The plaintiff in the present case are the USA Giants Burger King which was founded in 1954. They commenced business from one store and now operate a worldwide chain of 13,000 fast food restaurants over 100 countries being the second largest fast food hamburger company in the world. Having a global presence, the food chain has become a Well-known trademark. The plaintiff has various registered marks in India since 1979 however they entered the Indian market in 2014 having their first outlet at New Delhi.
The defendant in the present case has a similar business model with a similar name operating in two locations in Pune since 1992 having generated popularity and goodwill in the market. The trademark has also been registered since 2003.
In 2009, when the USA Giants came across the mark infringing upon their right, using similar trade name, they sent a cease and desist notice to the defendant in order to resolve the matter amicably, however, the defendants denied the allegations through a reply. This led to the filing of the case under the Pune District Court in 2011.
Issues:
Whether the Defendants are infringing upon the Trade Mark of the Plaintiff?
Analysis:
The plaintiff in the present case sought relief of permanent injunction over the defendants mark and monetary damages of INR 20 lakhs caused to the plaintiff.
The battle between the Giants and the Pune food joint was initiated in 2009 and since then there have been various attempts from both the side to defend their mark. As both the fast food joints have their registered Trade Marks in India, it was a challenging judgment by the district court. The USA Giants have 1200 restaurants in Asia since 1982 and have multiple registered trademarks in their name under Classes 16, 29, 30, 32 and 42 of the Nice Classification between 1979-2006, however, the company did not have a physical presence in India until 2014.
On the other hand the Burger King Food Joint in Pune which was started by a couple in Pune has been providing their services since 1989 and since 1992 they have been using the name Burger King. They had applied for a trademark registration in 1994 and have a valid registered trademark till date. Though the food giants have a global presence and widespread goodwill, the market value, popularity, and reputation of the defendants in the regions they serve must also be taken into account.
Section 1 of the Trademarks act, 1999 states that applicability of the Act which applied to the ‘territory of India’, meaning that trademarks in India is based on territorial jurisdiction only. The USA giants claim to have registrations and be present worldwide, however, their first store in India was opened only in 2014, therefore, the use of mark in India was in 2014 for the first time. Therefore, using the defence of prior use of mark Pune Burger King has been in the market with the name 1994 hence are not infringing upon the rights of the USA Giants.
Further, though the nature of business of both the companies is similar the visual similarity in trademark does not exist while the USA giants’ logo has two semi circles which have a combination of yellow and blue in between which ‘BURGER KING’ has been written and the Pune food joint has a crown between the words Burger King therefore, there is no visual similarity between the marks. Additionally the target audience of both the food joints is different, the USA Giants have a worldwide customer base and had no presence in Pune since 2015 while the Pune food joints target’s only Pune Localites.
Infurtherance to that, the first notice sent by the plaintiffs (USA Giants) opposing the mark was in 2009 however, the actual suit filed on in 2011 approximately 20 months after sending the notice to the plaintiffs. In totality the USA Giants as well as the Pune food joint both have been in the market since 19 years and there have been no legal suits prior to this, therefore, it can be inferred that there was no substantial loss to either of the parties.
The defendant claimed that the plaint was not instituted in a proper manner in accordance with Order 29 according to which the in order to institute a legal suit against a company signature of both all the Directors needs to be affixed. In addition to this PW-1 was not authorised by the plaintiff to give evidence on their behalf and the evidence submitted by him were neither helpful to support the allegations nor had proper verification of evidence affidavit in accordance with Order 19 Rule 3 of CPC.
In the case of Burger King Corporation v. Anahita Irani and Another, the court was of the view that the trademark of the plaintiff is not being infringed in the present case as there was no evidentiary value of the evidence presented by the plaintiff as the evidence presented by the plaintiffs were not in accordance with Order 19 Rule 3 (1) of Civil Procedure Code where not treated as a evidence due to non verification of evidence affidavit in proper form as stated in the case of D. N. Gupta Vs. Jaswant Singh.
The Hon’ble Pune Court in the present case denied the plea for perpetual injunction to the Pune Food Joint Burger King considering that they have been present in Pune since 1992, providing services to their customers since the past 30 years have created a substantial amount of brand value and goodwill in the market.
Further the court also denies the monetary damages of INR 20 Lakhs sought by the Plaintiff as there was no substantial proof in order to show actual damages incurred by the USA Giants by the presence of a local brand with a similar name.
Therefore, the USA Giants Burger King lost the legal battle against Pune Food Joint on the basis that Pune’s local brand has created their own brand value in the market and has their own customer base making it oblivious that there no damages incurred by the USA Giants and secondly that the evidence shown by the plaintiff were not admissible in court.
The decision of the Hon’ble Pune Court was unexpected as it did not give preference to a well know trademark. Considering all the factors, the Hon’ble Pune Court stated in it’s decision as trademarks are territorial rights and defendants have established their presence in the territory on Pune prior to the USA Giants. However, the USA Giants appealed in the Bombay High Court and have secured an interim order against the Pune food joint to use the mark Burger King until 6th September, 2024.
D. N. Gupta Vs. Jaswant Singh, AIR 1982 Delhi 1250.
