Delhi High Court Dismisses Plea Of Invalidity Against BK's Registered Trademark ‘Burger King’

The Delhi High Court has dismissed a claim of invalidity against Burger King Corporation (BKC)'s registered trademark ‘Burger King’.

In response to a trademark infringement suit filed by the Burger King Corporation in 2018, the defendants had argued that BKC's registered trademark is liable to be cancelled. The court considered whether the case of the defendants on this account is "prima facie tenable". 

Justice Amit Bansal said defendants have failed to place any material in support of their submission that the trademark ‘Burger King’ is either generic or common to trade.

The court also said that it cannot be denied that BKC has used the trademark 'BURGER KING' since 1954 and holds registrations for it in over 122 countries including India.

"I am of the considered view that the plea raised by the defendant with regard to 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. There is no reasonable prospect of the defendants succeeding in the cancellation petitions filed by them. Therefore, no issue with regard to validity of the registrations of trademarks of the plaintiff is liable to be framed in the facts and circumstances of the present case."

The suit filed by BKC seeks permanent injunction restraining the defendants from infringing its trademark ‘Burger King’. In 2018, an interim injunction was confirmed by the court in favour of BKC restraining the defendants from using the trademark ‘Burger King’ or any other deceptively similar mark. The appeal against the order is pending before a division bench.

In the February 18, 2020 order, the court had noted that one of the defences raised by the defendants in their written statement is that the BKC's registered trademark ‘Burger King’ is liable to be cancelled.

The counsel for BKC argued that it has used the trademark ‘Burger King’ since 1954 and the mark has acquired secondary meaning and is exclusively associated with the plaintiff. The court was also told that the plaintiff has obtained registrations of the trademark ‘Burger King’ in over 122 countries.

The counsel appearing for the defendants submitted that they adopted the trademark Burger King in the year 1970 and since then they have extensively used the 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, it was argued.

It was also argued that registrations of BKC are liable to be rectified on various grounds including on the ground of 'non-user' under Section 47 of the Trade Marks Act. The rectification petitions were filed by 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.

Justice Bansal explained 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.

However, the court also noted that Section 47(3) also 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.

Justice Bansal said 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. 

"It may be relevant to note that as a consequence of the preparatory work carried out by the plaintiff, the first BURGER KING restaurant was opened in India on 9th November, 2014 and as on date there are more than 300 BURGER KING Restaurants in India," it added.

The court also said the defendants are estopped from taking a plea that the trademark 'BURGER KING' is generic and common to trade when they have themselves sought for registration of the said marks.

Case title: Burger King Corporation v. Ranjan Gupta and others.

Citation: 2023 LiveLaw (Del) 224

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