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Burberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark

LexOrbis India


A recent legal battle between Burberry Limited and M/s Petrol Burberry Limited vs. M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark Perfumes and other defendants serves as a poignant example of the ongoing struggle against counterfeiting and deceptive practices in the luxury goods market faced by a well-reputed brand. In this ever-evolving global commerce landscape, brand integrity is a cornerstone of success for companies seeking to establish themselves as leaders in their respective industries. Among the myriad challenges businesses face, protecting intellectual property rights, particularly trademarks, is paramount in safeguarding brand identity and consumer trust.

Background

The lawsuit revolves around the plaintiff's two perfumes, sold under marks 'MY BURBERRY' and 'MR. BURBERRY’ and the alleged deceptive activities of the defendants in relation to the manufacture and sale of perfumes, with marks "My Petrol" & "Mr. Petrol". The plaintiff, Burberry Limited, hereinafter referred to as "Burberry", contends that the defendants have adopted deceitful practices and ridden over its goodwill and market reputation by manufacturing and selling perfumes and related products bearing their registered marks 'MY PETROL' and 'MR. PETROL' hereinafter also referred to as "impugned marks", closely resembling Burberry's trademarks. Additionally, the defendants have adopted an identical trade dress, posing a significant threat to Burberry's brand identity.

Facts of the case

Burberry Limited, a distinguished private limited company headquartered in London, England, extends its business operations to India through its subsidiary, Burberry India Private Limited (hereinafter referred to as "Burberry"). Since its establishment in 2010, Burberry has been actively involved in the manufacturing, distributing, and selling of various products, including apparel, garments, eyewear, footwear, and fragrances. The plaintiff has established a strong presence in the global market with a portfolio of trademarks such as BURBERRY, BURBERRY EQUESTRIAN KNIGHT Logo, CHECK device, and various Burberry formative marks. Recognised as one of the world's leading lifestyle designer brands, Burberry consistently earned recognition among 'The 100 Best Global Brands' by Interbrand, an esteemed independent brand-ranking organisation.

The company designs, manufactures, sources, and sells products under the BURBERRY trademark/label worldwide through its physical stores, online platform www.Burberry.com, and various third-party wholesale outlets. The globally adopted trademarks ‘MY BURBERRY’ in 2014 and ‘MR. BURBERRY' in 2016 was consistently utilised by the plaintiff since its inception. With significant investment in advertising these products, it had a highly successful worldwide launch campaign. As a consequence, these marks MY BURBERRY and MR. BURBERRY have gained substantial goodwill and reputation and is among the plaintiff's most renowned and acclaimed fragrances.

The Defendants entered the market in 2019 intending to use the impugned marks on identical goods to create market confusion and diminish the value of the plaintiff's marks. It adopted the marks “MY PETROL” and “MR. PETROL”. The defendant replicated the trade dress of the plaintiff by use of similar trademarks "MY PETROL" and "MR. PETROL" on the trade body at the same place as the plaintiff's product with the marks "MY BURBURRY" and “MR. BURBERRY”, hence affecting the Intellectual Property rights of the plaintiff. The defendant's product has an identical font, writing style, colour combination, overall appearance, presentation, surface pattern, manner of writing, and placement of objects. The shape and structure are also an exact imitation of the plaintiff's overall product. This blatant mimicry threatens to dilute Burberry's brand identity, mislead consumers, and capitalise on the plaintiff's established goodwill and reputation.

Contentions of the Parties

Counsel for the Plaintiff contended its injunction application against a defendant who has adopted impugned marks/labels/trade dress which are deceptively similar to two of the plaintiff's reputed perfumes sold under the mark “MY BURBERRY” and “MR. BURBERRY”. The plaintiff contended the defendant to be a habitual infringer of popular brands and showed copies of restrained orders in support. Having goodwill, a high reputation, and financial highlights globally, the plaintiff emphasised investments in advertisements and revenue earned during previous years. The global presence and established reputation were damaged by the misrepresentation of the defendant through its product under impugned marks/labels/trade dress “MY PETROL” and “MR. PETROL” with respect to identical goods, which had caused a strong likelihood of confusion in the market.

Contrary to the contentions made by the plaintiff, counsel on behalf of the defendant represented it bonafide by emphasising the non-similarity between the prominent parts “BURBERRY” and “PETROL” of competing marks “MY BURBERRY”“MR. BURBERRY” adopted by plaintiff and MY PETROL”, “MR. PETROL” adopted by defendant respectively. The counsel for the defendant concluded that no confusion was created in the market as purchasing customers are different. It also pointed towards the aspect of the defendant's mark being a registered mark, unlike the plaintiff's unregistered mark, should not be injuncted; the allegation of habitual infringer was rebutted, alleging restrained orders were passed ex-parte, and they have reopened those proceedings. The defendant's contentions inclined to show delayed proceedings and acquiescence on the part of the plaintiff and narrated that the plaintiff knew about the defendant's existence in the market since 2019.

Court’s Decision

Despite the defendants' assertions of lawful registration of their marks, the Court identified their actions as passing off and violating Burberry's intellectual property rights, affecting Burberry's well-earned goodwill and reputation over the years. The presence of the registered trademark of Defendants could not make any difference. The legal battle at a preliminary stage was decided in favour of the plaintiff's mark "MY BURBERRY” and “MR. BURBERRY”, injuncting Defendants, their representatives or anyone acting on their behalf from using, selling, manufacturing, marketing, importing, exporting or dealing in any manner in the physical or online market place, under the impugned marks “MY PETROL” and “MR. PETROL” restricting from copyright infringement of Burberry’s labels, passing off, violation of common law rights, trade dress infringement, trade-name rights violation, and involvement in falsification, unfair, and unethical trade practices that can effect rights of Burberry till further orders after February 28, 2024.

The Court reached out to the above conclusion based on its prima-facie view that mere comparison of the products shows complete dishonesty on the part of the defendant as the choice of typography “MY PETROL”/ Burberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark and “MR. PETROL”/Burberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark on perfumes is identical to Plaintiff’s  “MY BURBERRY”/ Burberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark and "MR. BURBERRY"/ Burberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark, adoption of trade dress Burberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark by the defendant is identical to the plaintiff's adopted trade dressBurberry Limited vs M/s Petrol Perfumes & Ors: Seeking Relief of Passing Off Against Registered Trademark; employing such deceptively similar labels prima facie shows mala fide on the part of the defendants. Relying on the Supreme Court's Judgment of S. Syed Mohideen vs P. Sulochana Bai [(2016) 2 SCC 683], the Court clarified that the plaintiff could seek an interim injunction on passing off, a broader common law right than action for InfringementAll ingredients of passing off were evident from the facts of the case. Hence, the Court injuncted the defendant's actions on the grounds of passing off and an evident unjust advantage accrued by the use of identical/ deceptively similar trade marks/labels/ trade dress of the plaintiff.

 

Conclusion

Burberry Limited's legal victory in this case sets a significant precedent for the importance of brand protection and enforcement. It reaffirms the company's commitment to maintaining its reputation as a global leader in luxury fashion. It serves as a beacon of hope for businesses facing similar challenges in safeguarding their intellectual property rights.

 

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