Introduction
As per recent reports, luxury goods retail face $30 billion annual loss due to counterfeiting which is diluting their brand identity.1 The latest report of Authentication Solution Provider's Association (ASPA) reveals that counterfeiting activities significantly impact various industries, including luxury fashion, where fake products are prevalent. Consumers and retailers in major Indian cities estimate that 25-30% of goods in the market are counterfeit, with luxury items being highly susceptible due to high consumer demand and price sensitivity.2
Maintaining trade mark integrity is crucial for luxury businesses as it not only meets legal requirements but also serves as a fundamental element of brand identity and customer confidence. The significance of this idea is highlighted by the recent ruling rendered by the Hon'ble Delhi High Court in Burberry Limited v. Petrol Perfume3. The Hon'ble Court's decision not only brought attention to the complexities of trade mark law but also established a standard for how cases of a similar nature might be handled in the future, particularly in the luxury goods industry.
The Hon'ble Court's decision is crucial because it serves as a key reminder to businesses about the moral and legal ramifications of managing their brands and the potentially dangerous effects of crossing intellectual property lines. This article explores the specifics of the Hon'ble Court's rulings, the legal defences put up by each party, and the wider ramifications for trade mark enforcement in the very competitive luxury market.
About the Parties:
1. Burberry, a globally renowned and premium fashion brand headquartered in the UK and operating in India through its subsidiary, Burberry India Ltd., filed a lawsuit against M/s Petrol Perfumes, claiming that:
- The latter had stolen and passed-off their highly reputed and well-known trademarks "MY BURBERY" ( ) and "MR. BURBERRY" ( ) adopted since 2014 and 2016 respectively globally.
- Burberry also claimed that M/s Petrol Perfumes was using their distinctive trade dress to infringe on their marks.
- Burberry argued that this diminished the unique quality and prestige of their well-known trade marks in addition to confusing customers.
2. M/s Petrol Perfume is an MSME incorporated on February 01, 2017 and deals in manufacturing and selling perfumes and deodorants.
Facts of the Case:
The Plaintiff, Burberry Limited, owns several registered trade marks such as BURBERRY, BURBERRY EQUESTRIAN KNIGHT Logo, CHECK device, and various BURBERRY formative trademarks/ labels and is known for their logo ( ).The Plaintiff is engaged in the business of manufacturing, distribution and sale of a wide range of products including apparels, garments, glasses, footwear and fragrances. The Plaintiff and has been using their trade marks continuously, exclusively, and uninterruptedly since their adoption on their websites and third-party websites. The products under "MY BURBERY" and "MR. BURBERRY" are a commercial success and one of the most renowned fragrances of the Plaintiff however no registration application is filed for those two marks.
1. Similar Marks:
The Defendant, M/s Petrol Perfume began manufacturing and selling
fragrances under the marks MR. PETROL ( ) and MY PETROL ( ) which
were deceptively similar to the Plaintiff's marks "MY
BURBERY" ( ) and "MR. BURBERRY" ( ).
2. Identical trade dress:
Also, the Defendant, M/s Petrol Perfume adopted an identical trade
dress to that of the Plaintiff , i.e., identical fonts, color
combination, overall look etc. and were selling them under the
impugned marks.
3. Identical goods:
The Defendant used identical marks and trade dress in manufacturing
and selling identical goods resulting in high probability of
confusion in the market and dilution of the Plaintiff's
marks.
4. Habitual and Serial Infringer:
The Defendant adopted a 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 Hon'ble
Courts on prior occasions as well. The Plaintiff thus filed a
lawsuit against M/s Petrol Perfumes, seeking injunctive relief and
damages for trade mark infringement, unfair competition and
dilution of brand identity.
Contentions of the Parties:
Submissions made by the Counsel for the Plaintiff:
1. Owing to the huge amount spent in advertising and campaigns, the Plaintiff's marks "MY BURBERRY" and "MR. BURBERRY" had gained significant goodwill and reputation.
2. Further, the Plaintiff contended that M/s Petrol Perfume's use of similar check patterns and similar packaging was designed to confuse consumers and mislead them into believing that they were genuinely purchasing Burberry's products.
3. Such actions infringed upon Burberry's trade mark and also damaged brand reputation and diluted their marks.
Submissions made by the Counsel for the Defendant:
1. The Defendants claimed that their marks are registered and that Burberry marks are registered in Class 3 however no application has been filed for "MY BURBERRY" and "MR. BURBERRY." Hence, they are not under the ambit of infringement.
2. They also contended that the dominant part of their marks are not similar to that of the Plaintiff.
3. Further, they contended that since they cater to different category of the consumers (as the pricing for their products is significantly low), there would be no confusion or deception in the minds of the public.
4. The marks of the Defendants have been in the market since 2019, but no action has been taken by the Plaintiff since then.
Issues Involved:
1. Whether M/s Petrol Perfumes use of similar packaging constituted trademark infringement?
2. Whether actions of M/s Petrol Perfumes amounted to unfair competition?
3. Whether there was any dilution of Burberry Limited's distinctive trade mark and brand value due to M/s Petrol Perfumes' actions?
Decision of the Hon'ble Court:
The Hon'ble High Court of Delhi did a comparative analysis of the parties' trademarks and trade dresses to arrive at a decision, which is tabulated below:
The Hon'ble Court held that even though the marks were not similar on the face of it, but the similar trade dress amounted to counterfeiting and since the Defendants were using the impugned marks for selling similar products, i.e., fragrances, they certainly did not have a bona fide intention and were deliberately attempting to harm the Plaintiff's established goodwill and reputation.
The Hon'ble Delhi High Court also opined that the typography and the almost identical trade dress created an unmistakable impression of counterfeiting.
More importantly, the Defendant's contention that the Plaintiff could not press for injunction against infringement as their marks were registered was rejected by the Hon'ble Court by citing the decision of the Hon'ble Supreme Court in the case of S. Syed Mohideen v. P. Sulochana Bai4,wherein the Hon'ble Court held that "passing off is a broader remedy than infringement" and can be pursued even if the Defendant's impugned mark is registered.
In the present case as well, all the three key elements of passing off were met:
1. Plaintiff had formulated a reputation in their marks,
2. The Defendant had a malafide intention to harm the reputation of the Plaintiff
3. The Plaintiff would incur irreparable loss if the Defendant was not restricted.
Therefore, the Hon'ble Court granted an ad-interim injunction in favour of the Plaintiff against, misrepresentation, passing-off, and counterfeiting by the Defendant and accordingly restrained the Defendant from using, selling, manufacturing, marketing, importing, exporting or dealing in any manner in the physical or online market place, under the impugned marks.
Conclusion:
The Hon'ble Delhi High Court's decision to rule in the Burberry's favour against Petrol Perfumes establishes a significant legal precedent for the protection of trade mark rights, especially in the market of luxury brands. This case highlights the value of the brand integrity and demonstrates the judiciary's dedication to safeguarding well-known brands from potential confusion brought on by competitors with similar names. This decision also acts as a cautionary tale to prospective competitors about the gravity of trade mark infringement.
Gautami Goel (Former Intern) & Asmita Kaur (Assessment Intern) at S.S. Rana & Co. has assisted in the research of this Article.
Footnotes
1 Traditional methods insufficient to control counterfeiting in luxury retail market: Qila https://economictimes.indiatimes.com/industry/cons-products/fashion-/-cosmetics-/-jewellery/traditional-methods-insufficient-to-control-counterfeiting-in-luxury-retail-market-qila/articleshow/110297876.cms?from=mdr (last accessed on May 27, 2024)
2 25-30% of the market in India is counterfeit: ASPA-CRISIL report https://www.printweek.in/news/25-30-of-the-market-in-india-is-counterfeit-aspa-crisil-report--57137 (last accessed on May 27, 2024)
3 2024 SCC OnLine Del 2801
4 (2016) 2 SCC 683
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