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June 13, 2022

Court Case Bulletin (CCB): Testimony Of An Expert Witness Not Required In Cases Of Trademark Infringement And Passing Off

Author: Former Intern - Yashi Agarwal

In the matter of Burberry Ltd v. Aditya Verma, [R.F.A (IPD) 4/21] a Single Judge [Asha Menon, J.] of the High Court of Delhi, vide order dated March 29, 2022, held that the testimony of an expert witness is not required in cases of trademark infringement and passing off matters, involving identical or similar trade marks.

Order XXVI Rule 10(2), Code of Civil Procedure (‘CPC’) provides, “The Report of the Commissioner and the evidence taken by him …shall be evidence in the suit and shall form part of the record the parties to the suit may examine the Commissioner personally in open Court touching any of the matters referred to him or mentioned in his report….” The question for consideration is whether a report submitted by an expert can ‘form part of the record’ without expert testimony.

The Appellant filed a suit restraining the Respondent from violating its rights in the alleged registered “BURBERRY” marks. A Local Commissioner was appointed by the Trial Court to investigate the Respondent’s inventory. But the Report submitted by the Commissioner was discarded by the Trial Court on the ground that the Appellant had not examined the Commissioner in the witness box and no other evidence was produced to establish that the goods seized were counterfeit. In the present appeal against Trial Court’s order, the Appellant argued that even if the Local Commissioner was not examined in the court, the Report still formed evidence that cannot be overlooked and that “BURBERRY” is registered in the name of the Appellant and this fact stood admitted by the Respondent, and thus there was sufficient evidence to protect the interests of the registered proprietor of the trademark.

The High Court observed that the said Report submitted before the Trial Court included sufficient proof of the unauthorized use of the Appellant’s mark. Further, since there were no objections raised by either party on the said Report, the High Court accepted the contentions made by the Appellant.

The High Court while distinguishing a criminal case from the case of infringement of registered trade marks or of passing off held that “There is no call to have an expert witness to testify to the use of an identical or similar Trade Mark…the learned Trial Court fell into grave error in holding that the absence of expert testimony disproved the case of infringement and passing off.…” 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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