Delhi High Court - Orders
Burberry Limited vs M/S Petrol Perfume & Ors on 28 February, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~60
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 176/2024
BURBERRY LIMITED ..... Plaintiff
Through: Ms. Bitika Sharma, Mr. Rishi Bansal,
Mr. Neeraj Bhardwaj and Mr. Vinny
Pradhan, Advocates.
versus
M/S PETROL PERFUME & ORS. ..... Defendants
Through: Ms. Archana Sahadeva and Mr.
Harshita Bhoi, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 28.02.2024 I.A. 4612/2024 (seeking leave to file additional documents)
1. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
2. If Plaintiff wishes to file additional documents at a later stage, they shall do so strictly as per the provisions of the said Act.
3. Accordingly, the application stands disposed of.
I.A. 4613/2024 (seeking exemption from filing original, clear copies, prayer copies and documents with proper margins)
4. Exemption is granted, subject to all just exceptions.
5. Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
6. Accordingly, the application stands disposed of.
CS(COMM) 176/2024 Page 1 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:06 I.A. 4614/2024 (seeking pre-institution mediation under Section 12A of the Commercial Courts Act, 2015)
7. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
8. Disposed of.
CS(COMM) 176/2024
9. Let the plaint be registered as a suit.
10. Issue summons. Ms. Archana Sahadeva, counsel for the Defendants, accepts summons. Written statement(s) shall be filed by the Defendants within 30 days from today. Along with the written statement(s), the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.
11. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
12. List before the Joint Registrar for marking of exhibits on 1st May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court for framing of issues thereafter.
12023 SCC OnLine SC 1382.
CS(COMM) 176/2024 Page 2 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:06
14. At request of the counsel, parties are referred to Delhi High Court Mediation and Conciliation Centre, where they shall appear on 5th March, 2024.
I.A. 4611/2024 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
15. Issue notice. Ms. Archana Sahadeva, counsel for Defendants, accepts notice. In view of the urgency expressed by Ms. Bitika Sharma, counsel for Plaintiff, the Court has proceeded to hear the counsel for parties on the issue of grant of ad interim injunction.
16. Ms. Bitika Sharma has presented the following facts and contentions on behalf of the Plaintiff:
16.1. Plaintiff/ Burberry Limited is a private limited company headquartered and incorporated in London, England. Plaintiff conducts its business in India through its subsidiary Burberry India Private Limited, incorporated in the year 2010 under the laws of India. Plaintiff is engaged in the business of manufacture, distribution and sale of a wide range of products including, inter alia, apparels, garments, glasses, footwear and fragrances.
16.2. Plaintiff is the owner and proprietor of several trademarks such as BURBERRY, BURBERRY EQUESTRIAN KNIGHT Logo, CHECK device, and various BURBERRY formative trademarks/ labels such as . Plaintiff has been using their trademarks continuously, exclusively and uninterruptedly since their adoption.CS(COMM) 176/2024 Page 3 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 16.3. Plaintiff is among the leading premium lifestyle designer apparel brands globally, and has been consistently recognised amongst 'The 100 Best Global Brands' by Interbrand, which is a famous independent brand-ranking organization. Plaintiff designs, makes, sources and sells products under the BURBERRY trademark/ label globally through their stores, as well as through their online platform www.Burberry.com and other third-party wholesale outlets, both offline and online. The details of financial highlights of the Plaintiff globally for the year 2022 - 2023, are as follows:
16.4. Paragraph No. 11 of the plaint sets out the details of Plaintiff's trademark registrations under the Trade Marks Act, 1999 ["Act"], including registrations in Class 3, which covers goods and services including, inter alia, perfumes, colognes and fragrances.
16.5. The instant suit concerns the Plaintiff's two perfumes sold under the trademarks 'MY BURBERRY' and 'MR. BURBERRY', as well as their trade dress, which are depicted as follows:CS(COMM) 176/2024 Page 4 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 Plaintiff's Label/ Mark Plaintiff's Label/ "MY BURBERRY" Trade Dress "MY BURBERRY"CS(COMM) 176/2024 Page 5 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 Plaintiff's Label/ Mark Plaintiff's Label/ Trade Dress "MR. BURBERRY"
"MR. BURBERRY"
16.6. The Plaintiff globally adopted 'MY BURBERRY' in the year CS(COMM) 176/2024 Page 6 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 2014 and 'MR. BURBERRY' in the year 2016. The Plaintiff has incurred significant expenses in advertising the said products, and the worldwide launch campaign was met with a great response. Consequently, the said marks have acquired significant goodwill and reputation. The products have been successful commercially and have grown to be one of the most renowned fragrances of the Plaintiff. Details of sales figures in India have also been delineated in the plaint.
16.7. Plaintiff's grievance arises from the Defendant's deceitful activities in relation to manufacture and sale of perfumes, fragrances and allied/related products bearing their registered marks 'MY PETROL'/ ' ' and 'MR. PETROL'/ ' ' ["impugned marks/ labels"], which are deceptively similar to the Plaintiff's aforenoted marks. Further, Defendants have adopted identical trade dress comprising of identical font and writing style, colour combination, overall look, get up, surface pattern, manner of writing and placement of objects, shape and structure of perfume bottle ["impugned trade dress"]. The representation of the impugned products bearing the impugned mark/ label/ trade dress, are as follows:
"The impugned The impugned
mark/ label/ trade dress of mark/label/trade dress of
MY PETROL MR. PETROL
CS(COMM) 176/2024 Page 7 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 "
16.8. Thus, Defendants' impugned marks/ labels/ trade dress are identical/ deceptively similar to the Plaintiff's. Moreover, since the impugned marks are used in respect of identical goods, there is a strong likelihood of confusion in the market and dilution of the Plaintiff's marks. In such circumstances, the Plaintiff has filed the instant suit seeking protection of their marks.CS(COMM) 176/2024 Page 8 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 16.9. Additionally, it is pointed out that the Defendants are habitual infringers. They have adopted this modus operandi of counterfeiting products and imitating marks/ trade dress of several popular brands which have already attained recognition and reputation in the market. Such counterfeiting activity has been restrained by this Court on prior occasions, and copies of such restraint orders have been filed along with the plaint.
17. Ms. Archana Sahadeva, counsel for Defendants, contests these submissions and defends the actions of the Defendants. At the outset, she points out that the Defendants' impugned marks are registered whereas the Plaintiff's marks are not. Therefore, Defendants' use of their marks is permissible and the Plaintiff cannot claim infringement. She further argues that Defendants' marks are distinct from those of the Plaintiff as there is no similarity between prominent parts of the competing marks, i.e. 'BURBERRY' and 'PETROL'. Moreover, there is a significant difference in the pricing of the competing products, which would sufficiently ensure that there is no confusion created in the market as the purchasing customers would be entirely different. Additionally, Ms. Sahadeva controverts the allegation that Defendants are habitual offenders, contending that that the decisions relied upon by the Plaintiff in this regard were rendered ex-parte and that the Defendants have already taken steps to re-open the said proceedings.
18. Accordingly, Ms. Sahadeva submits that the Defendants have adopted their registered marks with bona fide intent and therefore no injunction should be granted. Furthermore, Defendants have been in the market since the year 2019, and the Plaintiff, despite being aware of their presence, have CS(COMM) 176/2024 Page 9 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 not taken any steps to contest their products. Consequently, there is no reason for the goods already manufactured to be included in the injunction order, if any.
19. The Court has considered the aforenoted contentions. For the sake of clarity and convenience, a side-by-side comparative table of the Plaintiff and Defendants' products is set out as under:
PLAINTIFF'S SAID DEFENDANTS'
MARK/LABEL/TRADE IMPUGNED
DRESS/ GOODS MARK/LABEL/TRADE
DRESS/ GOODS
"MY BURBERRY" "MY PETROL"
CS(COMM) 176/2024 Page 10 of 15
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 "MR. BURBERRY" "MR. PETROL"
20. At first glance, the Defendants' impugned marks 'MY PETROL' and 'MR. PETROL' might seem to be sufficiently distinct from the Plaintiff's marks, however, comparison of the products on which the impugned marks are being utilized exhibits complete dishonesty on the part of the Defendants. Specifically, the Defendants' choice of typography for these marks, coupled with the adoption of a trade dress identical to that of the Plaintiff's products, creates an unmistakable impression of counterfeiting.
CS(COMM) 176/2024 Page 11 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 Despite the lawful registration of their trademarks, the Defendants are employing these marks in respect of identical goods as the Plaintiff's offerings, in a virtually indistinguishable manner. Thus, in the prima facie opinion of the Court, Defendants' adoption of their trademarks does not appear to be in good faith, but rather suggests a deliberate attempt to exploit the reputation and goodwill associated with the Plaintiff's marks. Such conduct is unacceptable, constituting a clear misrepresentation to consumers and effectively nullifying any superficial distinctions between the trademarks in question.
21. Therefore, the Court prima facie finds that the Defendants' actions exhibit a mala fide intent to leverage the established market presence of the Plaintiff's products to their advantage, a practice that is legally impermissible and actionable under the principles governing passing off. Although Ms. Sahadeva has argued that the Plaintiff cannot press for injunction on the basis of infringement as the Defendants' marks are registered, in the opinion of the Court, Plaintiff can nonetheless seek injunction on passing off. This understanding is supported by the Supreme Court's judgment in S. Syed Mohideen v. P. Sulochana Bai2, wherein the Court has observed that passing off, being a common law right, is a broader remedy than infringement and may be pressed even in case an impugned mark is registered.
22. In the present case, all three ingredients of passing off are clearly met:
Plaintiff has formulated a reputation in their marks, which is established on the basis of their revenue and the expenses incurred for advertising the said marks. Further, the Defendants are utilizing their impugned marks/ labels/ CS(COMM) 176/2024 Page 12 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 trade dress in the context of identical goods, pointing towards an intentional strategy to blur the distinction between the Defendants' and the Plaintiff's products and exploit the Plaintiff's established reputation to accrue unjust advantage. Finally, the use of the impugned marks in this manner would certainly cause irreparable loss to the Plaintiff in case the Defendants are not injuncted from using the impugned marks/ labels/ trade dress.
23. In light of the above, the Court finds that the Plaintiff has made out a prima facie case in their favour and in case no ad-interim injunction is granted, Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants. Additionally, Ms. Sahadeva's request for this Court to carve out an exception for the Defendants' already manufactured products is not entertained, as the Defendants' products are clearly counterfeit and therefore it would not be in public interest to make such an exception, in spite of the Defendants' registrations.
24. Accordingly, till the next date of hearing, the Defendants, their representatives and/or anybody acting on their behalf are restrained from using, selling, manufacturing, marketing, importing, exporting or dealing in any manner in the physical or online market place, under the impugned marks/ labels/ trade dress 'MY PETROL'/ 2 (2016) 2 SCC 683.
CS(COMM) 176/2024 Page 13 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 or any other variants; and "MR. PETROL/ and any other variants which may be identical and/or deceptively similar to word/mark to trade marks/ label/ trade dress of the Plaintiff i.e, "MY BURBERRY/ and its variants; and "MR. BURBERRY/ and its variants; as well as any deceptively similar adoption in relation to their impugned goods and related goods under the Plaintiff's said trademarks/labels and related/allied goods and from doing any other acts or deeds amounting or likely to amount to: (i) Infringement of the Plaintiff's Copyrights/ labels; (ii) Passing off and violation of the Plaintiff's common law rights in the said Trademarks/labels/ trade dress and violation of the Plaintiff's rights in said trade-name; and/or (iii) Falsification, unfair and unethical trade practices.
25. Reply, if any, be filed within four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
26. List before the Court on 31st July, 2024.
CS(COMM) 176/2024 Page 14 of 15This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07 I.A. 4615/2024 (for appointment of Local Commissioner)
27. Ms. Bitika Sharma, counsel for the Plaintiff, states that in light of the fact that the advance service was effected on the Defendants and the injunction order has been passed, the Defendants would in all likelihood have removed the infringing goods from their premises. Therefore, no purpose would be served by appointing a Local Commissioner. Instead, Ms. Sharma seeks directions to be issued for the Defendants to provide details of the infringing goods on an affidavit.
28. Accordingly, the Defendants are directed to file an affidavit within a period of two weeks from today disclosing full particulars of the goods manufactured under the impugned marks/ labels/ trade dress, including batch numbers, date of manufacturing, etc. for the last three years.
29. With the above direction, the application is disposed of.
SANJEEV NARULA, J FEBRUARY 28, 2024 as CS(COMM) 176/2024 Page 15 of 15 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/03/2024 at 22:55:07