Facts
The petitioner, a US-based business that was first established in 1954 as BURGER KING, is the second-largest short-carrier hamburger company in the world, with more than 18,000 outlets across 100 countries and 11 million daily customers. The Burger King logo was originally registered in India in 2010, and since 1979, it has been registered in 122 countries. In India, it started by strolling through more than 250 eateries in 2014. In 2011, the petitioner became aware of respondent no. 1’s class 43 trademark software, to which the registry had objected on the grounds that the petitioner’s mark was used. Despite applying for notice, the respondent’s mark became registered in 2016 without the petitioner’s knowledge. As a result of the petitioner’s infringement complaint, a 2014 injunction order was upheld in 2018.
The petitioner requested the cancellation of the trademark in question in an advance Writ Petition (W.P.(C) no. 2695/2018, ultimately renumbered as W.P.(C)-IPD fifty-three/2021). On March 20, 2018, a live announcement addressing the trademark’s use and any related registrations was made.
Afterwards, on May 26, 2022, the Writ case was dismissed as withdrawn, enabling the petitioner to file a rectification plea and extend the trademark’s validity by an additional six weeks. After that, the petitioner submitted the updated request for the rectification.
Respondent No. 1 pledged in response to the rectification petition that it would not, in any opposition or rectification litigation scheduled to take place before 26.7.2022, depend on the registration of Trademark Application variety 2052257.
Together with an analysis of its advertising and marketing expenses, the petitioner also revealed the arena’s annual income turnover from 2010 to 2021, which was US$23,050 million.
Issues of the Case
- Whether the defendants’ use of the “Burger King” brand constitutes trademark infringement and unfair competition given its substantial similarity to the plaintiff’s well-established mark.?
- Whether the explanations provided by the defendants regarding the adoption of the contested mark are satisfactory, or if they demonstrate dishonesty and lack of originality.?
- Whether the injunction previously granted to the plaintiff should be upheld, prohibiting the defendants from using the mark “BURGER KING” or any other infringing trademark for their restaurants or food outlets, and from granting franchises or establishing new outlets under such names.?
- Whether the Division Bench’s pending appeal against the previous judgment impacts the current proceedings and decision-making process?
Petitioner’s Arguments
The legal representative for the petitioner argued that the challenged mark’s unique attribute is a mirror reflection of the petitioner’s well-known trademark, “BURGER KING”. They emphasized that “Family Restaurant,” which is a lower type than “BURGER KING,” is the most descriptive addition. It was further argued that the services covered by the contested mark, such as the provision of food and drink, temporary housing, cafes, espresso bars, and various dining establishment codecs, fall under Class 43 and closely align with the services offered under the petitioner’s “BURGER KING” trademark,. citing Max Healthcare Institute Ltd. V. Sahrudya Health Care Pvt. Ltd. 2019, SCC OnLine Del 9036, as a precedent established credibility to this claim.
Defendants’ Arguments
According to the defendant no. 1’s attorney, an appeal has been filed against the September 24, 2018, decision upholding the ex parte injunction from July 25, 2014. Till this point, the Division Bench of this Court was deliberating over this attraction. Therefore, it’s maintained that the Division Bench’s decision must be taken before the current software is addressed.
Laws in Question
- Trademarks Act, 1999
Judgement
Examining the data from the rectification petition and considering the reasons presented via the use of both activities, it is clear that the defendants’ use of the “Burger King” brand substantially matches the plaintiff’s mark. The defendants’ appalling defense of an unreasonable hobby is evident in their convincing case for the trademark adoption. There is currently no opposition to the plaintiff’s assertion that the mark changed to what was observed in the United States in 1954, nor to evidence of its widespread recognition.
Given the defendants’ obvious dishonesty and lack of originality in their use of the mark, the previously ordered injunction is upheld. Under the injunction, the defendants are prohibited from operating restaurants or food stores with the trademark “BURGER KING” or any other trademark infringement. They are also prohibited from granting franchises or creating new establishments that utilize any trademarked name. Still, they will be permitted to utilize the “Burger Emperor” name and trademark.
Due to the Division Bench’s tardiness in implementing the judgment, its conclusions and observations are shared; nonetheless, respondent no. 1 has appealed the aforementioned ruling.
Considering the aforementioned, defendant no. 1 filed four rectification applications, seeking the cancellation or removal of BURGER KING trademarks registered under the petitioner’s name. These petitions were refused. It is plausible that customers may be misled and confusion regarding the items’ origins could arise as a result of respondent no. 1’s fraudulent use of the said trademark in question.
The petitioner has shown a prima facie case in its demand because of the constancy of comfort and the risk of irrevocable injury. Thus, the challenged mark in elegance forty-three with registration wide variety 2052257 isn’t operational until the very last choice in the rectification petition is made.
Defendant No. 1 is entitled to request a holiday or modification of this choice, provided that they are able to use it as grounds for appeal against the ruling of September 24, 2018.
By Preyansi Anand Desai, 4th Year B.A. LL.B (Hons.), Faculty of Law, The Maharaja Sayajirao University of Baroda, Vadodara
