Delhi District Court
Burberry Limited vs Sunil B. Sharma on 28 March, 2025
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IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND010048542021
CS (COMM.)/949/2022
[Old Case No.: TM /13/2021]
IN THE MATTER OF:-
BURBERRY LIMITED
Horseferry House, Horseferry Road
London SW1P 2AW, United Kingdom
Through:
Mrs. Meena Bansal
Constituted Attorney
96, Sukhdev Vihar, Mathura Road
New Delhi- 110 025
...PLAINTIFF
VERSUS
Sunil B. Sharma
Trading as - Ramco Products
Gala No. 1, P.R.K. Chawl
Shimpoli Village, Boriwali (W),
Mumbai - 400 092
Maharashtra.
Also at :
104, Vora Industrial Estate
Vasai (E), Palghar-401202
Maharashtra, India.
...DEFENDANT
Date of Institution : 24-07-2021
Date of reserving Judgment : 25-03-2025
Date of pronouncing Judgment : 28-03-2025
CS (COMM.)/949/2022 Page 1 of 36
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JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 read with S. 27 (2) of Trademarks Act, 1999 for the relief of permanent injunction to restrain infringement of trademark, copy right, passing off, damages, rendition of accounts, delivery up etc., filed by plaintiff against the defendant.
2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 16-07-2022 in view of Order No.17016-17031/Judl./ NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs. No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is as under:-
3.1 The plaintiff, which is stated to be a Private Limited Company duly incorporated on 09th January, 1920 and existing in accordance with the laws of England CS (COMM.)/949/2022 Page 2 of 36 -3- having its registered office at London, England, got instituted the present suit through constituted attorney namely Mrs. Meena Bansal, who is shown to have been duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit.
3.2 It is averred that the plaintiff company is engaged in the business of manufacture, distribution and sale of a wide range of fragrances, cosmetics, handbags, ready to wear apparels, readymade garments, clothing, shoes, sunglasses, footwear, fashion bags, leather goods, belts, leather belts, buckles, accessories, watches and other fashion accessories and allied/related products (hereinafter referred to as the 'said goods and business').
3.3 It is further averred that the plaintiff is the owner and proprietor of the trademarks BURBERRY, BURBERRY EQUESTRIAN KNIGHT Logo, CHECK device and various BURBERRY formative trademarks/ labels in relation to its said goods and business [hereinafter referred to as the 'said trademarks / labels']. Plaintiff uses its said trademarks/labels either individually or in combination of each other in the following amongst other manners:-CS (COMM.)/949/2022 Page 3 of 36 -4-
, , and etc.
3.4 It is averred that the plaintiff has been honestly and
bonafidely, continuously, commercially,
openly and to the exclusion of others,
uninterruptedly and in the course of trade and as proprietor thereof, using its trade mark BURBERRY, BURBERRY EQUESTRIAN KNIGHT Logo and its CHECK device since the year 1856, 1901 and 1920s respectively, in relation to its said goods and business, either individually or in combination of each other and/or BURBERRY word mark and has built up a worldwide and globally valuable trade, goodwill and reputation thereunder and has acquired proprietary rights therein.
3.5 It is averred that the plaintiff has got the said BURBERRY trademarks/labels registered in all the major countries of the world and across all continents and regions. It is also averred that said trademarks/ logo are registered in India under various classes under the Trade Marks Act, 1999 in favour of the plaintiff and same are valid and subsisting as on date in favour of the plaintiff.
Details thereof have been given in Para no.8 of the plaint.
CS (COMM.)/949/2022 Page 4 of 36 -5-3.6 It is further averred that art works involved in the plaintiff's said Trademarks/Labels are original artistic works and the plaintiff is the owner and proprietor of the Copyright therein within the meaning of Indian Copyright, 1957. The plaintiff company has the exclusive right to deal with the said Trademarks/Labels/Trade Names and has been so dealing with them in the course of trade in relation to its said goods and business, inter alia, within the meaning of Section 14 of the Copyright Act 1957.
3.7 Further, it is averred that the plaintiff has regularly and continuously been promoting it's said distinctive Trademarks /Labels and the goods and business thereunder through extensive advertisements, publicities, promotions and marketing & marketing research and the plaintiff has been spending enormous amounts of money, efforts, and time thereon. The plaintiff has been doing so through various means and modes including through the visual, print, electronic media, in leading Newspapers, trade literature, magazines, over the internet etc. and all of which have tremendous reach, availability and circulation world over including in India.
3.8 It is claimed that with the advent of e-commerce and consumers becoming increasingly mobile and CS (COMM.)/949/2022 Page 5 of 36 -6- global, the plaintiff continued to invest in digital commerce. It is stated that the plaintiff adopted the said BURBERRY trademark/ label as an essential and material part of its email id and domain name. It is stated that www.burberry.com is the brand's largest store in terms of traffic and sales, servicing 44 countries in 11 languages. To complement Burberry.com, the plaintiff partnered with third-party digital retailers including existing wholesale partners as well as Amazon and Tmall, to provide an authentic, consistent brand experience and to enable Burberry products to reach a wider customer audience.
3.9 Thus, it is claimed that the plaintiff's products are sold globally through its stores and website i.e. www.burberry.com, as well as through third-party wholesale customers, both offline and online.
3.10 It is further claimed that the plaintiff maintains the highest standard of quality in relation to its goods and business under the said Trademarks/ Labels/ Trade Name. The plaintiff invests heavily in R & D and its products are known for their highest standards of quality, safety, innovation and reliability and there is an ever- increasing demand thereof. The products of the plaintiff have been widely recognized throughout the world for CS (COMM.)/949/2022 Page 6 of 36 -7- excellence in the creation of contemporary clothing designs.
3.11 It is further the case of the plaintiff that the plaintiff's said BURBERRY trademarks/labels have all become distinctive, associated and have acquired secondary significance with the plaintiff and plaintiff's said goods and business. The purchasing public, the trade and industry at large worldwide and in India, identify and distinguish the plaintiff's said goods under the said BURBERRY trademark/label with the plaintiff and from the plaintiff's source and origin alone and regard them as high quality products exclusively as that of the plaintiff. Hence, it is claimed that plaintiff's said goods and business are known, recognized, demanded, sold and traded world over with reference to its said BURBERRY trademark/label. The members of the trade, industry, the consumers and general public at large world over and in India are well aware of the plaintiff, the plaintiff's said BURBERRY trademark/label and the plaintiff's said goods and business thereunder. The plaintiff's said BURBERRY trademark/label is a well-known Trade Mark within the meaning of Section 2 (1) (zg) of the Act.
3.12 It is further averred that due to extensive media coverage through newspaper advertisements, articles, television programs, fashion events and CS (COMM.)/949/2022 Page 7 of 36 -8- their telecast which have circulation in India or footfalls in India as well as on account of millions of Indians traveling abroad and, getting exposure to said goods of the plaintiff under the said BURBERRY trademark/ label and advertisements in magazines and hoardings as well as through members of fashion industry, the said BURBERRY trademark/label of the plaintiff enjoys spillover and trans-border reputation in India since several decades. It is stated that the plaintiff has its exclusive store at DLF Emporio Mall, Nelson Mandela Marg, Vasant Kunj II, Vasant Kunj, New Delhi, Delhi 110070 and screenshot thereof has been depicted in Para no.17 of the amended plaint.
3.13 It is further averred that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the goods of the plaintiff under the said trademarks/ labels / copyrights, have acquired enviable reputation and goodwill in business community and public in general and in view of the plaintiff's proprietary rights, both under statutory and common law, in its said trademarks/ labels and their goodwill & reputation, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar CS (COMM.)/949/2022 Page 8 of 36 -9- trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
3.14 It is alleged that the defendant is engaged in manufacturing, marketing, selling, trading, use, soliciting, and networking of perfumes, fragrances, essential oils, attars, scents, aromatics and other allied/related products (hereinafter referred to as the 'impugned goods and business'). It is alleged that the defendant has recently adopted and started using the impugned trademarks / labels 'RF BROWNBERRY / and [hereinafter referred to as the 'said impugned trade marks/ labels RF BROWNBERRY'].
3.15 The plaintiff has alleged that in the first week of July 2021, the plaintiff was astonished to come across the impugned goods of the defendant bearing the impugned trademark/label RF BROWNBERRY and being surfaced at online platforms like defendant's own website under the name of www.ramcoproducts.com, and upon other marketplace websites like https://zopboard.com.
CS (COMM.)/949/2022 Page 9 of 36 -10-3.16 It is further alleged that the plaintiff was further taken aback when it conducted a public search and came to know about the defendant's impugned trademark/ label, which was published in Trademark Journal under number 1995-0 in Year 2021. Thereafter, the plaintiff filed a Notice of opposition against the impugned trademark/label "R F BROWNBERRY, " of the defendant under opposition number 1115908 on July 22, 2021.
3.17 It is further alleged that the defendant is not only making retail sales, but is also supplying the impugned goods bearing the impugned trademark/ label to various dealers/ shopkeepers/ retailers including in New Delhi Area, who are making clandestine and surreptitious sales thereof in the market of New Delhi Area viz.
Connaught Place, Gole Market, Vasant Vihar, Lodhi Colony, Sarojini Nagar, Bengali Market, Naraina, Mandir Marg etc. within the jurisdiction of this Court. Thus, it is stated that the defendant is allegedly carrying out the impugned activity in clandestine and surreptitious manner, as no formal invoice is issued by the defendant.
CS (COMM.)/949/2022 Page 10 of 36 -11-3.18 Thus, it is alleged that the defendant has dishonestly and malafidely adopted the said impugned trademark/label RF BROWNBERRY, which is visually, and structurally identical and/or deceptively and confusingly similar to the registered trademark/label i.e. BURBERRY belonging to the plaintiff, thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendant is not only damaging the reputation and goodwill of the plaintiff company by passing off his substandard products as that of the plaintiff company, but is also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
4. On these grounds, the plaintiff has filed the present suit against the defendant praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendant and all others acting for and on his behalf from using the said impugned trademark / label RF BROWNBERRY or any other word mark/ trademark/ label, which may be identical with and/ or deceptively similar to the plaintiff's said trademark / label BURBERRY in relation to similar goods, thereby CS (COMM.)/949/2022 Page 11 of 36 -12- infringing plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
5. The suit was accompanied with various applications, inter alia, one under Order XXXIX Rule 1 & 2 CPC seeking ex parte ad interim injunction. After hearing the counsel of plaintiff, the said application was allowed, thereby granting an ex parte ad interim injunction in favour of the plaintiff, vide common order dated 07-01-2022 passed by Ld. ADJ-04, Patiala House Courts, New Delhi.
6. On being served with the summons of the suit, the defendant put his appearance through counsel.
7. At this juncture, it may be noted that the present case was received by this Court on 16-04-2022, as already noted above in Para no.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above ₹3,00,000/-, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra).The said application was allowed and the defendant was directed to file written statement to the amended plaint within 30 days from the date of the said order,vide order dated 02-12-2022, passed by Ld. Predecessor of this Court. In CS (COMM.)/949/2022 Page 12 of 36 -13- pursuant thereto, written statement was filed on behalf of defendant.
8. In his written statement, the defendant has taken various preliminary objections, inter alia that:-
8.1 This Court lacks territorial jurisdiction to entertain and try the present suit, as the defendant work for gain and carry on his business at Mumbai, Maharashtra. The defendant is selling his products in the State of Maharashtra and thus, no part of cause of action has arisen within the territorial jurisdiction of this Court.
8.2 It is stated that there is no similarity between the competent marks. It is stated that the defendant's mark is stylish RF (a short form of defendant's company Ramco Perfumes/ Ramco Products) and there are no common elements and thus, the overall first impression of the defendant's products is completely different from the plaintiff's product. It is stated that the defendant is the registered proprietor of the products containing the mark "RF BROWNBERRY" and he has every right to use the same.
8.3 Thus, it is stated that the defendant's mark RF BROWNBERRY is visually and phonetically different from the plaintiff's mark BURBERRY and hence, there is no likelihood of confusion amongst CS (COMM.)/949/2022 Page 13 of 36 -14- the purchasing public that defendant's mark is endorsed or sponsored by the plaintiff.
8.4 As regards check device, it is stated that check design of the defendant's mark/ label is absolutely different from the mark/ label of the plaintiff's check design. The essential features of the defendant's impugned trade mark/ label are in an original artistic format, which is quite distinct and different from the plaintiff's trade mark/ label. It is stated that the vertical linings in the defendant's device mark are completely different as in the case of plaintiff with respect to its trademark and trade dress.
8.5 It is stated that the defendant is using the
trademark RF BROWNBERRY for the last
several years.
8.6 It is further stated that the defendant is engaged in
the manufacturing and selling perfumes, deodrants, body spray, attar, agarbatti (inscent sticks) and musk. It is stated that the defendant has already applied for his trademark registration,vide Trademark Application no. 4908110.
9. Likewise, by way of 'REPLY ON MERITS ', the defendant has denied and controverted the averments made in corresponding paras of the amended plaint.CS (COMM.)/949/2022 Page 14 of 36 -15-
10. Plaintiff chose not to file replication to the written statement.
11. The application under Order XXXIX Rules 1 & 2 CPC read with S. 151 CPC was allowed and disposed off vide order dated 19-09-2024, passed by this Court, thereby making the order dated 07-01-2022 whereby ex parte ad interim injunction granted in favour of plaintiff and against the defendant, as absolute during the pendency of the suit.
12. It may also be noted that on request made on behalf of both the sides, the matter was also referred to Delhi Mediation Centre, PHC, New Delhi for exploring the possibility of settlement between the parties, however, matter could not be settled between the parties, as per Proceedings dated 29-8-2024 of Delhi Mediation Centre, PHC, New Delhi, as is available on record.
13. From the pleadings of the parties, the following issues were framed:-
(i) Whether the plaintiff is entitled to decree of permanent injunction as prayed in Prayer Clause No. 35(a) of the amended plaint? OPP.
(ii) Whether plaintiff is entitled to order for delivery up of all impugned goods, finished and unfinished material bearing impugned mark/ label/ trade name/ domain name for the purposes CS (COMM.)/949/2022 Page 15 of 36 -16- of destruction and erasure, as prayed in Prayer Clause No.35(c) of the amended plaint? OPP.
(iii) Whether plaintiff is entitled to an order of rendition of accounts of profits earned by the defendant by his impugned illegal trade activities and is entitled to a decree for the amount so found in favour of plaintiff on such rendition of account, as prayed in Prayer Clause No.35 (d) of the amended plaint. OPP?
(iv) In case, the issue no.3 is answered in negative, whether plaintiff is entitled to a decree of ₹3,10,000/- towards damages in its favour, as prayed in Prayer Clause No. 35(e) of the amended plaint? OPP
(v) Relief.
14. It may be noted that after framing the issues, while exercising the power conferred under Order XVA Rule 6(o) and (p) CPC, the Court had directed that the evidence shall be recorded by Ld. Local Commissioner, appointed by this Court on commission basis, vide order dated 19-09-2024 (supra). Accordingly, the plaintiff and the defendant were directed to lead their respective evidence before Ld. Local Commissioner, in terms of the timeline/ scheduled framed therein. In pursuant thereto, the plaintiff led its evidence by way of affidavit of PW1 Sh. Anand Kumar Arya, before Ld. Local Commissioner, CS (COMM.)/949/2022 Page 16 of 36 -17- however, despite availing two opportunities to cross- examine PW1, the defendant failed to cross-examine the said witness and consequently, the opportunity of defendant to cross-examine said PW1, was closed vide order dated 16-12-2024, passed by this Court.
15. PW1 Sh. Anand Kumar Arya led his examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and has relied on the following documents:-
Srl.no Document/Particulars Exhibit(s)
1. True Representation of the Ex. PW1/1 Photographs of the plaintiff's trademark/ label.
2. True representation of the defendant's Ex. PW1/2 impugned product bearing the trade mark/ label
3. Status and registration certificate os Ex. PW1/3 TM No. 905509, T.M. No. 1963655 (Colly) and T.M. No.1247382 Status and Registration alongwith Legal Proceeding Certificate
4. Screenshots showing online presence/ Ex. PW1/4 sales of the plaintiff's goods on (Colly) different websites.
5. News Articles related to the plaintiff Ex. PW1/5
6. Availability of plaintiff's store in this Ex. PW1/6 CS (COMM.)/949/2022 Page 17 of 36 -18- Srl.no Document/Particulars Exhibit(s) Hon'ble Court's jurisdiction
7. Status of the defendant's impugned Ex. PW1/7 trade mark application under No. 4908110 in class 03 alongwith the notice of opposition filed by the plaintiff
8. Financial document related for the Ex. PW1/8 year 2020-21
9. Screenshots showing availability of Ex.PW1/9 online presence/ sales of the defendant's impugned goods and business
10. Power of Attorney and Board Ex.PW1/10 Resolution in favour of Mr. Anand (OSR) Arya and Ms. Meena Bansal dated
16.02.2021 of the plaintiff's constituted attorney
11. Affidavit under Order XI Rule 6 (3) Ex. PW1/B CPC in support of Electronic Record Documents.
16. On statement of counsel of plaintiff, PE was closed vide order dated 16-12-2024, passed by this Court.
17. Despite grant of sufficient time and number of opportunities, the defendant failed to lead his evidence CS (COMM.)/949/2022 Page 18 of 36 -19- either before Ld. Local Commissioner or before this Court, and thus, DE was closed vide order dated 25-3-2025, passed by this Court.
18. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up prayers/ reliefs as prayed in Prayer Clause Nos. 35(b), 35(c) and 35(d) of the amended plaint regarding restraining the defendant from disposing off or dealing with his assets, rendition of accounts on loss of business and delivery up, respectively. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 25-03-2025, passed by this Court.
19. It may be noted that after hearing final arguments on behalf of plaintiff, the case was posted for today i.e. 28.3.2025 for clarification/ judgment, with liberty to defendant to advance oral arguments or file written synopsis on or before the date of judgment, with advance copy thereof to the opposite side, failing which, it was made clear that the matter shall be decided on the basis of material available on record. Despite such direction, none has appeared on behalf of defendant to advance oral arguments, nor written submission has been filed till date.
20. I have already heard Ld. counsel of the plaintiff. I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
CS (COMM.)/949/2022 Page 19 of 36 -20-ISSUE WISE FINDINGS
21. My issue wise findings are as under:-
ISSUE NO.1
22. Firstly I shall take up the issue no. (i), which is reproduced hereunder:-
Issue no. (i) - Whether the plaintiff is entitled to decree of permanent injunction as prayed in Prayer Clause No. 35(a) of the amended plaint? OPP ARGUMENTS OF THE PLAINTIFF:
23. Ld. Counsel of plaintiff has argued that the entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendant and therefore, the plaintiff company is entitled to the decree, as prayed for. In support of his submissions, Counsel also relied upon the documents [Ex.PW1/1 to Ex.PW-1/10 and Ex.PW1/B.].
24. Further, it is submitted by Ld. Counsel of plaintiff that the trademarks/labels BURBERRY are well known trademarks of the plaintiff and are registered in India under various classes of the Trademark Rules 2002, which are valid and subsisting in favour of the plaintiff company till date. Further, the art works involved in the trademarks/ labels is original artistic work and the plaintiff holds copyright therein. Further, it is submitted that the plaintiff spends huge amount of money in advertising and CS (COMM.)/949/2022 Page 20 of 36 -21- promotion of its products and said marks enjoy a huge goodwill and reputation in business community and public in general in India and across the world.
25. Further, he submitted that the use of impugned trademarks /labels in similar goods as adopted by the defendant, is identical and/ or confusingly or deceptively similar to the registered trademark of the plaintiff i.e. BURBERRY and thus, same amounts to not only committing fraud upon the plaintiff company, but also upon the unwary general public, due to which the plaintiff company suffers huge monetary loss and its goodwill and reputation is also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendant, thereby restraining the defendant and all others acting for and on his behalf from using the said impugned trade-mark/ label.
26. As regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the defendant is selling, marketing, supplying, soliciting the impugned goods and business under the impugned trademark/label through online marketplaces from its own website www.ramcoproducts.com and other marketplace websites like https://zopboard.com/, which are stated to be interactive in nature and goods can be sold, purchased and delivered through them to any place including the place within the territorial jurisdiction of this Court. It is also argued that the defendant is making clandestine and CS (COMM.)/949/2022 Page 21 of 36 -22- surreptitious sales, offering for sale, and are also supplying, purveying, displaying, and soliciting, has intention to use/sell/solicit his impugned goods and business under the impugned trade mark/label in New Delhi Area viz. Connaught Place, Gole Market, Vasant Vihar, Lodhi Colony, Sarojini Nagar, Bengali Market, Naraina, Mandir Marg etc. adjoining areas i.e within the jurisdiction of this Court and thus, the defendant is committing the impugned acts of infringement and passing-off in the said markets of New Delhi Area by using, selling, soliciting, trade, distribution, and marketing networks in relation to the impugned goods under the impugned trademark/label. The plaintiff's above-said proprietary rights are being prejudicially affected or likely to be so affected in New Delhi due to the defendant's impugned activities. Thus, it is vehemently argued that the cause of action for filing the present suit either in whole or in part arose within the territorial jurisdiction of this Court within the meaning of Section 20 CPC.
27. Ld. Counsel of plaintiff has also argued that plaintiff's said goods and business under the said trademark are otherwise commercially available in the course of the trade within the jurisdiction of this Court. The plaintiff is working for gain as also carrying on its said goods and business under the said trademark in New Delhi through its exclusive store in New Delhi at Emporio Mall, Nelson Mandela Marg, Vasant Kunj II, Vasant Kunj, New Delhi-110070, CS (COMM.)/949/2022 Page 22 of 36 -23- and also through online marketplaces like AMAZON, FLIPKART, MYNTRA, NYKAA, SHOPPERS STOP etc. Thus, it is vehemently argued that the plaintiff is carrying out its said business under the said Trademark/Label within the territorial jurisdiction of this Court through its various authorized dealers and distributors, as also through various online marketplaces which are interactive in nature and goods can be sold, purchased, delivered within the jurisdiction of this Court. The plaintiff is also soliciting through its official website https://in.burberry.com/ and its official pages on Instagram, YouTube, X (Twitter), etc. Thus, it is contended that this Court further has also territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trademarks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
28. Further, Ld. Counsel of plaintiff has also relied upon judgment of Hon'ble Division Bench of our own High Court in the case titled as "RSPL Limited v. Mukesh Sharma & Anr" reported as 2016 (68) PTC 178 [Del] [DB] and judgment in the case of "V Guard Industries Ltd. v. Sukan Raj Jain & Anr." reported as 2021 (87) PTC 333 [Del].
ANALYSIS & CONCLUSION:
29. As regards jurisdiction, the PW1 has categorically deposed in his affidavit in evidence on identical lines of the averments made in the plaint. PW1 has proved screenshots CS (COMM.)/949/2022 Page 23 of 36 -24- showing online presence/ sales of the plaintiff's goods on different websites and its stores within the territorial jurisdiction of this Court as Ex.PW-1/4 and Ex.PW1/6 respectively. As per these documents, it is duly shown that the goods of the plaintiff under the said trade mark/ label BURBERRY are available on e-commerce websites such as Shopperstop and Nykka, apart from the website of plaintiff i.e. in.burberry.com, which are stated to be interactive in nature through which the said goods can be displayed, sold, purchased and deliverable to any place, including the place within the territorial jurisdiction of this Court. As per Ex.PW1/6, it reflects that 'New Delhi Emporio Mall' which is stated to be dealer of the plaintiff, and is shown to be operating within the territorial jurisdiction of this Court.
30. The PW1 has also proved screenshot showing availability of online presence/ sales of the defendant's impugned goods and business as Ex.PW1/9, according to which, it is also shown that the impugned goods bearing impugned trademark BROWNBERRY can be purchased through third party e-commerce website such as https://zopboard.com/, which is also stated to be interactive in nature, through which goods can be sold and delivered to any place, including within the area of New Delhi, which falls within the territorial jurisdiction of this Court.
CS (COMM.)/949/2022 Page 24 of 36 -25-31. The whole testimony of PW1 remained unchallenged and uncontroverted from the side of the defendant as despite grant of sufficient time and number of opportunities, the defendant failed to cross-examine PW1 and consequently, opportunity of the defendant was closed, as already noted above.
32. Therefore, in view of the law as laid down by Hon'ble Delhi High Court in cases titled as "Banyan Holding (P) Ltd. v. A Murali Krishna Reddy & Anr." reported as 2009 SCC OnLine Del 3780; "World Wrestling Entertainment, Inc. v. Reshma Collection & Ors." reported as 2014 (60) PTC 452 (Del.) (DB); and "Burger King v. Tekchand", reported as 2018 (76) PTC 90 (Del.), the Court is of the considered opinion that the plaintiff has been able to satisfy the test of purposeful availment of the impugned goods under the impugned trade marks/ labels as well as its goods under the registered trademarks/ labels being available within the territorial jurisdiction of this Court, as stipulated in the said judgments delivered by Hon'ble Delhi High Court.
33. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and in view of the above cited judgments and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted, the Court is of the considered opinion that at least part cause of action has arisen within the territorial jurisdiction of this Court and therefore, CS (COMM.)/949/2022 Page 25 of 36 -26- this Court has territorial jurisdiction to try and entertain the suit.
Now coming to permanent injunction.
34. Hon'ble Supreme Court in the case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trademarks, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trademarks of the plaintiff and the goods or services covered are similar to the ones covered by such registered trademarks, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademarks. Similarly, when the trademarks of the plaintiff is similar to the registered trademarks of the Defendant and the goods or services covered by such registered trademarks are identical or similar to the goods or services covered by such registered trademarks, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trademarks of the Defendant is identical with the registered trademarks of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trademarks, the Court shall presume that it is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trademarks. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trademarks for the vindication CS (COMM.)/949/2022 Page 26 of 36 -27- of the exclusive rights to the use of the trademarks in relation to those goods. The use by the Defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trademarks of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trademarks, whereas in the case of a passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the Defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trademarks. It has further been held that though the get up of the Defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that Defendant is improperly using the Plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the Defendant's trademarks is identical with the Plaintiff's trademarks, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
35. It is now well settled law, as also laid down by our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) that an infringement of trademarks is to be seen from the perspective of a layman, to quote:-
CS (COMM.)/949/2022 Page 27 of 36 -28-12.It is well settled that in an action for alleged infringement of a registered trademarks, if the impugned marked used by the defendant is identical with the registered trademarks of the plaintiff, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiff, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trademarks has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).
36. In view of above legal position, let's examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.CS (COMM.)/949/2022 Page 28 of 36 -29-
37. In the case titled as "Amrish Agarwal v. M/s Venus Home Appliances Pvt. Ltd." in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was inter alia directed that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trademarks infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trademarks showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trademarks registration certificate, copy of the trademarks journal along with the latest status report from the website of the Trademarks Registry. This should be accompanied by an averment in the pleadings that LPC is applied for.
Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trademarks registration is being disputed by the opposite side"
38. In this case, the plaintiff has relied upon and has filed Trade Mark Registration Certificates and/or Legal Proceeding Certificates and status reports thereof, which are duly proved by PW-1 as Ex.PW1/3 (Colly.). As per the these documents, it is duly shown, inter alia, that 'BURBERRY', BURBERRY BRIT is duly registered as CS (COMM.)/949/2022 Page 29 of 36 -30- word mark/ device mark and BERBERRY CHECK BLACK & WHITE are registered as device marks in favour of plaintiff since long. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of said trademarks/ word mark/ device marks stand renewed and same are valid till date.
39. As already noted above, the defendant not only chose not to cross-examine PW1, but also preferred not to lead evidence towards his defence. Therefore, there is nothing on record, which could substantiate the defence of the defendant. Thus, the entire testimony of PW-1 has gone un-rebutted, uncontroverted and unchallenged. Thus, the case of the plaintiff stood proved against the defendant on the basis of preponderance of probability. It is duly established on record that the trademarks/ labels/ word mark/ device marks BURBERRY are duly registered in favour of the plaintiff.
40. PW1 has also proved status of defendant's impugned trademark application under No.4908110 in Class 03 along with notice of opposition as Ex.PW1/7, which shows that the said application is still under opposition at the instance of the plaintiff herein. Moreover, it is not disputed by the defendant that impugned trademark/label is still not registered in his favour and is lying opposed from the side of the plaintiff.CS (COMM.)/949/2022 Page 30 of 36 -31-
41. The impugned trade mark/ label RF BROWNBERRY and as adopted by the defendant is phonetically identical and/or deceptively similar to the plaintiff's registered trade marks/ label BURBERRY/ , and .
42. In the totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant was manufacturing, stocking, distributing and selling goods bearing falsified trademark /trade name/ labels of the plaintiff company and therefore, trademarks and copyright of the plaintiff company are required to be protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction, whereby the defendant is required to be restrained from using trademark RF BROWNBERRY or any other word mark/ mark/ trademark/label which may be identical with and/ or deceptively similar to the plaintiff's said trademarks/ labels BURBERRY in relation to similar goods, thereby infringing plaintiff's registered trademarks, copyright and passing off his products as that of the plaintiff.
43. Accordingly, the aforesaid issues no. (i) is decided in favour of the plaintiff and against the defendant.CS (COMM.)/949/2022 Page 31 of 36 -32-
ISSUE NO.2
44. Now I shall decide issue no. (ii) regarding delivery up, which is reproduced hereunder:-
Issue no. (ii) - Whether plaintiff is entitled to order for delivery up of all impugned goods, finished and unfinished material bearing impugned mark/ label/ trade name/domain name for the purposes of destruction and erasure, as prayed in Prayer Clause No.35(c) of the amended plaint? OPP.
45. No finding is required to be given in respect of aforesaid issue, in view of statement of counsel of plaintiff made on 25-03-2025 regarding giving up the relief as prayed in Prayer Clause No.35 (c) of the amended plaint regarding delivery up and consequent order thereupon.
ISSUE NO.3
46. Now I shall decide issue no. (iii) regarding rendition of accounts, which is reproduced hereunder:-
Issue no. (iii) - Whether plaintiff is entitled to an order of rendition of accounts of profits earned by the defendant by his impugned illegal trade activities and is entitled to a decree for the amount so found in favour of plaintiff on such rendition of account, as prayed in Prayer Clause No. 35(d) of the amended plaint. OPP?CS (COMM.)/949/2022 Page 32 of 36 -33-
47. No finding is required to be given in respect of aforesaid issue, in view of statement of counsel of plaintiff made on 25-03-2025 regarding giving up the relief as prayed in Prayer Clause No.35 (d) of the amended plaint regarding rendition of accounts and consequent order thereupon.
ISSUE NO. 448. Now I shall decide issue no. (iv) regarding rendition of accounts, which is reproduced hereunder:-
Issue no. (iv) - In case, the issue no.3 is answered in negative, whether plaintiff is entitled to a decree of ₹3,10,000/- towards damages in its favour, as prayed in Prayer Clause No. 35(e) of the amended plaint ? OPP
49. The initial burden to prove the aforesaid issue was placed upon the plaintiff. Apart from PW1, the plaintiff had not examined any other witness to prove the aforesaid issue. The PW1, in his affidavit in evidence, has not explained and stated as to how the plaintiff has quantified the damages to be Rs.3,10,000/-, as claimed.
50. During the course of arguments, Ld. Counsel of plaintiff was also called upon to make submission on the aforesaid aspect, in view of the fact that the plaintiff has not led any cogent evidence regarding the quantum of damages, as also about the extent of loss of goodwill and reputation of the plaintiff. He, in all fairness, submitted that reasonable CS (COMM.)/949/2022 Page 33 of 36 -34- damages may be awarded in favour of the plaintiff and against the said defendant, as the defendant has chosen not to lead any evidence or to produce his books of accounts during trial.
51. As already noted above, the defendant had put his appearance through counsel and filed written statement contesting the suit. On the basis of pleadings of the parties, issues were framed, however, at the stage of evidence, the defendant stopped appearing and neither chose to cross- examine PW1, nor led any evidence towards DE to disprove the claim of the plaintiff. Thus, no material has been brought on record by either of the sides so as to enable the Court to quantify the damages. At the same time, it cannot be overlooked that the defendant would have definitely earned profits by using the impugned trade mark/ labels RF BROWNBERRY and on similar goods, which is identical and/ or deceptively similar to the the registered trade mark / label BURBERRY belonging to the plaintiff and same would have resulted in causing loss of reputation and goodwill of the plaintiff. Hence, the claim made by the plaintiff for award of damages is found to be justified under the law. Keeping in view the overall facts and circumstances of the case and the relevant averments appearing in Para No.32 of the amended plaint to the effect that the plaintiff came across impugned products of the CS (COMM.)/949/2022 Page 34 of 36 -35- defendant under the impugned Trade Marks/ labels in the first week of July, 2021, whereas, the present suit has been filed in the last week of July, 2021 itself, the Court is of the opinion that the plaintiff company is entitled to damages quantified as ₹2,00,000/- (Rupees Two Lacs only) to be recovered from the defendant. It is so ordered accordingly.
RELIEF:
52. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant and thus, the following reliefs are granted:-
52.1 Suit is decreed in favour of plaintiff and against the defendant qua permanent injunction thereby restraining the defendant by himself as also through his individual proprietors/ partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on his behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner dealing in or soliciting or selling/ soliciting through online platforms or online websites or using the impugned trademarks/ labels RF BROWNBERRY any other word mark/ device marks/ label which may be identical with and/ or deceptively similar to the CS (COMM.)/949/2022 Page 35 of 36 -36- plaintiff's said trade marks / label BURBERRY in relation to similar goods, thereby infringing Plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
52.2 Plaintiff is entitled to recover ₹2,00,000/- (Rupees Two Lacs only) from the defendant towards damages; and 52.3 Cost of the suit is also awarded in favour of the plaintiff.
53. Decree sheet be prepared accordingly.
54. File be consigned to Record Room, after due compliance.Digitally signed by VIDYA
VIDYA Announced in the open court PRAKASH PRAKASH Date:
on 28th Day of March, 2025 2025.03.28
16:57:29 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (COMM.)/949/2022 Page 36 of 36