Law & Practice

INDIA: Court Examines Standard of Proof in Cases of Infringement and Passing Off

Published: June 22, 2022

Ashneet Hanspal Ahlawat & Associates New Delhi, India


Ashwin Julka

Ashwin Julka Remfry & Sagar Gurgaon, India INTA Bulletins—Asia-Pacific Subcommittee

The Delhi High Court (HC), in its March 29, 2022, order in the case of Burberry Limited v. Aditya Verma, RFA(IPD) 4/2021; CM APPLs 6298/2020 & 6300/2020, reviewed the requirement of standard of proof in matters of trademark infringement.

The plaintiff’s grievance in this case concerned the infringement and passing off of its registered BURBERRY trademarks, and the defendant, a stall owner in Khan Market, an affluential market in Delhi, was accused of selling goods under an identical mark.

The plaintiff appealed the previous judgment of the Delhi District Court (DC) wherein, after appointing a local commissioner to seize the alleged counterfeit goods from the defendant’s shop, the DC had concluded that the plaintiff failed to prove that the seized goods were counterfeits due to lack of cogent evidence and expert testimony and granted the defendant the benefit of doubt, dismissing the plaintiff’s suit.

According to the HC, the DC seemed to have adopted an approach more suited to criminal proceedings. Given the plaintiff’s registered rights in the BURBERRY mark (a fact admitted by the defendant), the main issue for determination was of infringement and passing off by dilution and not counterfeiting. Even if the products been genuine and the respondent was unauthorizedly using marks deceptively similar to the plaintiff’s registrations to mislead the public, a case for injunction could have been made out. The DC had erred in treating the seized goods on par with seizures by an investigating office in a criminal complaint that might subsequently need forensic analysis. Here, DC directed the local commissioner to inspect the site and seize infringing goods; and even if the local commissioner’s report was not examined by the DC, that report was to be treated as evidence in the suit, forming part of the record. In addition, there was witness testimony stating that the seized goods were “fake” and “easily differentiated” as counterfeit due to their lower quality. Further, the DC’s insistence on expert testimony, akin to criminal proceedings, to prove infringement and passing off, was erroneous.

Concluding there was sufficient evidence to prove infringement, the defendant attempted to cash in on the global reputation of the plaintiff’s brand by misleading customers familiar with the latter’s trademark. The HC set aside the DC’s judgment, decreed the suit, and issued a permanent injunction restraining the defendant from manufacturing, marketing, dealing in, or selling goods through any platform using the plaintiff’s registered trademarks/labels/logo on its goods.

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