Jahanvi Agarwal
In a recent judgment, the Delhi High Court underscored the significance of protecting trademarks against passing off, a key aspect in maintaining the integrity of brands. The case involved Burberry Limited, which sought relief from the Court against M/s Petrol Perfumes for infringing on their well-known perfume lines, ‘MY BURBERRY’ and ‘MR. BURBERRY’, along with their associated trade dress.
The single-judge Bench, led by Justice Sanjeev Narula, noted that Petrol Perfumer Limited infringed Burberry’s intellectual property rights, impacting its longstanding goodwill and reputation.
Justice Narula stated, “The defendant’s adoption of the trademarks does not appear to be in good faith. It suggests a deliberate attempt to exploit the reputation and goodwill associated with the plaintiff’s marks. Such conduct is unacceptable, constituting a clear misrepresentation to consumers and effectively nullifying any superficial distinctions between the trademarks.”
Burberry Limited alleged that M/s Petrol Perfumes manufactured and sold perfumes and related products under the marks ‘MY PETROL’ and ‘MR. PETROL’, which bore a striking resemblance to Burberry’s trademarks and trade dress. The court agreed that this similarity could lead to confusion in the market and dilute Burberry’s reputation.
The defendants argued that their marks were registered with the trademark registry, unlike Burberry’s, and therefore, they were not liable for infringement. However, the Court upheld Burberry’s claim based on the principles of passing off.
Citing precedent, in the case named S. Syed Mohideen v. P. Sulochana Bai [(2016) 2 SCC 683], the court reaffirmed that passing off is a broader remedy than infringement and can be pursued even if the defendant’s mark is registered. It identified three key elements of passing off in this case:
- Burberry’s established reputation,
- The defendant’s intentional misrepresentation, and
- The potential damage to Burberry’s goodwill.
The Court’s decision to grant an injunction against the defendants for passing off, misrepresentation, and counterfeiting underscores the importance of protecting intellectual property rights and preventing unfair competition. This ruling also emphasizes the significance of trade dress in distinguishing brands in today’s competitive marketplace.
Case Name: Burberry Limited v. M/S Petrol Perfume & Ors.
Dairy Number: 176/2024
Bench: Justice Sanjeev Narula