Delhi High Court
Virendra Kumar Gupta vs Burger King Corporation on 21 April, 2023
2023:DHC:2722
$~23-26
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : 21st April, 2023
+ C.O. (COMM.IPD-TM) 568/2022
VIRENDER KUMAR GUPTA M/S BURGER KING.....Petitioner
Through: Mr. Shailen Bhatia, Mr. Amit Jain
and Mr. Raghav Bhalla, Advocates.
versus
BURGER KING CORPORATION AND ANR. ..... Respondents
Through: Mr. Raunaq Kamath, Mr.Rahul Bajaj
and Mr. Mukul Kochhar, Advocates
for R-1.
+ C.O. (COMM.IPD-TM) 571/2022
VIRENDRA KUMAR GUPTA .....Petitioner
Through: Mr. Shailen Bhatia, Mr. Amit Jain
and Mr. Raghav Bhalla, Advocates.
versus
BURGER KING CORPORATIONAND ANR. ..... Respondents
Through: Mr. Raunaq Kamath, Mr.Rahul Bajaj
and Mr. Mukul Kochhar, Advocates
for R-1.
+ C.O. (COMM.IPD-TM) 578/2022
VIRENDRA KUMAR GUPTA .....Petitioner
Through: Mr. Shailen Bhatia, Mr. Amit Jain
and Mr. Raghav Bhalla, Advocates
versus
BURGER KING CORPORATIONAND ANR. ..... Respondents
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.O. (COMM.IPD-TM) 568/2022 and connected Signing Date:24.04.2023
Page 1of15:17:13
5
2023:DHC:2722
Through: Mr. Raunaq Kamath, Mr.Rahul Bajaj
and Mr. Mukul Kochhar, Advocates
for R-1.
+ C.O. (COMM.IPD-TM) 592/2022
VIRENDER KUMAR GUPTA M/S BURGER KING.....Petitioner
Through: Mr. Shailen Bhatia, Mr. Amit Jain
and Mr. Raghav Bhalla, Advocates.
versus
BURGER KING CORPORATIONAND ANR. ..... Respondents
Through: Mr. Raunaq Kamath, Mr.Rahul Bajaj
and Mr. Mukul Kochhar, Advocates
for R-1.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
C.O. (COMM.IPD-TM) 568/2022, C.O. (COMM.IPD-TM) 571/2022,
C.O. (COMM.IPD-TM) 578/2022&C.O. (COMM.IPD-TM) 592/2022
1. The present rectification petitions have been filed on behalf of the
petitioner seeking cancellation/removal of the following marks registered in
the name of the respondent no.1, from the Register of Trade Marks:
i. under registration no. 2011497 in class 43
ii. under registration no.1494245 in class 42
iii. under registration no. 1615231 in class 29
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.O. (COMM.IPD-TM) 568/2022 and connected Signing Date:24.04.2023
Page 2of15:17:13
2023:DHC:2722
iv. BURGER KING under registration no. 1494246 in class 42
2. The rectification petitions were filed before the IPAB and the same
have been transferred to this Court pursuant to the enactment of the Tribunal
Reforms Act, 2021. The rectification petitions have been contested on behalf
of the respondent no.1 by filing a counter-statement.
3. Earlier, the respondent no.1, Burger King Corporation, had instituted
a suit being CS(COMM) 2200/2014 in the year 2014(later renumbered as
CS(COMM) 229/2018), inter alia, against the petitioner herein, Mr.
Virender Kumar Gupta, who was the defendant no.2 in the suit. In the
aforesaid suit, the respondent no.1 had sought a decree of permanent
injunction against the petitioner herein and other defendants restraining them
from infringing the trademark 'BURGER KING' as well as passing off their
goods as that of the respondent no.1.
4. In the aforesaid suit, the petitioner herein had sought to raise an issue
with regard to invalidity of the registrations of the trademark 'BURGER
KING' of the respondent no.1 herein. Vide judgment dated 6th March, 2023
passed in the said suit, I had held that the plea raised by the defendant in the
suit with regard to invalidity of the registrations granted in favour of the
plaintiff in respect of its trademark 'BURGER KING' and other formative
marks, is prima facie not tenable and therefore, no issue with regard to
validity of registrations of the trademarks of the plaintiff is liable to be
framed in the suit.
5. Placing reliance on the judgment of the Supreme Court in Patel Field
Marshal Agencies v. P.M. Diesels Ltd, (2018) 2 SCC 112,it was observed
that the jurisdiction with regard to rectification of a mark under Section 124
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.O. (COMM.IPD-TM) 568/2022 and connected Signing Date:24.04.2023
Page 3of15:17:13
2023:DHC:2722
Trademarks Act, 1999 can be exercised only upon finding of the Civil Court
as regards the prima facie tenability of the plea of invalidity. Relevant
paragraphs of the judgment in the aforesaid suit are set out below:
"12. I am in agreement with the submission of the plaintiff
that the finding of prima facie tenability is a statutory
safeguard to ensure that the defendants do not file
rectification proceedings as a counter blast to the
infringement actions against them, unless their plea of
invalidity is prima facie tenable. If this were not so, the
defendants would be permitted to challenge the registrations of
the plaintiff by filing rectification petitions on frivolous and
untenable grounds. It is for this reason that the legislature has
placed the safeguard of prima facie tenability in cases where
the rectification proceedings are filed after a suit for
infringement has been filed, whereas no such safeguard is there
in cases where rectification proceedings have been filed before
the suit.
13. In Patel Field Marshal (supra), the Supreme Court
observed that where a civil suit is pending, the jurisdiction can
be exercised by a statutory authority only on account of finding
of the Civil Court as regards the prima facie tenability of the
plea of invalidity. It was further observed that such a finding is
a basic requirement so that false, frivolous and untenable
claims of invalidity are not raised."
6. The petitioner has filed an appeal against the aforesaid judgment
before the Division Bench of this Court. However, the said appeal was
withdrawn by the petitioner on 18th April, 2023 with liberty to file a Special
Leave Petition before the Supreme Court.
7. Since the rectification petitions were admittedly filed after filing of
the aforesaid suit, in terms of the judgment in Patel Field Marshal (supra),
the rectification petitions could only be filed upon finding of the Civil Court
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.O. (COMM.IPD-TM) 568/2022 and connected Signing Date:24.04.2023
Page 4of15:17:13
2023:DHC:2722
as regards the prima facie tenability of the plea of invalidity.
8. In view of my aforesaid findings in the judgment dated 6th March,
2023 in CS(COMM)229/2018, the rectification petitions are not
maintainable. Consequently, the rectification petitions are dismissed.
AMIT BANSAL, J.
APRIL 21, 2023
rt
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.O. (COMM.IPD-TM) 568/2022 and connected Signing Date:24.04.2023
Page 5of15:17:13
