Is Your ‘Burger’ Mark Protected?

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Is Your ‘Burger’ Mark Protected?

In a recent case involving trademark infringement it was seen that a game of hide seek was played out between the plaintiff and defendants. The plaintiff being a giant international and well reputed brand sought infringement protection, for their registered trademark ‘BURGER KING’. The Burger King Corporation being the plaintiff filed a suit against the defendants for infringing their registered trademark and using a trademark which was deceptively and confusingly similar to the plaintiff’s trademark. Whether the claims of plaintiff were valid? Whether plaintiff was entitled to injunctive reliefs as claimed for? Was the defendant a defaulter in using his trademark which was alleged as deceptively similar to that of the plaintiff?

Brief facts of the case:

1. The plaintiff in the present case is Burger King Corporation, who sought an injunctive relief before the High Court of Delhi against the defendants whom had used a deceptively and/ or identically similar mark to their trademark BURGER KING.

2. The defendants being Mr. Shameek & Anr. were the users of the impugned trademark King Burgerz.

3. The trademark Burger King is a widely popular brand giving services in restaurant business. The restaurant Burger King originally situated at the United States of America is catering in the fast food segment since decades, founded from the year 1954. The plaintiff manages and operates a world wide chain of over 13,000 restaurants and serving more than 11 million customers daily in about a hundred countries worldwide. Plaintiff is the second largest burger company in the world and provides employment to thousands of people.

4. The trademark of the plaintiff Burger King is a unique combination of two generic words and has been in use since the year 1954. It holds a number of trademark registrations under its name in various classes in over 122 countries. It is a registered trademark owner of its mark BURGER KING in India since the year 1979. The high popularity amalgamated with the trademark registration of the plaintiff, makes it entitled to get the highest protection under the trademarks law for any or all the trademarks that may be confusingly similar to it.

5. The defendants in the present scenario started a restaurant in the name of King Burgerz in Chennai. The plaintiff became aware about its existence in the year 2012, and on enquires came to know that the defendants were trading on the business of fast food and particularly ‘burgers’ under the deceptively similar mark King Burgerz.

6. The plaintiff thereafter wanting an amicable settlement sent the defendants a cease and desist notice. The reply of which was received by the plaintiff in the form of an email wherein the defendants stated that: -they acknowledged that the plaintiff was the proprietor of the mark Burger King and that they would restructure their restaurant and change their name shortly. The defendants also asked the plaintiff if they would have any objection if they adopt any one of these marks being: Burger Time, Happy Burgers, Burger Palace, Royal Burger or Royal Burgers.

7. The plaintiff replied the defendants stating that they had no objection for other trademarks they intended to adopt, but that they would require a formal undertaking from them along with photographs and signage of their new trademark banner evidencing the discontinuation of the impugned mark.

8. The defendants then started to ask for time to execute the undertaking from the plaintiff and the plaintiff reasonably granted them time. After numerous emails to the defendants about the execution of the undertaking, the defendants responded via email stating that they were about to close their restaurants in 2 months and asked whether there was still a requirement of a formal undertaking.

9. The plaintiff still wanted the undertaking and stated that they would consider the matter closed only after receiving it. Along with the email they also sent a draft of undertaking to the defendants to be executed. The defendants however failed to execute the same and after contacting about it, the plaintiff received their statement that they had closed their restaurant and that the plaintiff may check the venue for proof thereof.

10. Later on, the plaintiff learned that the defendants had again started the use of the mark KING BURGERZ in a different location. The investigation carried on by the plaintiff revealed that the defendants had changed their trademark Royal Burgers to King Burgerz with a similar signage, font style and colour scheme as that of the plaintiff’s mark.

11. In view of these events the plaintiff instituted a suit in the court for seeking protection against the infringement caused by the defendants on their popular trademark. The plaintiffs averred in their plaint that the defendant’s intentions were purely malafide and they continued the use of the impugned mark knowing well about the market presence and the possibility that their impugned mark may be perceived as that of the plaintiff’s.

12. The plaintiff prayed before the court to permanently grant injunction in their favour, restraining the defendants to use the mark KING BURGREZ or any other mark that may be deceptively and/or identically similar to the trademarks of the plaintiff. It was prayed for the grant of permanent injunction on sale, promotion or use of any advertisement, packaging or stationary similar to the mark of the plaintiff’s.

The Court Held:

Since the defendant did not file any appearance even after the due and prescribed time provided under the law, to defend or present their arguments for their use of the impugned mark, the court decided the matter ex-parte. The High Court after perusing the events, conversations and notices, held the decision in favour of the plaintiff. The court decided that the mark of the plaintiff is a very well known mark and it is entitled to protection against infringement of the said mark by any one, who uses any mark which may be deceptively similar to the plaintiff’s mark. Hence the plaintiff was granted injunctive relieves as sought for in its plaint.

Contributed By : Rashida Baji (Advocate)
   Designed By : Vikash Singh