer which causes major impact to the Plaintiff Injunction + Costs + Compensatory damages.

(v) Infringement which was deliberate and calculated (Gangster/scam/ mafia) + wilful contempt of court.

Injunction + Costs + Aggravated damages (Compensatory + additional damages)

42. It is clarified that the above chart is illustrative and is not to be read as a statutory provision. The Courts are free to deviate from the same for good reason." 12.

The said decision was cited with approval also in Puma SE v. Ashok Kumar 2023 SCC OnLine Del 6764.

13.

In Inter Ikea Systems BV (supra), the issue of damages has been dealt The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

with, inter alia, in para 20 wherein reference to Hindustan Unilever Limited v. Reckitt Benckiser India Limited, ILR (2014) 2 Del 1288, was made. It has been noted that the Courts have upheld the usage of rough and ready calculation for award of damages.

14.

Reference is also made to the Delhi High Court Intellectual Property Rights Division Rules, 2022, in particular, to Rule 20, which provides a basis for assessment of damages, as is extracted under: "20. Damages/Account of profits A party seeking damages/account of profits, shall give a reasonable estimate of the amounts claimed and the foundational facts/account statements in respect thereof along with any evidence, documentary and/or oral led by the parties to support such a claim. In addition, the Court shall consider the following factors while determining the quantum of damages:

(i) Lost profits suffered by the injured party; (ii) Profits earned by the infringing party; (iii) Quantum of income which the injured party may have earned through royalties/license fees, had the use of the subject IPR been duly authorized;

(iv) The duration of the infringement;

(v) Degree of intention/neglect underlying the infringement;

(vi) Conduct of the infringing party to mitigate the damages being incurred by the injured party;

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

In the computation of damages, the Court may take the assistance of an expert as provided for under Rule 31 of these Rules."

15.

Taking a holistic perspective keeping in account the facts and circumstances as noted above, Rs. 1,00,000/- (Rupees One Lakh Only) per defendant is awarded in favour of the plaintiff. 16.

Decree be drawn up accordingly in terms of the abovesaid directions. 17.

Suit is disposed of. Pending applications, if any, are rendered infructuous.

18.

Order be uploaded on the website of this Court. ANISH DAYAL, J APRIL 24, 2024/MK The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.