Delhi High Court Rejects Plea for Cancellation of ‘Burger King’ Trademark

Delhi High Court Rejects Plea for Cancellation of ‘Burger King’ Trademark

The Delhi High Court in two separate orders has refused to cancel the mark ‘Burger King’ registered in favor of multi-national fast food chain Burger King, and further stayed the operation of a registered trademark ‘Burger King Family Restaurant’ with the considered view that, it would likely create confusion in the market.

The singe judge Justice Amit Bansal stayed the operation of the mark registered in favor of a restaurant till final adjudication of the rectification petition moved by the petitioner-Burger King.

In one of the petitions, rectification was sought for cancellation/removal of the impugned mark ‘Burger King Family Restaurant,’ registered in class 43 in the name of the respondent no.1- Virendra Kumar Gupta from the Register of Trade Marks.

Earlier, the petitioner had filed a writ petition seeking cancellation of the aforesaid trademark. Vide order dated 20th March, 2018, while issuing notice in the said writ petition, a Coordinate Bench of this Court had granted stay on the operation of the aforesaid mark.

The petitioner asserted to be a company based in United Stated of America, which was founded in the year 1954 under the name BURGER KING. It claimed to be currently the second largest quick service restaurant (QSR) hamburger company in the world, which manages and operates a worldwide chain of over 18,000 QSRs, serving more than 11 million customers daily in approximately 100 countries.

The trademark BURGER KING was registered in the name of petitioner in over 122 countries worldwide. In India, the earliest registration of the trademark BURGER KING dates back to the year 1979. At present, the petitioner operates over 250 Burger King Restaurants in India.

In August, 2011, the petitioner claimed to be aware that the respondent no.1 had applied for registration of the impugned trademark in class 43. As per the examination report issued by the Registry, the trademark application of the respondent no.1 was objected to and the registered mark of the petitioner was cited in the examination report. The petitioner’s attorneys filed a request under form TM-58 with the Trade Mark Registry in terms of Rule 41 of Trademark Rules, 2017, in order to receive intimation when the impugned applications are published in the trademark journals so that the petitioner may oppose the same.

However, the Registry advertised the impugned mark of the respondent no.1 in 2016 without informing the petitioner and the impugned mark was registered in favor of the respondent no.1.

Following which, in the year 2014, the petitioner filed a suit for infringement against the respondent no.1. On 25th July, 2014, an ex parte injunction order was passed in favor of the petitioner and against the respondent no.1, restraining the respondent no.1 from using the trademark BURGER KING or any other mark similar thereto. The aforesaid injunction order was confirmed vide judgment dated 24th September, 2018.

The Counsel for the petitioner submitted that the primary element of the impugned mark was identical to the petitioner’s well-known trademark BURGER KING. He further submitted that the additional words in the impugned mark, i.e., ‘Family Restaurant’ were descriptive in nature and had been written in small font as compared to the words BURGER KING. It was further submitted that the impugned mark was registered in respect of services for providing food and drinks, temporary accommodation: café and coffee bar, restaurants including self-service, take away and fast-food restaurants, which are included in class 43 and were identical to the services provided by the petitioner under the BURGER KING trademark.

The Court at the outset referred to the relevant observations of the Coordinate Bench in Burger King Corporation vs. Ranjan Gupta and others., 2018 and observed that, “even though an appeal has been filed on behalf of the respondent no.1 against the aforesaid judgment, admittedly, the operation of the judgment has not been stayed by the Division Bench. Therefore, I see no reason to not rely on the findings and the observations made in the aforesaid judgment.”

The Court further referred to the judgment dated 6th March, 2023 passed by this Court in Burger King Corporation vs. Ranjan Gupta and others., wherein it was observed that the plea raised by the respondent no.1 herein with regard to the invalidity of registrations granted in favor of the petitioner herein in respect of the trademark BURGER KING and other formative marks, was prima facie not tenable.

In view of the discussion above, the Court stated that it was clear that the impugned trademark was adopted by the respondent no.1 dishonestly to trade upon the established goodwill and reputation of the petitioner.

“The nature of the impugned mark is such that it is likely to deceive public and create confusion in the market as regards the source of the goods manufactured and sold under the impugned trademark,” observed the Court.

The Court deemed that the petitioner was successful in establishing a prima facie case in its favor. Balance of convenience was also reckoned to be in favor of the petitioner and against the respondent no.1.

Observing that irreparable harm will be caused to the petitioner if the operation of the impugned mark is not stayed till the disposal of the rectification petition, the Court accordingly stayed the operation of the impugned mark till final adjudication of the rectification petition.

Passing another separate order, the Court dismissed various rectification petitions filed by Vijender Kumar, owner of Burger King Family Restaurant, seeking cancellation or removal of several marks registered in favor of Burger King from the Register of Trade Marks.

In this regard, the Court placed reliance on the judgment of the Supreme Court in Patel Field Marshal Agencies vs. P.M. Diesels Ltd, (2018), wherein it was held that the jurisdiction with regard to rectification of a mark under Section 124 Trademarks Act, 1999 can be exercised only upon finding of the Civil Court as regards the prima facie tenability of the plea of invalidity.

Applying the aforesaid principles in the present case the Court opined that, since the rectification petitions were admittedly filed after filing of the aforesaid suit, in terms of the judgment in Patel Field Marshal (supra), the rectification petitions could only be filed upon finding of the Civil Court as regards the prima facie tenability of the plea of invalidity.

Consequently, the rectification petitions were dismissed by the Court.