The Saket District Court of New Delhi has dismissed Burberry Limited’s trademark infringement and passing off suit against multiple traders accused of dealing in counterfeit BURBERRY goods at Gaffar Market, Karol Bagh, while holding that the plaintiff failed to prove that the suit had been instituted through a duly authorised person.
The Court clarified that in a trademark infringement and passing off action, proof of trademark registration and reputation is not by itself sufficient; the plaintiff must also establish, through credible and properly proved evidence, that the concerned defendant was in fact engaged in infringing activity. The Court further held that a suit instituted on behalf of a company must be shown to have been filed by a duly authorized person, and absence of valid authorization can be fatal to the plaintiff’s case.
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The District Judge Prabh Deep Kaur observed that mere proof of registration or reputation of a trademark does not automatically entitle a plaintiff to relief unless infringement or passing off by the particular defendants is specifically established. The Court noted that the plaintiff relied on the Local Commissioner’s report but did not summon the Local Commissioner to prove it, and PW-1 did not rely upon that report in evidence. The Court also found deficiencies in the photographic evidence and observed that the plaintiff did not clarify which photographs related to which defendant or premises, nor did it examine the plaintiff’s representative who was present during execution of the commission.
The Court further observed material discrepancies in the Local Commissioner’s execution and inventory records. Qua defendant no. 1, the Court found that the goods had not been taken on superdari by the defendant and no reason for refusal or supporting invoice verification had been recorded, creating reasonable doubt regarding the credibility of the commission. Qua defendant no. 4, the inventory recorded only two sunglasses and two empty wallet boxes, without any observation regarding the name, trademark, or logo appearing on the goods. Qua defendant no. 5, the Court noted that the person found at the spot was Kultar Singh, son of Daljeet Singh, and the seized goods were handed to him, yet the plaintiff had impleaded Daljeet Singh as defendant no. 5 without explanation; further, the report again lacked observations regarding the mark appearing on the seized goods.
However, qua defendant no. 3, the Court observed that the Local Commissioner’s report and inventory specifically recorded that the goods in the custody of defendant no. 3 bore the label/logo “Burberry”. Since defendant no. 3 failed to produce the goods, the Court drew an adverse presumption against him and held that it would be presumed that he intentionally withheld the goods because their production might have revealed similarity between his impugned marks and the plaintiff’s marks. On that basis, the Court observed that defendant no. 3 was selling counterfeit/spurious goods, and that permitting such use would cause wrongful loss to the plaintiff, prejudice to the public, and dilution of the plaintiff’s trademark.
Briefly, the plaintiff, Burberry Limited, instituted a commercial suit seeking permanent injunction, restraint against infringement and passing off, delivery up, and rendition of accounts/damages against multiple defendants allegedly dealing in counterfeit goods bearing the plaintiff’s BURBERRY marks, logos, and check device. The plaintiff pleaded that it is the proprietor of various BURBERRY trademarks and copyright works, that it enjoys substantial goodwill and reputation globally and in India.
During a market survey in June 2018, the plaintiff discovered allegedly infringing goods being sold from premises in Gaffar Market, Karol Bagh, leading to institution of the suit and issuance of a John Doe order on Aug 04, 2018. Pursuant to the ex parte order, a Local Commissioner visited the defendants’ premises and submitted a report. Defendant nos. 1 and 3 contested the suit on grounds including lack of proper authorization, lack of territorial jurisdiction, and denial of infringement. Defendant no. 2 also disputed authorization and denied involvement, and the suit was later settled qua defendant no. 2.
