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Synopsis

The Delhi High Court recently dismissed a claim of invalidity against Burger King Corporation's registered trademark ‘Burger King’.

In response to a trademark infringement suit filed by Burger King Corporation in 2018, the defendants had asserted that the registered trademark of Burger King Corporation should be cancelled.

“When the defendant has sought registration of the same mark as that of the plaintiff, such a defendant is estopped from raising a question on the validity of the said mark on the ground of it is being descriptive in nature,” the court observed.

The court relied on the judgment given in PEPS Industries Case and rejected the plea of one Ranjan Gupta and others regarding the invalidity of the said trademark. The single judge bench of Justice Amit Bansal was hearing a suit filed on behalf of Burger King Corporation seeking relief of permanent injunction restraining Ranjan Gupta & Others from infringing the ‘BURGER KING’ trademark and its formative marks.

The counsel for Burger King Corporation had argued that it was necessary for the court to determine the prima facie tenability of the plea of invalidity of the registered trademark raised by the defendants and that the grounds taken up by the defendants were not tenable at all.

In response, counsel for the defendants had argued that Burger King Corporation had no exclusive right in the word ‘BURGER’ as the same is generic and common to trade and the word ‘KING’ is laudatory, thus, the trademark ‘BURGER KING’ could not be registered.

The court, however, overturned the argument that the trademark ‘BURGER KING’ was generic and common to trade and could not be registered as the defendants had themselves filed applications for the said trademark.

“In my view, the defendants have failed to place any material in support of their submission that the trademark „BURGER KING‟ is either generic or common to trade. It cannot be denied that the plaintiff has used the trademark „BURGER KING‟ since 1954 and holds registrations for the said mark in over 122 countries including India,” the court said.

“In view of the discussion above, I am of the considered view that the plea raised by the defendant with regard to the invalidity of registrations granted in favour of the plaintiff in respect of the trademark BURGER KING and other formative marks is prima facie not tenable. There is no reasonable prospect of the defendants succeeding in the cancellation petitions filed by them. Therefore, no issue with regard to the validity of the registrations of trademarks of the plaintiff is liable to be framed in the facts and circumstances of the present case,” the court further held.

Case title: Burger King Corporation vs. Ranjan Gupta & Ors.