BURGER KING CORPORATION V. RANJAN GUPTA AND OTHERS

Bhagyashri Deepak Khedekar, Student, Smt. K.G. Shah Law School

Introduction:

In this case there is alleged trademark infringement of the trademark which held by the Plaintiff. Trademark is very important in each industry as it helps the particular business market their particular good so that it can be attractive to the customers. Therefore, it is important to take protective measures when a business get s to know about any alleged infringement which may be taking place.
Burger King is a brand that has a significant brand image and name in the fast food industry as time has progressed. The Defendants have used their mark without their proper authorization and therefore legal action had to be taken against them.

Facts:

Burger King Corporation is a fast food joint and they are the Plaintiff in the following case. They are a global brand and have been operating for many years so they have gotten the mark “BURGER KING” registered in India and other international markets as well.
The Defendant in the following case is Mr. Ranjan Gupta, who has allegedly been using the trademark in without prior consent and authorization. They have been taking advantage of the brand image and name built by the hard work of the employees at Burger King Corporation and have been attempting to pass off their goods as that of the plaintiff.
The Plaintiff has applied for an injunction against the adverse party with the idea of preventing them from using their mark for the goods made by the Defendant and seek relief for the infringement.
An order dated 25^th July, 2014 was granted in favour of the Plaintiff wherein an ex parte ad interim injunction was passed to restrain the Defendant from using the mark or any deceptively similar mark.
The above order for injunction was further confirmed until final adjudication of the current suit by another dated 24^th October, 2018.
An appeal filed by the Defendant is also pending before the Division Bench of this Hon’ble High Court.
As per an order dated 18^th February, 2020 it was claimed by the Defendants that the Plaintiff‟s registered trademark is liable to be cancelled.
The Defendants also contended that the Plaintiff’s registration should be cancelled as they have not used the trademark in India for a continuous period of five years as per Section 47 of the Trademarks Act, 1999.

Legal Issues:

Whether the trademark “BURGER KING” is valid and can be registered or is generic and laudatory?
Whether the Plaintiff’s trademark is liable to be cancelled for non-use under Section 47 of the Trademarks Act, 1999?
Whether the Defendants’ plea of invalidity was prima facie tenable, as required under Section 124 of the Trademarks Act, 1999?
Whether the Defendants are estopped from claiming that “BURGER KING” is generic as they have applied for registration of the same mark?

Court’s Decision:

The requirement to establish prima facie tenability acts as a legal safeguard, preventing Defendants from initiating rectification proceedings merely as a retaliatory response to infringement actions unless their claim of invalidity holds a credible basis.
The Court examined that it is necessary to assess whether the plaintiff failed to use the trademark during the specified five-year period or demonstrated an intent to abandon it.
During the pertinent time between August, 2009 and August, 2014, the Plaintiff used the trademark “BURGER KING” in a “bona fide manner,” and the Plaintiff had no intention of discontinuing its use.
Due to the various precedents which have been laid down in regard to the similar subject matter, the Defendants are prevented from entering a plea that “BURGER KING” is a generic and widely used trademark.
After thorough assessment of the facts, circumstances and evidence the Court came to a conclusion that the Defendants have not provided any evidence to back up their claim that the trademark “BURGER KING” is either common to commerce or generic in nature.
The Defendant’s argument challenging the validity of the registrations granted to the Plaintiff for the trademark “BURGER KING” and its related marks is not prima facie sustainable.
The Hon’ble Court came to the final conclusion that there is no question regarding the validity of the Plaintiff’s trademark registrations that warrants consideration under the facts and circumstances of this case.

Legal Reasoning:

The Court observed that Section 124 of the Trade Marks Act, 1999, addresses cases where a Defendant challenges the validity of the Plaintiff’s trademark registration, as is the situation in this case.
The Plaintiff failed to demonstrate use of the “BURGER KING” trademark in India during the relevant five-year period under Section 47(1)(b) of the Act August 2009 to August 2014, as per rectification petition filed by Defendant.
The Court will only proceed to consider the issue of invalidity of the trademark registration after being satisfied that the invalidity arguments are prima facie tenable. After that, the defendant can submit the rectification petition.
The requirement to show prima facie tenability for rectification proceedings filed after an infringement suit serves as a statutory safeguard. This prevents Defendants from filing frivolous challenges to trademark registrations merely as a response to infringement actions.
Court highlighted the fact that the Plaintiff had initiated commercial activities related to their mark by contracting for glass bottle supplies and undertaking other preliminary steps to put the trademark into use.

The Defendants cannot argue that “BURGER KING” is generic or common to trade as they have attempted to get the same mark registered previously.

Impact of the Case:

The Court has interpreted Section 47 of the Act in this case and they concluded when there are any claims regarding non-use of the mark, there must be substantial evidence present to show there was no intent to use the mark. This helps law students and lawyers in order to present a case related to trademark infringement as there is a set standard.
By giving “BURGER KING” the status of a well-known mark and stating that they are distinct and have a secondary meaning, it upholds the rights of well-known brands against generic claims from competitors. This precedent well help other popular brands in case they are subject to similar false claims.

Analysis:

This is an important case as it deals with the issue of trademark validity. Many cases have come up in the Court challenging the validity of a mark, and this decision will help in making sure it is a clear and effective process.
Prima facie assessment is required by the Court as per this case, due to this any frivolous counterclaims which may infringe the mark are prevented. Through this requirement, the rights of the trademark holder are protected as only legitimate challenges are considered by the Court.
One of the major strengths of this case is the fact that the Court emphasized on the importance of evidence and considering it as a whole. Every document must not be read in parts and in order to analyse the intent and objective it must read in its entirety.
This case highlights the importance of the judicial system striking a balance between protecting intellectual property rights and resolving legitimate challenges to trademark validity, on the one hand, and preventing counter-actions on the other.

Conclusion:

When international brands enter the market, this case will be considered as it clearly slays down some of the rules and principles that need to be considered before any decision can be made. Companies will make sure their pre-launch activities are documented properly and any trademark related information can be provided whenever required.
Through this case established trademarks are protected from any of the frivolous claims as its emphasis need for credible evidence. In such cases there must balance of the rights of the trademark owner and the rights of the challengers to maintain harmony.