Delhi High Court: No Issue with Validity of Registrations of Trademark of Burger King

Delhi High Court: No Issue with Validity of Registrations of Trademark of Burger King

The Delhi High Court observed that there was no issue with respect to validity of the registrations of trademarks and other formative marks of Burger King.

In the present case, a suit was filed by the Burger King Corporation- plaintiff seeking relief of permanent injunction restraining the defendants- Ranjan Gupta and others from infringing plaintiff’s trademark ‘BURGER KING’ and its formative marks, passing off their goods as that of the plaintiff along with other ancillary reliefs.

The plaintiff had obtained various registrations in respect of its mark ‘BURGER KING’ and its formative marks in various classes. Vide order dated 25th July, 2014, an ex parte ad interim injunction was granted in favor of the plaintiff restraining the defendants from using the trademark ‘BURGER KING’ or any other deceptively similar mark.

The question that came up for consideration before the Single Judge Justice Amit Bansal was whether the case of the defendants on this account was prima facie tenable.

The Counsel appearing for the plaintiff submitted that in terms of Section 124(1)(b)(ii) of the Trademarks Act, 1999 (hereinafter ‘Act’), the Court shall raise an issue regarding the plea of invalidity of a registered trademark only upon being satisfied that such a plea is prima facie tenable. It is necessary for the Court to determine the prima facie tenability of the plea of invalidity of the registered trademark raised by the defendant in order to ensure that the defendants do not institute rectification proceedings as a counter blast to the infringement actions filed against them.

Furthermore, it was submitted that the plaintiff had used the trademark ‘BURGER KING’ since 1954 and the said mark had acquired secondary meaning and was exclusively associated with the plaintiff. Additionally, the plaintiff has obtained registrations of the trademark ‘BURGER KING’ in over 122 countries.

Per Contra, the Counsel appearing for the defendants contended that the defendant no.2 through its predecessor adopted the trademark BURGER KING in the year 1970. Since then, the defendants have extensively used the said mark in respect of their business. The plaintiff has no exclusive right in the word ‘BURGER’ as the same is generic and common to trade and the word ‘KING’ is laudatory. Two generic/laudatory words cannot create a distinctive trademark. Therefore, the trademark ‘BURGER KING’ cannot be registered.

Furthermore, defendant argued that the registrations of the plaintiff were liable to be rectified on various grounds including on the ground of ‘non-user’ under Section 47 of the Act. The rectification petitions have been filed by the defendants in November, 2014 and therefore, the relevant period of five years to be considered in terms of Section 47 (1) (b) of the Act would commence from three months before the date of filing of the aforesaid rectification petitions, i.e., August, 2009 to August, 2014. In the said period, the plaintiff had failed to give evidence of its user of the trademark BURGER KING in India.

Lastly, the issues with respect to the invalidity of the plaintiff’s trademarks arise out of the pleadings and therefore, the said issue has to be framed in terms of Order XIV of the Code of Civil Procedure, 1908 (CPC) as well as Section 124 of the Act.

The Court at the outset clarified that Section 124(1)(a) of the Act deals with the situation where a defendant pleads that the registration of the plaintiff’s trademark is invalid, as was in the present case. Section 124(1)(b)(i) envisages a situation where the rectification proceedings are pending on the date of filing of the suit, which is not the situation in the present case. Sub clause (b) (ii) deals with the situation where the rectification proceedings have been filed subsequent to the filing of the suit and therefore, this sub clause would be applicable in the present case as admittedly, the rectification proceedings were filed on behalf of the defendants after filing of the present suit.

The Judge opined that a perusal of sub clause (b) (ii) of Section 124(1) of the Act shows that the Court must be satisfied that the plea regarding the invalidity of registration of the trademark is prima facie tenable. Thereupon, the Court may raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of the said issue to enable the concerned party to apply for rectification of the register.

“It is significant to note that there is no ‘or’ between the words ‘prima facie tenable’ and ‘raise an issue regarding the same.’ In fact, the aforesaid phrases are separated by “,” which means that the Court will proceed to frame the issue with regard to invalidity of the registration of the trademark only upon being satisfied that the plea of invalidity is prima facie tenable. Thereupon, the defendant can file a rectification petition,” noted the judge.

The Court while referring to Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad and Another., (2018) relying upon Patel Field Marshal Agencies v. P.M. Diesels Ltd, (2018), a Coordinate Bench of this Court observed that mere pleading of invalidity of registration would not suffice and there is a further requirement under Section 124 of the Act that the party invoking Section 124 must satisfy the Court that the plea regarding invalidity of the registration of the mark is prima facie tenable and the Court raises an issue regarding the same.

Therefore, the Court did not find any merit in the submission of the defendant that merely because pleadings have been made in the written statement with regard to invalidity of the plaintiff’s trademark, an issue has to be necessarily framed in this regard.

The Court with respect to the ground taken by defendant on invalidity in terms of Section 47(1)(b) observed that, “Section 47(1)(b) of the Act provides that a registered trademark may be removed from the register of trademarks if up to a date of three months before the date of cancellation application, a continuous period of five years or longer has elapsed from the date on which the trademark was entered in the register and during which period, there was no bonafide use of the mark by the registered proprietor in relation to the said goods. Section 47(3) contains an exception to Section 47(1)(b) and provides that if the „non-use‟ of a trademark is on account of special circumstances and not on account of intention to abandon or not to use the trademark, the provisions of Section 47(1)(b) will not apply.”

The Judge highlighted that there was 'bona fide use' on behalf of the plaintiff of the trademark 'BURGER KING' in the relevant period between August, 2009 and August, 2014 and there was no intention on behalf of the plaintiff to abandon the trademark.

The Court was of the view that the defendants had failed to place any material in support of their submission that the trademark ‘BURGER KING’ is either generic or common to trade. It cannot be denied that the plaintiff has used the trademark ‘BURGER KING’ since 1954 and holds registrations for the said mark in over 122 countries including India.

The defendants were estopped from taking a plea that the trademark BURGER KING is generic and common to trade.