Delhi High Court: In a suit filed by Burger King Corporation (plaintiff) seeking a permanent injunction against the defendants restraining them from infringing the plaintiff’s trademark ‘BURGER KING’ and further challenging the defenses raised by the defendants in their written statement that the plaintiff’s registered trademark ‘BURGER KING’ is liable to be cancelled, Amit Bansal, J., held that the plea raised by the defendant regarding the invalidity of registrations granted in favour of the plaintiff in respect of the trademark ‘BURGER KING’ and other formative marks, is prima facie not tenable.
The plaintiff has obtained various registrations in respect of its mark ‘BURGER KING’ and its formative marks in various classes. An ex-parte ad interim injunction was granted in favour of the plaintiff restraining the defendants from using the trademark ‘BURGER KING’ or any other deceptively similar mark till the final adjudication.
The Court noted that Section 124 of the Trade Marks Act, 1999 deals with the situation where a defendant pleads that the registration of the plaintiff’s trademark is invalid, as in the present case.
On the aspect of whether there has been a ‘non-use’ of the trademark by the plaintiff in the period of five years or an intention to abandon the said trademark, the Court further noted 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 said trademark. Thus, as a consequence of the preparatory work carried out by the plaintiff, the first BURGER KING restaurant was opened in India on 09-11-2014 and as of date, there are more than 300 BURGER KING Restaurants in India.
On the other aspect regarding the trademark ‘BURGER KING’ being generic and common to trade and hence, the same cannot be registered, the Court opined that on perusal of the trademark applications of the defendants they have themselves sought for registration of the said marks and therefore, the defendants are estopped from taking a plea that the trademark BURGER KING is generic and common to trade.
Thus, the Court held that the plea raised by the defendant regarding the invalidity of registrations granted in favour of the plaintiff in respect of the trademark BURGER KING and other formative marks, is prima facie not tenable.
[Burger King Corporation v Ranjan Gupta, 2023 SCC OnLine Del 1383, decided on 06-03-2023]
Advocates who appeared in this case:
Mr. Raunaq Kamath, Mr.Aditya Gupta, Mr. Mukul Kochhar and Mr. Rahul Bajaj, Advocates for the Plaintiff;
Mr. Shailen Bhatia, Mr.Raghav Bhalla, Ms. Sreelakshmi Menon and Mr. Nakul Mehta, Advocates for the Defendants.
