The Delhi High Court granted the status of a ‘well-known mark’ to Burger King Company LLC (Burger King) stating that their trademark has ‘acquired a secondary meaning in respect of burgers.’ The petitioner had prayed for the declaration of their trademark ‘Burger King’ as a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as 'TMA').
Brief Facts of the Case:
Three cancellation petitions under Section 57 of the TMA and a suit under Section 134 of the TMA (passing off) were filed by Burger King Company LLC against the defendants. The Defendants operated under the name and trading style of "Burger King Family Restaurant." The Plaintiff sought permanent injunction and declaration of the mark 'Burger King' as a well-known mark and relief against the defendants.
Contentions of the Parties:
The plaintiff claimed to be the proprietor of the 'Burger King' trademark since 1954, operating in over 100 countries, with substantial sales and investments in promotion. The plaintiff argued that the defendants' use of their trademark infringed on their rights
Defendants claimed prior use of the mark since 1970 and argued for the validity of their registrations asserting that the mark Burger King is a generic mark common to the trade.
Observations by the Court:
The Court considered the plaintiff's long usage, extensive operations, and global reputation in declaring their trademark as a well-known mark. The Court held that “on the strength of averments in the plaint, and the documents placed on record, and the reputation of the ‘BURGER KING’ mark, it is clear that it should acquire a ‘well-known’ status. The mark has acquired a secondary meaning in respect of burgers.”
The Court referenced the decision of the Supreme Court in the case of Hermes International v. Crimzon Fashion Accessories Pvt. Ltd.[1], where the court relied on the factors outlined in Section 11(6) of the TMA to determine the well-known status of a trademark. These factors encompass the knowledge and recognition of the trademark in the relevant public, the duration, extent, and geographical area of its use and promotion, as well as the record of successful enforcement of its rights.
The Court noted an uncanny resemblance between the logos of the parties and restrained defendants from using the petitioner’s trademark but allowed the use of 'Burger Emperor.'
The Court also rejected the defendants' claim of the petitioner’s mark being generic considering their own applications for registration of the same.
The Decision of the Court:
The defendants withdrew their appeal and all cancellation petitions were dismissed as withdrawn. The Court declared 'Burger King' as a well-known mark.
Case Title: Burger King Company LLC vs. Virendra Kumar Gupta & Anr.
Coram: Hon'ble Ms. Justice Prathiba M. Singh
Case no.: C.O. (COMM.IPD-TM) 686/2022 & I.A. 10228/2022 and other connected matters
Advocate for the Petitioner: Mr. Raunaq Kamath, Mr. Aditya Gupta, Mr. Mukul Kochhar, Mr. Rahul Bajaj, Advs.
Advocates for the Defendants: Mr. Shailen Bhatia & Mr Raghav Bhalla, Advs. Mr. Harish Vaidyanathan Shankar, CGSC, with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Mr. Krishnan V. Advs.
Read Order @LatestLaws.com:
[1] 2023 SCC OnLine 883
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