Delhi High Court stays use of ‘BURGER KING’ mark in a rectification petition filed by Burger King Co. LLC against a family restaurant

Delhi High Court: In a case wherein a rectification petition had been filed for cancellation/removal of the impugned mark registered in Class 43 from the Register of Trade Marks, a Single Judge Bench of Amit Bansal, J.* opined that the impugned mark had been adopted dishonestly, to trade upon the established goodwill and reputation of the petitioner and the nature of the impugned mark was such that it was likely to deceive public and create confusion in the market. The Court, therefore, stayed the operation of the impugned mark in Class 43, till the final adjudication of the rectification petition.

Background

The trade mark ‘BURGER KING’ was registered in petitioner’s name and the registration of the device mark in Class 43 dated back to 2010. In 2011, the petitioner got to know that Respondent 1 had applied for registration of the impugned mark in Class 43 and as per the examination report issued by the Registry, the trade mark application of Respondent 1 was objected to, and the registered mark of the petitioner was cited in the examination report.

The petitioner’s counsel filed a request under form TM-58 with the Trade Mark Registry in terms of Rule 41 of Trade Mark Rules, 2017, to receive intimation when the impugned applications were published in the trade mark journals so that the petitioner may oppose the same. However, the Registry advertised the impugned mark of the Respondent 1 in 2016 without informing the petitioner and the impugned mark was registered in favour of the Respondent 1.

In 2014, the petitioner filed a suit for infringement against Respondent 1 and an ex parte injunction order was passed in favour of the petitioner and against Respondent 1, restraining him from using the trade mark ‘BURGER KING’ or any other mark similar thereto.

Analysis, Law, and Decision

The Court relied on Burger King Corporation v. Ranjan Gupta, 2018 SCC OnLine Del 11484 (“Burger King Corporation”) , wherein it was observed that “the defendants use of a logo, Burger King was almost identical to the plaintiff’s logo, and thus, the defendants were injuncted from using the mark ’BURGER KING’ and the infringing logo in respect of their food outlets or restaurants, in any manner whatsoever”.

This Court observed that even though an appeal had been filed on behalf of Respondent 1 against Burger King Corporation Case, the operation of the judgment had not been stayed by the Division Bench. Therefore, the Court opined that it did find any reason not to rely on the findings and the observations made in Burger King Corporation Case. The Court further relied on Burger King Corporation v. Ranjan Gupta, 2023 SCC OnLine Del 1383, wherein this Court had observed that the plea raised by Respondent 1 with regard to the invalidity of registrations granted in favour of the petitioner herein in respect of the trade mark BURGER KING and other formative marks, was prima facie not tenable.

Thus, this Court by separate orders, dismissed four rectification petitions filed by Respondent 1 for cancellation/removal of the ‘BURGER KING’ trade mark registered in petitioner’s name.

The Court opined that it was clear that the impugned trade mark had been adopted by Respondent 1 dishonestly to trade upon the established goodwill and reputation of the petitioner and the nature of the impugned mark was such that it was likely to deceive public and create confusion in the market as regards the source of the goods manufactured and sold under the impugned trade mark.

The Court stayed the operation of the impugned mark in Class 43, till the final adjudication of the rectification petition. The Court further stated that liberty was given to Respondent 1 to move an appropriate application seeking vacation/modification of this order if Respondent 1 succeeded in the appeal filed by them against the judgment in Burger King Corporation Case.

The matter was next listed for 12-7-2023.

[Burger King Co. LLC v. Virendra Kumar Gupta, 2023 SCC OnLine Del 2292, decided on 21-4-2023]

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Advocates who appeared in this case:

For the Petitioner: Raunaq Kamath, Aditya Gupta, Mukul Kochhar and Rahul Bajaj, Advocates;

For the Respondents: Harish Vaidyanathan Shankar, CGSC and Shailen Bhatia, Amit Jain, Raghav Bhalla, Srish Kumar Mishra, Sagar Mehlawat and Alexander Mathai Paikaday, Advocates.

*Judgment authored by: Justice Amit Bansal