Case Analysis: Burberry Ltd vs. Mr. Aditya Verma

Introduction

The present blog is a Case Analysis ofBurberry Ltd vs. Mr. Aditya Verma.1 The plaintiff, Burberry Ltd. is a leading company having acquired goodwill and worldwide operations for manufacturing and selling high quality leather fashion accessories and allied goods under a registered trademark "BURBERRY" with its logo and labels and thus protected under section 28 of Trade Marks Act 1999.2

Defendant, is engaged in the deceptive business of selling and marketing trade of handbags, wallets, belts, apparels, fashion accessories and other allied and cognate goods. The defendant is using the label "BURBERRY" having style and placement similar to that of the plaintiff. He is engaged in falsely describing its impugned goods with those of the plaintiff and misleading the customers. The suit had been filed under Sections 134 & 135 of the Trade Marks Act 1999,3 and Section 55 of the Copyright Act 19574 in the learned ADJ Patiala House Courts, New Delhitoobtain permanent injunction.

ISSUES: -

  1. Whether suit is filed by duly authorised person?
  2. Whether plaintiff is entitled to decree for permanent injunction restraining defendants, their agents,etc. for using selling,soliciting,etc. of impugned goods containing trademark BURBERRY?
  3. Whether plaintiff is entitled to decree of injunction restraining defendantfrom dealing of the merchandise containing trademark BURBERRY?
  4. Whether plaintiff is entitled to decree of delivery up of impugned goods containing trademark BURBERRY?
  5. Whether plaintiff is entitled to Rendition of accounts and damages on account of profits made by defendant by sale of goods containing trademark BURBERRY?

ARGUMENTS BY THE PLAINTIFF: -

Plaintiff alleged that defendant's act of using the impugned mark "BURBERRY" is identical and similar to the plaintiff's trademarkphonetically, visually, structurallyand in its essential features without the leave and license of the plaintiff which is misleading customers. This act of defendant infringes plaintiff's trademarks.

ARGUMENTS BY DEFENDANT: -

Defendant is a small-time dealer of non-­branded goods and also undertakes dry cleaning, repairing of bags, purse etc. He operates from a stallNo.73A, Khan Market, New Delhi. Further defendant wasn't aware what was seized from his stall and stall 73B, Khan Market.

JUDGEMENT: -

The learned trial court answered the issue no.1 in favour of the plaintiff. Defendant'sargumentthat goods seized were not from his shop was found to be baseless as per the LC report. For the issue no.2-6,a common reasoning was giventhat there was a failure on the part of the plaintiff of proving that the goods were counterfeit. Accordingly, the suit was dismissedby concluding that the benefit of doubt would go to the defendant and thus held that the seized goods were not proved to be counterfeit.

APPEAL TO HIGH COURT: -

A regular fist appeal was filed by the plaintiff before the Hon'ble Delhi High Court against the judgement passed by the learned Trial courton 7th November 2019.

CONTENTIONS: -

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.

The learned counsel threw light on how the trial court had ignored the testimony of PW-1 that the goods recovered from the possession of the respondent were fake and could be easily differentiated from an original. Also, the quality sufficiently showed that whatever was in the possession of the respondent was counterfeited.

OBSERVATIONS OF THE COURT: -

The respondent's trademark infringement and/or whether he was passing off his own goods or disclosing the appellant's source as the source of his goods were the issues at hand, according to the court, which declared that the learned Trial Court had entirely misled itself by placing an excessive amount of emphasis on proof of counterfeit products.

If we take away everything else—namely, the fact that the trademark was exploited to deceive the public—we would have a strong case for an injunction. The focus is meant to be on deceptive branding that makes a product look fraudulent.

The court also overlooked the fact that, it was them whohad appointed the LC to inspect the site and seize goods infringing or appeared counterfeit products. The LC's Report was discarded, which is supposed to be treated as evidence under Order XXVI Rule 10(2) of the CPC, because it had not been examined in the witness box.The report established the fact that products not originating from the plaintiff bearing their registered trade mark, were found in the possession of the defendant, clearly signalled the respondent to be restrained from doing such acts harming the interests of the plaintiff as also the general public.

JUDGEMENT: -

"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 LC, while the issues 2-3 are answered in favour of the appellant, the issues 4-5 are answered against the appellant. The appeal is thus allowed and the impugned judgment and decree dated 7th November,2019 is set aside and the suit decreed."

The respondentand all other persons acting on his behalf are restrained by means of a permanent injunction, from manufacturing, marketing, purveying, supplying using, selling, soliciting, exporting, importing, displaying, advertising, etcin any manner or mode using the registered trademark or depicting the logo of the appellant on his products.

OPINION AND CONCLUSION: -

Quality is one of the prime factors in the fashion industry. People pay for the quality of the product which in turn makes or breaks the brand value. So,providing counterfeit goods with a depreciated quality in the pretext of selling the luxury goods is against the ethics of business. In order to protect the authenticity, quality, and market goodwill, it becomes necessary to protect the trademarks of such brands. Hence, there are laws available for the same. The judiciary has to make sure that the laws so made serve the purpose. A right without a remedy is nothing. Similarly, a right with a wrong remedy also doesn't safeguard the right.

It is necessary to understand that a trademark is an individual's property and infringement of the same would lead to severe consequences.

Footnotes

1. 2022 SCC OnLine Del 882.

2. The Trade Marks Act, 1999, § 28.

3. The Trade Marks Act, 1999, §§ 134, 135.

4. The Copyright Act, 1957, § 55.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.