Delhi District Court
Burberry Ltd. vs . Jayant Kumar on 15 November, 2018
IN THE COURT OF SH. ANIL ANTIL, ADJ05 SOUTH EAST
DISTRICT, SAKET COURTS, NEW DELHI.
TM No. 105/18
Burberry Ltd. Vs. Jayant Kumar
Burberry Limited
Horseferry House, Horseferry Road
London SW1P 2AW, England
Through
Nirmal Singh
Constituted Attorney
96, Sukhdev Vihar
New Delhi110025 ..........Plaintiff
V E R S U S
Jayant Kumar
Trading as GANIK button & Labels
16/130 E tank Road, Anand Puri,
Karol Bagh,
Delhi110005 ........Defendant
Date of institution of the suit : 05.06.2018
Date of reserved for judgment : 15.11.2018
Date of pronouncement of judgment: 15.11.2018
SUIT DECREED
EXPARTE JUDGMENT
1.The plaintiff has filed the suit for permanent injunction for restraining the defendant from passing off and infringing their trademarks, TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 1 of 11 copyright, passing off, Delivery up, and for renditions of accounts.
2. Plaintiff's version as per averments in the plaint : 2.1 That the case of the plaintiff as set out in the plaint in nutshell is that plaintiff, Burberry Ltd is a Private limited company duly incorporated on 9th January 1920 and existing in accordance with the laws of England having its registered office at Horseferry House, Horseferry Road, London SW1P2AW, England.
2.2 That the plaintiff is engaged in the business of manufacture, distribution and sale of wide range of handbags, wallets, leather bags, ready to wear apparels, clothing, cosmetics, fragrances, sunglasses, footwear, fashion bags, leather goods, belts, leather belts, buckles, watches and other fashion accessories and allied/related products. 2.3 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. The plaintiff has been honestly and bonafidely, continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof using its BURBERRY EQUESTRIAN KNIGHT logo since the year 1901 and its CHECK device since 1920s, 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 on worldwide and globally valuable trade goodwill and reputation thereunder and acquired proprietary rights therein.
TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 2 of 11 2.4. Plaintiff's products are sold globally through its stores and burberry.co, as well as through third party wholesale customers, both offline and online.
2.5 That the plaintiff has been dealing with its artworks/ copyright BURBERRY in the course of the trade in relation to its said goods and business interalia within the meaning of Section 14 of the Copyright Act, 1957.
2.6 That the plaintiff has registered its said trademark/label in all the major countries of the world and across all continents and regions and has acquired immense goodwill and reputation under the said trademarks/labels. 2.7 That with the advent of ecommerce and consumers becoming increasingly mobile and global, plaintiff continued to invest in digital commerce. Online and instore innovations worked together to create a seamless experience wherever customers encountered the brand, burberry.com is the brand's largest store in terms of traffic and sales, servicing 44 countries in 11 languages. The plaintiff has adopted the said BURBERRY trademark/label as an essential and material part of its Email ID and Domain Name viz https://www.burberry.com/, www.burberryplc.com/, https://in.burberry.com etc. 2.8 That plaintiff company has thus exclusive right to use said trademark and logos with respect to its products and no one is entitled to use the trademarks BURBERRY, BURBERRY EQUESTRIAN KNIGHT logo, CHECK device and various BURBERRY formative trademarks/ labels or TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 3 of 11 any mark deceptively and confusingly similar to BURBERRY, BURBERRY EQUESTRIAN KNIGHT logo, CHECK device and various BURBERRY formative trademarks/ labels without a licence or assignment by the plaintiff company.
2.9 That the defendant is engaged in the business in manufacturing, marketing, soliciting and trade of tags, labels, rolls etc which are for to be used on ready made clothings, apparels, garments, handbags, footwear, shoes, bags, belts, perfumes, accessories, lifestyle goods and / or related/cognate or allied goods and / or related / cognate or allied goods. Defendant has dishonestly and malafidely adopted and started using the trade mark/label BURBERRY, BURBERRY EQUESTRIAN KNIGHT logo, CHECK device and various BURBERRY formative trademarks/ labels in relation to their impugned goods and has been using the same individually or in combination of each other. The defendant is giving false trade description to their impugned goods.
2.10 That defendant is indulging in counterfeiting the impugned goods, which is in complete violation of plaintiff's statutory and common right in the said trademark/label/trade name/domain name. The defendant is not the proprietor of the impugned trade mark/ Label and has adopted and is so using in relation to their impugned goods and business and is otherwise dealing with it in the course of trade without the leave and license of the plaintiff.
2.11 That defendant is selling and distributing of spurious goods from TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 4 of 11 its premises at South East Delhi viz. Greater Kailash, Lajpat Nagar etc. During the market survey in the last week of February 2018, the plaintiff company came to the knowledge that the trademarks and logos adopted by the defendant are deceptively and confusingly similar to the registered trademark BURBERRY, BURBERRY EQUESTRIAN KNIGHT logo, CHECK device and various BURBERRY formative trademarks/ labels of plaintiff and unwary customers are likely to be easily deceived, confused or misled.
3. Vide 'John Doe' order dated 08.06.2018, exparte injunction was granted and the present defendant was substituted thereafter.
4. The plaintiff's prayed for execution of a Local Commission to seize spurious products was allowed, and as per the report, offending material bearing the impugned trade Mark/Label 'BURBERRY' was seized from the premises in the presence of defendant no. 1 and were recovered.
5. Process issued to the all the defendants and defendants was duly served. No WS was filed. Vide order dated 03.08.2018 defendant was proceeded exparte accordingly.
6. Defendants is exparte; there is nothing to disbelieve the authenticity and veracity of the documents filed by the plaintiff on record. The defendant did not come forward to disprove the case of plaintiff as it stands.
7. The plaintiff has led exparte evidence by way of an affidavit, reiterating the averments made in the plaint. In exparte evidence, AR of the TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 5 of 11 plaintiff company Sh. Nirmal Singh stepped into the witness box and deposed vide affidavit of evidence exhibited as Ex.PW1/A reiterating the contents of the plaint.
8. For the sake of brevity and to avoid repetition the contents are not reproduced. The AR of plaintiff relied upon the documentary evidence Ex.
PW1/1 to Ex. PW1/9 i.e.:
S. Particulars of Documents Documents Date of list
No. exhibited/mark of documents
ed as
1 The true representation of said Trade Ex.PW1/1 17.03.2018
(colly)
Mark/ Label of the plaintiff
2 Representation of impugned goods Ex. PW1/2
(colly)
bearing impugned trademark/label
3 The list of plaintiff's trademark MarkA
registration
4 Registration certificates and status of Ex. PW1/3
(colly)
plaintiff's trademark/labels and related
documents
5 Income statement, earnings, cash Ex. PW1/4
(colly)
flow, balance sheet etc. of the plaintiff
from 20112015
6. Documents relating to plaintiff's Ex. PW1/5
(colly)
recognition as top performing
company, acts done towards corporate
TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 6 of 11
social responsibility as extracted from
plaintiff's website
7. Authorization letter Ex. PW1/6
(OSR)
8. Documents relating to plaintiff's Ex. PW1/7 business within jurisdiction
9. Report of Local Commissioner Ex. PW1/8 (colly)
9. Heard. Perused the records meticulously. I am of the considered view, plaintiff is entitled to a decree in his favour and against the defendant for the reasons stated as under.
10. Perusal of the documents and Pleadings filed by the plaintiff transpires that plaintiff's trademark are all registered and valid as on the date of filing of the suit. The registration gives exclusive rights to the plaintiff to protect their rights in said marks and take infringements actions against any party in violation thereof. By virtue of long, extensive and continuous use of trademark, plaintiff's marks have become inseparable and synonymous with the goods and services of the plaintiff.
11. As held by the Hon'ble High court of Delhi in "The Royal Bank of Scotland Group PLC Vs. Sharekhan Limited, 216(2015) DLT 197", quoted with approval in the case relied upon by the plaintiff:
'In order to establish infringement, the main ingredients of Section 29 of the Act are that the plaintiff's mark must be registered under TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 7 of 11 the Act; the defendant's mark is identical with or deceptively similar to the registered trade mark; and the defendant's use of the mark is in the course of trade in respect of the goods covered by the registered trade mark. The rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's trade mark is likely to deceive and cause confusion as the registration show the title of the registered proprietor and the things speak for themselves. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question. If court find that the defendant's mark is closely, visually phonetically similar, even then no further proof is necessary.'
12. In the present case, comparison of the marks reflects the similarity between the impugned marks of defendants and the marks of the plaintiff; defendant's marks are structurally, visually and phonetically similar to the plaintiff's marks. It is a classical case of counterfeit goods.
11. Customers base of the products of both the parties may not be same. But plaintiff is entitled to protection of its proprietary rights in the trademarks under Section 29 (1) & (2) as well under the doctrine of dilution statutorily incorporated in clause 4 of Section 29 of Trademarks Act. The representation of the marks by the defendant tends to cause confusion in the minds of the general public as well as to the customers as to the source of the TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 8 of 11 impugned products.
13. If the defendant is permitted to use the impugned mark which are deceptively similar and confusingly to that of the plaintiff's company, it will not only cause wrongful loss to the plaintiff company, but it will also cause grave prejudice and harm to public. Not to mention about loss to the goodwill of the plaintiff.
14. Be that as it may be, defendants are exparte. Nothing has come on record to disbelieve the case of the plaintiff or to doubt the authenticity and veracity of the document filed on record. The defendant did not come forward to disprove the case of plaintiff his stand. Consequently plaintiff is entitled to a decree for injunction in his favour and against the defendant.
15. Damages 15.1 In the present suit plaintiff is also claiming rendition of account by the defendant and damages in terms of prayer clause 'd' of the plaint. 15.2. A reference to the decision of Hon'ble High Court of Delhi titled as " The Heels V. Mr. V. K. Abrol and Anr. , CS (OS) No. 1385 of 2005 decided on 29.03.2006" would be profitable, wherein the Hon'ble court has held:
"This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that on enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 9 of 11 amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable.
No doubt it not possible to give an exact figure of damages on the basis of actual loss, but certain token amounts on the basis of the sales of the plaintiff can certainly be made. The plaintiff is unnecessarily dragged into litigation and the defendants must bear consequences thereof. In fact in such a case both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff on to such litigation. In view of the given sales figure of the plaintiff. I consider it appropriates to grant a decree of damages in favour of the plaintiff and against the defendants for a sum of Rs. 3 lakh apart from costs of the suit. ' 15.3 In view of my finding that the plaintiff is entitled to the relief of permanent injunction, also taking in to consideration the proposition of law stated above I am of the view plaintiff is entitled to compensatory and punitive damages to the tune of Rs. 2 lakhs rupees in its favour and against the defendant.
16. Relief.
In view of my above discussion, the present suit is decreed in favour of the plaintiff and against the defendant in terms of the para 38 prayer clauses TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 10 of 11
(a) to (c) of the plaint with compensatory/punitive damages to the tune of Rs.
2 lakhs.
The suit stands disposed of as decreed qua defendant. Cost of the suit is awarded in favour of the plaintiff and against Defendant.
Decree sheet be drawn accordingly.
File be consigned to record room.
Announced in the open court (Anil Antil) today ie. 15.11.2018. ADJ05/(SE)/Saket Court, New Delhi TM No. 105/18 Burberry Ltd. Vs. Jayant Kumat Page no. 11 of 11