The Bombay High Court on Monday (August 26, 2024) put an interim stay on the Pune trial court’s order that permitted the Pune-based burger joint to use the brand name ‘Burger King’ as their trade mark.
The U.S.-based food giant, Burger King Corporation had moved the Bombay High Court on Monday (August 26, 2024), challenging a Pune’s trial-court order. The global fast-food company has approached the High Court to protect its iconic brand name.
The judgement was pronounced by Pune district judge Sunil Gangadharrao Vedpathak, on July 22, 2024 and was uploaded on July 23, 2024. The district judge has dismissed the lawsuit that was filed on February 18, 2011.
The U.S.-based Burger King, in its appeal against the trial court’s order, contended at the Bombay High Court that since January 28, 2012, an injunction order was operating and that the Pune-based eatery was only using ‘Burger’ as their brand name and not the ‘Burger King’. “In this lawsuit, there has been an injunction operating since January 28, 2012. They have now started using ‘King’ too and this is against the very court’s injunction that has been operating for the last 12-years,” advocate Hiren Kamod argued before the Division Bench of Justices Atul Chandurkar and Rajesh Patil.
The Bench then sought a copy of the injunction and trial court’s order that permitted the Pune-based eatery to use the word ‘Burger King’ last month but the appellants required some time to produce the copy of the impugned order.
“We do not have the interim order but we will show you [the Bench] the final judgement. For some reason, there are some factual errors made by the trial court,” Mr. Kamod said.
To allow the appellant’s to produce the original injunction order, matter is scheduled to be heard again at 2.30pm on Monday.
The case so far
Burger King is a company incorporated under the laws of the State of Florida having its principal place of business at 5505, Blue Lagoon Drive, Miami, Florida 33126, United States of America.
The plaintiff firm was founded in 1954 by James McLamore and David Edgerton. It has commenced business with one restaurant under the name BURGER KING and now manages and operates a worldwide chain of 13,000 fast food restaurants in more than 100 countries and U.S. territories worldwide.
The trade mark and trade name ‘Burger King’ have been used by the plaintiff since 1954 and is registered in over 122 countries of the world including 22 countries in the Asia Pacific and South-East Asia regions and is a well known mark having been used continuously and extensively for fast food restaurant services in a wide expanse globally.
After learning that a restaurant with the same name had been serving food since 2008, the firm filed a lawsuit claiming that the use their name by the Pune-based burger joint was causing irreparable harm to its brand reputation.
The corporation sought permanent injunction from the court to restrain the Pune-based restaurant from using the ‘Burger King’ moniker.
They claimed trademark infringement and sought damages and a permanent injunction.
However, the district court passed the order in favour of the Pune joint, noting that the Pune-based ‘Burger King’ had been using the name and brand since 1992, long before the US-based corporation registered its trademark in India and entered the Indian market.
“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 trade mark 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,” judge Vedpathak said.
On claims and compensation or damages, the judge observed, “So far as claim of compensation / damages of ₹20,00,000 is concerned, except bare interested words that due to exparte order sought by the plaintiff against them, they had caused loss to their goodwill. He had to answer the questions of some customers including the plaintiff. As such, according to him, due to all these things, defendants had caused loss of ₹20,00,000/-. However, there is no supporting evidence to prove the actual damages caused to defendants. Therefore, like plaintiff, defendants are also not entitled to claim of damages.”
