Preserving Brand Identity: Delhi High Court's Verdict in Burberry Limited's Trademark Battle

In its recent ruling, the Honourable Delhi High Court has reaffirmed the pivotal role of granting relief for passing off, while safeguarding the integrity of the trademark by restraining the defendant, who is a registered trademark user, from passing off the plaintiff’s reputed trademarks. The subject was brought into light in a recent case involving Burberry Limited, who had filed a suit for injunction against M/s Petrol Perfumes for infringement of their renowned perfume line, 'MY BURBERRY'   and 'MR. BURBERRY' , as well as its associated trade dress.

The suit filed by Burberry Limited concerns the Defendant’s deceptive act to manufacture and sell perfumes, fragrances, and related products bearing their registered marks 'MY PETROL'  and 'MR. PETROL' . The Court in its findings identified the defendants impugned marks/labels/trade dress to bear a striking resemblance to the Plaintiff’s marks which in turn will lead to a strong likelihood of confusion within the market and the dilution of Plaintiff’s reputation and goodwill. The Court further observed that there were clear indications of counterfeiting as evident from the Defendants’ use of the trade dress and the typographic choices, which were deceptively similar to those of the Plaintiff. Such conduct was to be deemed unacceptable and constituted a clear misrepresentation to the consumers according to the Hon’ble Court.

Despite the Defendant counsel’s contention that the Plaintiff cannot press for injunction on the basis of infringement as the Defendants’ marks were registered with the trademark registry unlike the plaintiff’s, the Hon’ble Court determined that the Defendants' usage of the Impugned marks was not permissible due to the established principles of passing off.

While citing the Supreme court’s observation in S. Syed Mohideen v. P. Sulochana Bai [(2016) 2 SCC 683], the hon’ble High Court reaffirmed that a remedy for passing off, being a common law right, shall have a broader scope as compared to infringement and may be pressed even in cases where the impugned mark is registered.

The Court found all three elements of passing off to be clearly met in its decision against the Defendants, including:  

• The Plaintiff’s established reputation over their trademarks,
• The intentional strategy employed by the Defendants for misrepresentation in order to blur the distinction between their products and the Plaintiff’s
• The potential irreparable damage to goodwill the Plaintiff would suffer if the Defendants were not injuncted from using the impugned marks, labels, and trade dress.

The Court’s ruling to grant injunction against a registered user for ‘passing off’, ‘misrepresentation’ and ‘counterfeiting’ signifies the importance of protecting one’s Intellectual Property Rights with utmost care and prevention of unfair competition in the marketplace. The order of the Hon’ble Court also highlights the relevance of a ‘Trade dress’ over other trademarks as a valuable asset for distinguishing one’s brand from the others in the present times.