The Delhi High Court, vide its decision on 06 March 2023, dismissed a plea of the defendants, seeking to invalidate the trademarks of Burger King on the grounds of non-use and the claim  that the trademark ‘Burger King’ is generic and common to the trade.

Burger King Corporation, a USA based multi-national chain of fast food restaurants, filed a suit in the year 2018 to seek relief of permanently restraining the Defendant, running a restaurant named ‘Burger King’ in Varanasi, from infringing the Plaintiff’s trademark ‘BURGER KING’ including variants, passing off goods as that of the Plaintiff and other related reliefs as the Court would deem fit. The Court, vide order dated, 24 September 2018, permanently restrained the Defendant from using the trademark ‘Burger King’, including opening any new franchisees or any other new outlet with the same name. The Appeal filed by the Defendant is pending before the Division Bench of Delhi High Court.

In one of the Orders of the Court dated 18 February 2020, it was observed that the Defendant, in its Written Submissions, had raised a defence that the Plaintiff’s trademarks ought to be cancelled. The Court, while ascertaining if it would be ‘prima facie tenable’ to invalidate the trademarks, observed that the ground of ‘non-use’ taken by the Defendant under Section 47 of the Trade Marks Act is not tenable as the Defendant failed to prove that the Plaintiff had an intention to abandon the use of their trademark in India, triggering the provisions of Section 47 (3) that will nullify the applicability of Section 47 (1) (b). The Court also observed that the Defendant failed to place any material evidences on record in support of its contention that ‘Burger King’ is generic or common to the trade. The Defendants are also estopped from taking a plea that ‘Burger King’ is generic and common to trade, since the Defendant themselves have applied for its registration.

The Court also shed light on the statutory safeguard of ‘prima facie tenability’ after a suit for infringement is filed, which was to ensure that a defendant does not file rectification proceedings as a counter-blast to infringement actions, unless their plea for invalidity is prima facie tenable. The safeguard of ‘prima facie tenability’ dissuades a defendant from initiating rectification proceedings on frivolous and untenable grounds.

For the court order, please click here.

Rommel Pandit

Trademark Attorney

Write A Comment