Delhi High Court in KFC Trademark Registration: KFC Does Not Have Exclusive Right over the word 'Chicken'

Delhi High Court in KFC Trademark Registration: KFC Does Not Have Exclusive Right over the word 'Chicken'

The Delhi High Court by its single judge Justice Sanjeev Narula while adjudicating an appeal filed by the American fast food restaurant chain Kentucky Fried Chicken International Holdings LLC observed that it has no exclusive right on the word "Chicken", however, the Trademark Registry can consider its application for registration of mark "Chicken Zinger" in Class 29.

The Kentucky Fried Chicken International Holdings LLC (in short KFC) had filed an appeal under Section 91 of the Trade Marks Act, 1999, (hereinafter 'the Act') against the impugned order dated 24th December, 2018, read with Statement of Grounds of decision dated 31st December, 2018, both passed by Senior Examiner of Trademarks, whereby Appellant's application for the mark "CHICKEN ZINGER" in class 29, had been rejected.

The Senior Examiner had rejected registration of the mark under section 9(1)(b) of the Trademarks Act, holding the mark "CHICKEN ZINGER" to be descriptive of characteristics of the goods or services under which it was applied.

It was submitted that KFC has registrations of other trademarks including Zinger, Hot Zinger, Paneer Zinger, Zinger Festival and Tower Zinger. It also has the registration of 'Chicken Zinger' but in Class 30.

The Court noted that the subject mark comprises of two words – "CHICKEN" and "ZINGER."

The single judge observed, "the dictionary meaning of 'ZINGER' is 'a thing outstandingly good of its kind' or 'a wisecrack; punch line' or 'a surprise question; an unexpected turn of events'. Use of ZINGER in conjunction with CHICKEN does not draw an instant connection with the kind of goods/ services and may at best, be considered suggestive. Further, Appellant holds registration of the word marks "ZINGER" and PANEER ZINGER in class 29 itself. Objection under Section 9(1)(b) of the Act seems to be based on the use of the word 'CHICKEN', over which, Appellant cannot have any exclusivity and no such claim is being asserted."

The Court while allowing the appeal, set aside the impugned order and statement of grounds of decision, and directed the Trademark Registry to proceed with advertisement of KFC's application for registration of the mark "CHICKEN ZINGER", within three months.

It further clarified that the Appellant shall not have any exclusive rights in the word "CHICKEN." Trademarks Registry shall reflect this disclaimer at the time of advertisement of subject mark and also if subject mark ultimately proceeds for registration and stated that any opposition to the application shall be decided by the Registry on its own merits uninfluenced by observations made by it.