No Call To Have Expert Witness To Testify To Use Of Identical Mark In Registered Trademark Infringement Or Passing Off Cases: Delhi High Court

The Delhi High Court has observed that in a case of infringement of registered Trade Marks or passing off, similarity of the marks used is to be considered and that there is no call to have an expert witness to testify to the use of an identical or similar Trade Mark.

Justice Asha Menon added that 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, the Court added.

The Court was dealing with a Regular First Appeal filed under sec. 96 read with Order XLI Rule 1 & 2 CPC and Section 151 CPC by the plaintiff before the Trial Court. The appeal was filed against the judgment dated 7th November, 2019 wherein the suit was dismissed.

The suit was filed under sec. 134 and 135 of the Trade Marks Act, 1999 and sec. 55 of the Copyright Act, 1957 for permanent injunction restraining the respondent from violating the plaintiff‟s proprietary rights in its registered BURBERRY trade marks and labels as also against passing off, delivery-up, rendition of accounts etc.

The Trial Court had granted interim injunction to the appellant vide its order dated 12th October, 2017, also appointing a Local Commissioner. Vide the impugned judgement dated 07th November, 2019, the Trial Court answered the issue No.1 in favour of the appellant.

The Trial Court had returned a finding that the appellant had failed to prove that the goods that had been seized by the Local Commissioner were counterfeit products and that 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 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. Accordingly, the suit was dismissed.

"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/plaintiff by the respondent/defendant and/or whether the respondent/defendant was passing off his own goods as those of the appellant/plaintiff or was indicating the source of his goods as that of the appellant/plaintiff and thus infringing the registered trade marks of the appellant/plaintiff, and to its detriment by dilution," the Court said.

The Court did not agree with the findings of the Trial Court by observing that it was stranger as to why the Trial Court while dealing with the civil matter had chosen to decide the case on the standard of criminal jurisprudence to hold that the case had not been proved beyond doubt and grant the benefit of the doubt to the respondent.

The Court noted that the seizure by the Local Commissioner was treated as if these were samples from a seizure made from an offender by an investigating officer, overlooking the fact that the court had directed the Local Commissioner to inspect the site and seize goods that were infringing or appeared counterfeit products and to hand over the seized goods on execution of an indemnity bond.

"These shortcomings in the judgment impugned by the appellant/plaintiff would suffice to set is aside, however, this Court considers it fit to assess the evidence to determine whether the appellant/plaintiff had a case on merits," the Court said.

The Court added "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."

The Court said that the report of the Local Commissioner established the fact that products not originating from the appellant, were found in the possession of the respondent bearing the registered trade mark of the appellant/plaintiff, who ought to have then explained how he had come in possession of the same; whether the products were original products or whether he was authorized to sell the same or that he was not selling the products originating from the appellant.

In any case, clearly, he had to be restrained from doing any act harmful to the interests of the appellant/plaintiff as also the general public, the Court said.

"It is but obvious, that the products of the appellant/plaintiff, 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/defendant, 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/plaintiff‟s reputation and make a neat profit for his products," the Court observed.

The Court therefore restrained the respondent, as also related individual proprietors, partners, agents, etc by means of a permanent injunction, from manufacturing, marketing, selling or using the registered Trade Mark BURBERRY and labels or depicting the logo of the appellant on his products.

Accordingly, the appeal was allowed and the impugned judgment and decree dated 7th November, 2019 was set aside.

Title: BURBERRY LTD v. ADITYA VERMA

Citation: 2022 LiveLaw (Del) 254

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