Aarohi Dhumale
On 16.07.2024, Pune District Court dismissed a suit of trademark infringement by Burger King against Pune’s local eatery, also named Burger King.
The 13-year-old case was finally brought to an end after the suit was dismissed by Justice Sunil Vedphatak.
Burger King, the plaintiff, is a global chain incorporated by the State of Florida with its headquarters located at 5505 Blue Lagoon Drive, Miami, Florida 33126, United States of America. At the time of initiating the suit, Ms. Cecilia Dempsey had the power of attorney on behalf of the company, which was then duly transferred to Mr. Pankaj Pahuja. Burger King was founded in 1954 by James McLamore and David Edgerton and now operates 13,000 restaurants across 100 countries, of which 97% are independent franchisees, making it the world’s 2nd largest hamburger brand. It opened its first branch in Asia in 1982 and presently runs over 1200 restaurants in Asia. It owns 4000 trademark and service mark applications and 1040 domain name registrations around the world. The name Burger King is made up of two arbitrary combinations of two English words. It has registrations in various jurisdictions, including India. The first Indian Burger King restaurant was opened in New Delhi on 09.11.2014. It became popular in India and has been receiving franchisee requests in the country. The plaintiff’s first restaurant in Pune was opened in April 2015.
The defendant’s restaurant has been located in Pune since 1989 and started using the name Burger King in 1992. The plaintiff got to know about it in 2009 and sent them a cease and desist notice, to which the defendant replied that the plaintiff’s restaurants don’t exist in India, thus, they can’t claim any common law rights. The defendant had trademark application No. 1209146. The plaintiff filed a suit for trademark infringement seeking a permanent injunction against the defendants in 2011.
The Court observed that while the plaintiff hadn’t operated in India under its name for almost 30 years, the defendants regularly supplied its customers under the name ‘Burger King’, marking the legitimate and authentic use of its name. “With respect to relief of perpetual injunction is concerned, admittedly the plaintiff has started to provide services through restaurant under its trademark Burger King in India particularly in the year 2014 whereas since 1991-92 defendants are using the trademark Burger King to provide restaurant services. Even the plaintiff has not placed on record the registration certificate about registration of its trademark in India under class 42 prior to 1991-92. Admittedly plaintiff has registered its trademark Burger King under class 42 pertaining to restaurant services is of 06.10.2006. So, considering the fact that defendants are prior user of trademark in question, I am of the opinion that the plaintiff has no cause of action to seek relief of perpetual injunction,” the Court said.
The Court held that the defendant has been conducting their business for a long time with the said name without interruption, making them the honest and prior user of the name, not the plaintiffs.
The defendants sought damages of Rs. 20 lakhs, citing the distress and harassment caused by the legal proceedings initiated by the plaintiff. The Court said that no proof of actual loss was shown and denied the damages.
Case Name: Burger King Corporation v. Anahita Irani and Another
Case Number: REG. CIVIL SUIT NO.-02/2011 CNR NO. MHPU010018472011 EXH NO.-321.
Bench: Justice Sunil Vedphatak