The Delhi High Court has dismissed the claim of the defendant in a trademark infringement suit that Burger King's trademark deserves to be declared invalid in terms of Section 124(1)(b)(ii) of the Trademarks Act, 1999.
The single-judge bench of Justice Amit Bansal dismissed the defense raised by the defendants in their written statement that the plaintiff‟s registered trademark "BURGER KING‟ is liable to be canceled.
"In view of the discussion above, 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 court observed.
The Counsel for plaintiff's grounds taken by the defendants in their written statement with regard to the invalidity of the registration of the trademarks of the plaintiff is not tenable at all. The ground of „non-use‟ of the registered trademark of the plaintiff taken by the defendants under Section 47 of the Act, is not tenable as the defendants have failed to show that the plaintiff had an intention to abandon the use of their trademark in India, he submitted further.
The Counsel for defendant, on the other hand argued that plaintiff has no exclusive right in the word „BURGER‟ as the same is generic and common to trade and the word „KING‟ is laudatory. Two generic/laudatory words cannot create a distinctive trademark and herefore, the trademark „BURGER KING‟ cannot be registered.
It was their argument that registrations of the plaintiff are liable to be rectified on various grounds including on the ground of „non-user‟ under Section 47 of the Act. It has been averred by the plaintiff in paragraph 17 of the plaint that the plaintiff was not using the said trademark in India at the time of filing of the present suit.
The Court after taking note of relevant provision of Sub clause (a) and (b) of Sub Section (1) of Section 124 observed at the outset that it commands that the court has to be satisfied that the plea regarding the invalidity of registration of the trademark is prima facie tenable.
Thereupon, the Court may raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of the said issue to enable the concerned party to apply for rectification of the register, it pointed out and added:
With regard to the first ground, the Court went on to note 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.
As far as the ground that the trademark „BURGER KING‟ being generic and common to trade and hence, the same cannot be registered was concerned, the Court noted that the defendants have failed to place any material in support of their submission that the trademark „BURGER KING‟ is either generic or common to trade.
"It cannot be denied that the plaintiff has used the trademark „BURGER KING‟ since 1954 and holds registrations for the said mark in over 122 countries including India. The Division Bench of this Court in M.A.C Personal Care Pvt. Ltd. & Anr. v. Laverana GMBH and Co. K.G. & Anr., 2016 SCC OnLine Del 530, observed that the registrations of the plaintiff in multiple jurisdictions create an even stronger presumption that the plaintiff‟s trademark has reputation in the market. It was further observed that if a trademark is registered in favour of the plaintiff in a jurisdiction abroad, the said fact suggests that the mark of the plaintiff is distinctive and hence, the same is capable of distinguishing the plaintiff‟s trademark from those of other businesses."
CASE TITLE: BURGER KING CORPORATION vs RANJAN GUPTA & ORS
CASE DETAILS: CS(COMM) 229/2018
CORAM: Justice Amit Bansal
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