Burberry Ltd. filed a suit under Sections 134 and 135 of The Trade Marks Act, 1999 and Section 55 of The Copyright Act, 1957 for a permanent injunction restraining Aditya Verma from violating proprietary rights. Learned ADJ, Patiala House Courts, New Delhi dismissed Burberry’s suit.

Trial Court has completely misdirected itself in placing undue emphasis on proof of counterfeit products whereas issue before it was whether there was infringement of a registered trade mark. Had this been focused on, Trial Court would have been quick to note, proof required was not of whether there was counterfeiting but of, infringement by unauthorized use. Had products been not counterfeit, even then, if trade marks used were to mislead regarding origin, a case for injunction would have been made out.

It is strange, Trial Court chose to decide on standard of criminal jurisprudence to hold, case had not been proved beyond doubt. Unlike in a criminal case, in a case of infringement of registered trade marks or of passing off, similarity of marks used is to be considered. There is no call to have an expert witness to testify. Trial Court fell in grave error in holding, absence of expert testimony disproved infringement and passing off.

Report of Local Commissioner established, products not originating from Burberry Ltd. were found in possession of Aditya Verma. He ought to have explained how he had come in possession of same. In any case, clearly, he had to be restrained from doing any act harmful to interests of Burberry as also general public.

– Hon’ble Justice Asha Menon of Hon’ble High Court of DelhiBurberry Ltd. v. Aditya Verma, [RFA (IPD) 4/2021; CM APPLs 6298/2020 & 6300/2020].