Burger King Corporation vs Ranjan Gupta And Ors.
2018 Latest Caselaw 5749 Del

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*      IN THE HIGH COURT OF DELHI AT NEW DELHI
                                 Reserved on : 24th August, 2018
                         Date of decision : 24th September, 2018
+                  CS (COMM) 229/2018 & I.A.13615/2014
     BURGER KING CORPORATION                              ..... Plaintiff
                       Through: Mr. Pravin Anand, Ms. Tusha
                                Malhotra and Ms. Pankhuri Malik,
                                Advocates.
                       versus
     RANJAN GUPTA AND ORS.                          ..... Defendants
                       Through: Mr. Shailen Bhatia, Ms. Ekta Nayyar,
                                Ms. Neelam and Ms. Saltanat
                                Vidushi, Advocates.
     CORAM:
      JUSTICE PRATHIBA M. SINGH
                       JUDGMENT

Prathiba M. Singh, J.

I.A.13615/2014

1. The Plaintiff has filed the present suit seeking injunction restraining the use of the mark 'Burger King‟ by the Defendants for their restaurants in Varanasi. It is the Plaintiff's case that it was founded in 1954 when the first restaurant under the name „Burger King‟ was opened in Miami, Florida and the first advertisement was aired in 1958. The Plaintiff states that it owned and operated 275 Burger King Restaurants by the year 1967. Currently, it has more than 13,000 fast food restaurants in around 91 countries. In Asia, it is claimed that the first restaurant was opened in 1982 and there are over 1200 restaurants in the Asia Pacific Region. The Plaintiff claimed that the 'Burger King‟ mark is depicted in a logo consisting of a crescent design. It has various registered trademarks in India. The Plaintiff also claimed that it has a strong presence on the internet through its website

www.burgerking.com and www.bk.com. It is an admitted fact that the first restaurant in India, has been opened, only in 2014-15.

2. The present suit has been filed alleging that the Defendant Nos.1 and 2 are running a Burger King Restaurant in Nadesar, Varanasi. A search on the trademark registry website revealed that the Defendants had applied for the registration of Burger King Family Restaurant in classes 29, 30 and 43. The Defendants had also applied for registration of the mark „Burger Emperor‟ in classes 29, 30 and 43. Further investigation revealed that the logo adopted by Defendants was a complete imitation of the Plaintiff's logo.

3. A cease and desist notice was issued by the Defendants in November, 2011 and the follow up letter sent in December, 2012. However, no response was received and another letter was issued on 2nd April, 2013. In an exhibition held in October, 2013 at Franchise India - 2013, it was noticed that the Defendants were one of the exhibitors and were soliciting franchisees for the Burger King brand. The website registered by the Defendants was www.burgerkingfamilyrestaurant.com. Under these circumstances, the Plaintiff seeks a permanent injunction and damages.

4. On 25th July, 2014 an ad interim ex-parte injunction was granted in the following terms: -

"The grievance of the plaintiff is that the defendants have copied the trade mark as also the logo of the plaintiff 'BURGER KING' with respect to two restaurants, which are being run in Varanasi, Uttar Pradesh. A comparison of the trade mark and logo of the plaintiff and the trade mark and logo of the defendant has been set out in paragraph 29 of the plaint. Counsel submits that the defendant has adopted the trade mark and the logo or the plaintiff with a view to ride upon the goodwill and worldwide reputation of

the plaintiff. Counsel for the plaintiff also submits that the defendants have participated in the trade fair at Delhi; and the defendants have also been soliciting tentative franchisees for their 'BURGER KING restaurants at Franchisee India, 2013. In these circumstances, plaintiff prays for grant of ex parte ad interim injunction.

Issue summons in the suit and notice in the application by all modes, including DASTI, returnable on 25.9.2014.

I have heard counsel for the plaintiff and perused the plaint, application and the supporting documents. I am satisfied that this is a fit case for grant of ex parte ad interim injunction. Accordingly, till the next date of hearing, defendants, their servants, agents, distributors, stockists and representatives are restrained from using the trademark 'BURGER KING or any other deceptively similar trade mark. DASTI.

Provisions of Order 39 Rule 3 CPC be complied with, within 4 days."

5. The Defendants filed their written statement and claimed prior use of the mark „Burger King‟ since 1970. It was also claimed that the Defendant No.2, Mr. Virendra Kumar Gupta has two other firms namely; M/s Burger Emperor and M/s Burger King Family Restaurant but the same are not the parties to the present suit. It was further pleaded that Defendant No.3 belongs to a family which was always in the sale of snacks products including pakora, samosa etc. and grandfather of the Defendants was also known as `King of Taste'. Written statement, interestingly, avers as under: -

"D. That prior to 1970, the Defendant‟s shop near Hotel Taj was selling Indian snacks such as pakoras, samosas and the Defendant‟s family/grand father was known as king of taste. Thereafter, the Defendant sought to bring other snacks like Burgers, Patties (though vegetarian). Hence, the word Burger was chosen. Also relevant is that

Burger word denotes the family members of Shri Bachau Ram as such B for Bachau Ram, U for Usha Gupta (niece), R for Radhey Shyam (brother in law), G for Gundan Lal (nephew), E for Ekta Gupta (being a relative/then manager of the firm) and R for Rita Gupta (grand daughter). Moreover, the Hotel Taj is the old guest house of the King of Varanasi. The shop of the Defendant is just next door to the property of Kashi Naresh. Hence, the people of Varanasi called the Defendant No.2‟s grand father King of Taste. Hence, the use of the word King which was adopted in 1970. Thus, the words Burger King was adopted in 1970. In India, more people have seen the Defendant‟s restaurant bearing the name Burger King. The Defendant is thus prior to the Plaintiff in use of the word Burger. The adoption of the word Burger King by the Defendant is honest and bonafide. The Defendant was never aware of the Plaintiff‟s alleged business in 1970, when it adopted the said trade mark."

6. Thus, the Defendant traces the coinage of the word BURGER to the first letters of the names of his various family members. Thus, it is claimed that the adoption of the mark Burger King was honest and genuine. It was also claimed that the Plaintiff had not properly established as to when it had adopted the crescent shaped logo of Burger King and it had miserably failed to prove trans-border reputation prior to the adoption by the Defendants. It was also claimed that the word Burger is generic and there can be no monopoly over it.

7. After the initial grant of the ex-parte order, the matter was referred to mediation, however, mediation was unsuccessful. On 14 th September, 2016, the suit was converted into a commercial suit. Thereafter, the Defendants obtained registration for the trademark „Burger King Family Restaurant‟ and sought to amend the written statement by means of an application under

Order VI Rule 17. On 12th July, 2018, the application under Order VI Rule 17 was dismissed as the registrations obtained by the Defendants had been stayed by a learned Single Judge of this Court in W.P.(C) 2695/2018.

8. The application under Order XXXIX Rule 1 and 2 CPC is heard. It is the submission of Mr. Pravin Anand, who appears for the Plaintiff, that the trademark „Burger King‟ is a well-known mark and that the Defendants' user is dishonest. He submits that the explanation for the adoption of the mark is completely unacceptable and the resemblance in the logos shows that the Defendants had copied the logo from the Plaintiff. He further submitted that the claimed user by the Defendants of 1970 is also based on forged and fabricated documents.

9. Mr. Shailen Bhatia, Ld. Counsel appearing for the Defendants, submits that the Defendants has placed on record documents issued by the governmental authorities including records of the PWD Varanasi etc., to show prior adoption of the mark 'Burger King'. He submits that the Plaintiff admittedly did not open any restaurant in India till 2015. A running business of the Defendants should, therefore, not be stopped. It is further argued that the entire plea of trans-border reputation is sought to be proved by email queries, all of which are fabricated and procured. The Defendants also take strong exception to the documents filed on 27th August, 2018, by the Plaintiff as the judgment was already reserved on 24th August, 2018, and the Court had not given the Plaintiff liberty to file new documents.

10. Submissions are heard from both sides. A perusal of the documents and pleadings shows that the Plaintiff has placed on record downloads from its website www.burgerking.com which shows that the Plaintiff operates around 12000 restaurants in around 73 countries through a franchisee

network. Initially the Plaintiff adopted the mark „Burger King‟ with the tagline "Home of the Whopper". The logo which is currently being used by the Plaintiff is as under: -

PLAINTIFF'S LOGO From the pleadings and documents, it is, however, not clear as to when the said logo was adopted, either internationally or in India.

11. The use by the Defendants is of a logo, Burger King, which is almost identical to the Plaintiff's logo. Both the competing logos are set out herein below:-

12. The Defendants are also using pamphlets and seeking franchisee queries under the name „Burger King‟. The manner of use of the Plaintiff and the Defendants is almost identical. The carton which is used to pack the sandwich also bears the infringing logo of the Defendants. Thus, insofar as the name and logo is concerned, there is no doubt the Defendants' mark/logo is a complete imitation of the Plaintiff's mark and logo. The products and services for which the marks are being used are identical. A perusal of the website of the Defendants www.burgerkingfamilyrestaurant.com also shows that the manner of use is absolutely identical.

13. There is no doubt that the Plaintiff had not established restaurants or an outlet in India till 2014-15. However, the Plaintiff does have a large number of trademark registrations for various forms of Burger King both word marks and logo marks. As per the documents placed on record, the earliest trademark registration of the Plaintiff dates back to 1979 for the mark „Burger King‟. Insofar as the crescent logo is concerned, the earliest trademark registration for it on record is dated 6th October, 2006. Insofar as the Defendants are concerned, the trademark application of the Defendants has been filed in 2010 for a mark which is depicted below: -

14. All the remaining applications of the Defendants have been filed post the first legal notice received by them. What is however interesting is that in the applications filed post the receipt of legal notice, the user claimed by the Defendants is 1970. However, in the earlier applications, the user claimed is 17th September, 2005 and 25th September, 2010. Thus, the user of 1970 claimed by the Defendants is to be established at trial. The Defendants have also applied for another mark by the name Burger Emperor which is depicted below: -

15. Insofar as trans-border reputation is concerned, except the emails which have been placed on record, there is no other documentary evidence placed on record by the Plaintiff. The logo of the Plaintiff is registered as of 6th October, 2006 in India. An attempt has been made by the Plaintiff to file some internet printouts from Zomato etc., however, such printouts are recent i.e. post of filing of the suit. One press clipping from the Economic Times is of 12th November, 1993 with the title to Burger King to enter into India. The pleadings of the Plaintiff are not clear as to adoption of the „Burger King‟

Logo. However, what is important is a list of outlets of Burger King in several international airports across the world which shows that travellers would be well aware of the restaurants chain by the name of Burger King.

16. Insofar as the Defendants' documents are concerned, there are some documents which have been filed which date back to 1970. These are primarily purchase invoices. What is surprising is there is one document of 2nd September, 1960 issued by one Mr. Khedan Lal, Varanasi to B.K. Mint House, Varanasi for Rs.32. The Defendants, however, do not claim any use since 1960. Except one document from PWD, Varanasi, dated 29th December, 1970, most of the documents of the Defendants' are handwritten. Though a document dated 1960 is placed on record, it is not relied upon by the Defendants and user is claimed from 1970. The genuinity of these documents is thus nebulous, at least at this stage, until the documents are proved in trial. Most of the documents in 1970 and 1980 are hand written documents. There is, however, not a single advertisement filed by the Defendants. The Defendants have, however, placed on record sales tax documents and Vyapar Mandal, documents as of 2006-07. The earliest documents, where the impugned logo appears, are of 2010 in the Gaon Giraon Newspaper of October, 2010. Thus, there are some independent documents which show user since 2006-07. It is for the Plaintiff and the Defendants to establish their respective rights at trial. As of this point, this Court is unable to come to a final conclusion as to the genuinity of the claim of the Defendants in respect of adoption from 1970. Some sales tax orders have also been filed on record which show name of the Burger King for the assessment year 1993-93. The Defendants have a copyright registration for the logo Burger Emperor. The Defendants have also filed rectification

applications before the Intellectual Appellate Board challenging the Plaintiff's mark.

17. In this background, this Court has to take a view on the balance of probabilities in respect of adoption of use of the mark and logo „Burger King‟. The first and the foremost fact that strikes the Court is an uncanny resemblance between the two logos. The Plaintiff has shown registration of these logos in some registrations dating back to 2000 (for example in EI Salvador) and in 2003 in Germany. There is no document of the Defendant showing use of the crescent shaped logo prior to 2000. The trademark registrations of these countries are easily verifiable online and have not been seriously challenged. The said registrations of the respective statutory authorities of those countries cannot be ignored. The pleadings of the Plaintiff ought to have been clearer on this aspect.

18. The Defendants have not been able to show prior use of the logo. For the time being, since the logos are almost identical, the Plaintiff is held to be the prior user of the logo. Thus, the use by the Defendants of an imitative logo is violative of the Plaintiff's right.

19. Insofar as the adoption of the trademark „Burger King‟ is concerned, the explanation given by the Defendants in their written statement is `fantastic' to say the least. The manner, in which the Defendants claim coinage of the mark, by using the first letters of the names of various family members shows that the same is a completely dishonest attempt to defend something which is indefensible. The explanation for the coinage of the mark makes it clear that the Defendants are trying to adopt a process of reverse deduction to explain use of the mark Burger King. Such an explanation, if accepted, would lead to trivializing trademark rights.

20. The plaint is clear that the mark „Burger King‟ was adopted in 1954 in the US, and thus, the evidence of trans-border reputation, which is mentioned in the plaint, cannot be rejected at this stage when the trial is yet to commence. The list of outlets in various airports thus shows that travellers from India would have had knowledge of Burger King. It cannot be disputed that there are thousands of outlets of the Plaintiff across the world. The Defendants' explanation for the adoption being extremely unimaginative and the identical logo being an indication of dishonest adoption, the injunction already granted is liable to be confirmed. The manner in which the Defendants are soliciting enquiries and are wanting to give franchisees for their outlets under the name Burger King poses a clear and imminent threat for extreme dilution of the mark.

21. The present case being a commercial suit, evidence can be recorded by means of a Local Commissioner and to disturb the status quo that has been preserved since 2014 would be inequitable to the rights of the Plaintiff which claim to enjoy a global reputation.

22. It is accordingly directed that the injunction granted on 25th July, 2014 shall stand confirmed. The Defendants are thus injuncted from using the mark BURGER KING as also the infringing logo in respect of their food outlets or restaurants, in any manner whatsoever. The Defendants are also restrained from granting any franchisees or opening any new outlets under any name containing the mark BURGER KING. This, however, does not bar the Defendants from using the mark/name Burger Emperor.

23. The I.A. is disposed of with these observations.

CS (COMM) 229/2018

24. The admission/denial of documents stood concluded on 21 st July,

2016. Thereafter, the matter was taken up by the Court on 14 th September, 2016 for framing of issues, however, was re-listed for framing of issues on 30th January, 2017. Even on that date, the issues were not framed. The case got re-numbered as a commercial case under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 on 30th January, 2018.

25. Accordingly, list the matter for case management hearing on 23rd October, 2018.

PRATHIBA M. SINGH Judge SEPTEMBER 24, 2018 Rekha