SanDisk takes John Doe route to fight counterfeiters

SanDisk Corporation filed suit for trademark and copyright infringement, passing off, rendition of accounts of profits, damages and delivery up against traders who sold counterfeit products on pavements at Sunday markets in Delhi. SanDisk alleged that the identity of such traders was impossible to determine and, therefore, sought an order against “unknown parties” arrayed as ‘John Does’.    

SanDisk is a Fortune 500 and S&P 500 company founded in 1988, and claimed to be the world’s largest dedicated provider of flash memory storage solutions under the house mark SANDISK. In the course of its business, SanDisk designed, developed and manufactured data storage solutions in various form factors using flash memory, controller and firmware technologies. SanDisk claimed to market its products globally and that the SANDISK mark was registered in more than 150 countries. Further, SanDisk claimed to own a registration for the word mark SANDISK and the SanDisk logo, as well as copyright for its unique packaging, which is an artistic work and is protected within the meaning of Section 2(c) of the Copyright Act 1957. As a result of extensive marketing efforts through advertisement and on account of the quality of its products, SanDisk’s mark enjoys immense goodwill and reputation both in India and worldwide.

According to SanDisk, certain unknown persons were initially selling counterfeit products bearing the name SanDisk and the SanDisk logo in packaging identical to that used by SanDisk in the Daryaganj area of Old Delhi. However, pursuant to passing-off injunction orders, they changed their modus operandi and now sold counterfeit products through makeshift Sunday markets at Daryaganj. SanDisk averred that, during the investigation, it had been found that a large number of stalls were set up across the pavements at Daryaganj to sell counterfeit SanDisk Micro SD memory cards with packaging identical to that of SanDisk. Moreover, it was impossible to identify the names of the sellers, as they were primarily fly-by-night operators who sell their goods and then vanish to avoid injunction orders.

In view of the above, SanDisk sought an injunction under the inherent powers of the court in what is known as 'John Doe' practice, which has evolved over the years.

After hearing and considering SanDisk's submissions, the court observed that, if an injunction were not granted, serious prejudice would be caused to SanDisk's rights.

Accordingly, the unnamed and undisclosed persons arrayed as 'John Does' were restrained from manufacturing, selling, offering for sale, advertising directly or indirectly and dealing in counterfeit products bearing SanDisk’s trademark and logo, and from using product packaging, get-up, colour scheme, layout and overall look and feel identical to those used by SanDisk. The court also appointed three commissioners to visit the makeshift locations of the unnamed and undisclosed parties at Daryaganj market, or such other place, and seize the counterfeit memory cards bearing SanDisk’s word and logo marks, with or without the product packaging, and also make a list of particulars of the sellers with their proof of identification, if possible, when found in possession of such counterfeit products.

John Doe orders have been more commonly used to curb movie piracy; in particular, they have been sought by film producers/distributors before a movie release to prevent the unauthorised distribution or download of the movie. This decision highlights the practical approach taken by the judge, which decided to apply the ‘John Doe’ practice in a case where a large number of counterfeiters were concentrated in a particular market. 

Mohandas Konnanath, RNA Intellectual Property Attorneys, Gurgaon