No Call to Have Expert Witness to Testify to Use of Identical Mark in Registered Trademark Infringement or Passing off Cases
Case: Burberry Ltd V. Aditya Verma
Coram: Justice Asha Menon
Case No.: R.F.A. (IPD) 4/2021
Court Observation: “A perusal of the impugned judgment would reveal that the learned Trial Court has completely misdirected itself in placing undue emphasis on proof of counterfeit products whereas the issue before it was whether there was an infringement of the registered trade mark of the appellant/plaintiff by the respondent/defendant and/or whether the respondent/defendant was passing off his own goods as those of the appellant/plaintiff or was indicating the source of his goods as that of the appellant/plaintiff and thus infringing the registered trade marks of the appellant/plaintiff, and to its detriment by dilution,”
“These shortcomings in the judgment impugned by the appellant/plaintiff would suffice to set is aside, however, this Court considers it fit to assess the evidence to determine whether the appellant/plaintiff had a case on merits,”
“Unlike in a criminal case, in a case of infringement of registered Trade Marks or of passing off, similarity of the marks used is to be considered. There is no call to have an expert witness to testify to the use of an identical or similar Trade Mark. The emphasis is on the branding and not on the manufacture of the goods in question. It is the false branding that results in the product being counterfeit. Thus the learned Trial Court fell into grave error in holding that the absence of expert testimony disproved the case of infringement and passing off.”
“It is but obvious, that the products of the appellant/plaintiff, which is a company having worldwide operations and having earned reputation for the various products manufactured by it and sold under the trade mark “BURBERRY” with its logo and labels, would have a quality that would be far superior to the goods found from the respondent/defendant, who himself claims, that he is selling various products at a stall in Khan Market. But the fact that people coming to Khan Market would be familiar with the label and trade mark “BURBERRY”, apparently prompted him to try and cash in on the appellant‟s/plaintiff‟s reputation and make a neat profit for his products,”
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