High Court of Delhi was dealing with the Regular First Appeal filed under Section 96 read with Order XLI Rule 1 & 2 CPC and Section 151 CPC by the plaintiff before the learned Trial Court. The appeal is against the judgment dated 7th November, 2019 passed by the learned ADJ Patiala House Courts, New Delhi dismissing the suit.
Brief Facts:
The suit had been filed by the appellant under Sections 134 and 135 of the Trade Marks Act, 1999, and Section and 55 of the Copyright Act, 1957, for permanent injunction restraining the respondent from violating the appellant’s proprietary rights in its registered “BURBERRY” trademarks and labels as also against passing off, delivery-up, rendition of accounts etc. The learned Trial Court had granted interim injunction to the appellant. Vide the impugned judgement dated 07th November, 2019, the learned Trial Court answered the issue No.1 in favour of the appellant. In respect of the issues 2 to 6, it appears that a common reasoning has been given. The learned Trial Court returned a finding that the appellant had failed to prove that the goods that had been seized by the Local Commissioner were counterfeit products. In other words, the appellant had failed to discharge the onus of proving its case since no expert was examined nor any other evidence produced to establish that the goods were counterfeit. The learned Trial Court concluded that the benefit of doubt would go to the respondent, and held that the seized goods were not proved to be counterfeit.
Appellant’s Contention:
Learned counsel for the appellant submitted that the learned Trial Court had erred in concluding that there was no evidence to support the case of the appellant and had erroneously ignored the report of the Local Commissioner where it was recorded that the goods were counterfeit. It was submitted that even if the Local Commissioner was not examined in the court, the report still formed evidence which could not have been overlooked.
The learned counsel urged that since the trade mark “BURBERRY” was registered in the name of the appellant and this fact stood admitted by the respondent, there was sufficient evidence to protect the interests of the registered proprietor of the trade mark “BURBERRY”, by issuing the injunctions prayed for.
HC’s Observations:
After hearing both the sides Court stated that a perusal of the impugned judgment would reveal that the learned Trial Court has completely misdirected itself in placing undue emphasis on proof of counterfeit products whereas the issue before it was whether there was an infringement of the registered trade mark of the appellant by the respondent and/or whether the respondent was passing off his own goods as those of the appellant or was indicating the source of his goods as that of the appellant and thus infringing the registered trademarks of the appellant, and to its detriment by dilution.
HC stated that unlike in a criminal case, in a case of infringement of registered Trade Marks or of passing off, similarity of the marks used is to be considered. There is no call to have an expert witness to testify to the use of an identical or similar Trade Mark. The emphasis is on the branding and not on the manufacture of the goods in question. It is the false branding that results in the product being counterfeit. Thus, the learned Trial Court fell into grave error in holding that the absence of expert testimony disproved the case of infringement and passing off.
HC stated that it is but obvious, that the products of the appellant, which is a company having worldwide operations and having earned reputation for the various products manufactured by it and sold under the trade mark “BURBERRY” with its logo and labels, would have a quality that would be far superior to the goods found from the respondent, who himself claims, that he is selling various products at a stall in Khan Market. But the fact that people coming to Khan Market would be familiar with the label and trade mark “BURBERRY”, apparently prompted him to try and cash in on the appellant’s reputation and make a neat profit for his products. It is thus, clear, that the appellant has, in fact, proved its entitlement to the reliefs claimed by it and the suit ought to have been decreed rather than dismissed.
HC Held:
After evaluating submissions made by both the parties the Court held that “since there has been no evidence of the profit that the respondent has made or of any other product apart from those seized by the Local Commissioner, while the issues 2 and 3 are answered in favour of the appellant, the issues 4 and 5 are answered against the appellant. In the light of the foregoing discussion, the appeal is allowed and the impugned judgment and decree dated 7th November, 2019 is set aside and the suit decreed.”
Case Title: Burberry Ltd. v. Aditya Verma
Bench: Hon'ble Ms. Justice Asha Menon
Citation: R.F.A. (IPD) 4/2021
Decided on: 29th March 2022
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