Delhi High Court restrains Khan Market stall owner from using Burberry trademark to sell products

The Delhi High Court recently restrained a Khan Market stall owner from selling, soliciting, exporting, importing or displaying any product with the trademark of British luxury fashion house Burberry [Burberry Limited v Aditya Verma]..Justice Asha Menon held that it was apparent that people coming to Khan Market would be familiar with the label and trademark “Burberry” which had prompted the stall owner to try and cash in on its reputation and make a neat profit for his products.The order said that the stall owner and related associates were banned by means of a permanent injunction," ... from manufacturing, marketing, purveying, supplying using, selling, soliciting, exporting, importing, displaying, advertising or by any other mode or manner dealing in or selling/ soliciting, through online websites or online platforms or through social medias or in any other manner or mode using the registered Trade Mark "BURBERRY" and labels or depicting the logo of the appellant/plaintiff on his products”..The Court said that it was obvious that the products of Burberry would have a quality that would be far superior to the goods sold by the stall owner. Since the original product would not be kept by him, no customer would have the benefit of comparison to know that they were at risk of purchasing a fake product..Justice Menon was dealing with an appeal filed by Burberry against an order of the Additional District Judge (ADJ) at Patiala House Court that refused relief and returned a finding that the fashion house had failed to prove that the goods seized by the local commissioner from the stall owner were counterfeit. The benefit of doubt in this case would go to the defendant, the district judge had ruled..The High Court ruled that a perusal of the lower court's judgment revealed that it had completely misdirected itself in placing undue emphasis on the proof of counterfeit products. The issue before it was actually whether there was an infringement of the registered trademark or whether the defendant was passing off his own goods as those of the plaintiff, the High Court noted.“Had this been the focus of attention, the learned Trial Court would have been quick to note that the proof required was not of whether there was counterfeiting, but of infringement by use of the registered trade marks unauthorizedly. Had the products been not counterfeit, even then, if the trade marks used were to mislead the public regarding the origin of the products, a case for injunction would have been made out.”.The High Court found it strange that the trial court, while dealing with the civil matter, chose to decide the case on the standard of criminal jurisprudence to hold that the case had not been proved beyond doubt.It noted that the report of the local commissioner, appointed by the trial court, recorded that she had found counterfeit/infringing goods with the defendant which were then seized. This should have been enought to prove Burberry's case for injunction, the High Court held. .The judgment said that unlike in criminal cases, in a case of infringement of registered trademarks or passing off, similarity of the marks used is to be considered and there is no call to have an expert witness testify to the use of an identical or similar trademark.“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.”.Based on these findings, the High Court set aside the judgement of the ADJ and granted relief to Burberry..Advocates Rishi Bansal and Krisna Gambhir appeared for Burberry; no one appeared for the stall owner..[Read Judgment]