The main legal point established in the judgment is the requirement to determine the prima facie tenability of the plea of invalidity of a registered trademark and the significance of 'bona fide use' and 'intention to abandon' in determining non-use of a trademark.

JUDGMENT :

1. The present suit has been filed on behalf of the plaintiff seeking relief of permanent injunction restraining the defendants from infringing plaintiff’s trademark ‘BURGER KING’ and its formative marks, passing off their goods as that of the plaintiff along with other ancillary reliefs.

2. The plaintiff has obtained various registrations in respect of its mark ‘BURGER KING’ and its formative marks in various classes. Details of the registration of the said marks are given in Annexure A annexed to the plaint.

3. Vide order dated 25th July, 2014, an ex-parte ad interim injunction was granted in favour of the plaintiff restraining the defendants from using the trademark ‘BURGER KING’ or any other deceptively similar mark. Subsequently, vide order dated 24th September, 2018, the aforesaid interim order was confirmed till the final adjudication of the present suit. Appeal is stated to have been filed on behalf of the defendant, which is pending before the Division Bench of this Court.

4. It was noted in the order dated 18th February, 2020 passed in the suit that one of the defences raised by the defendants in their written statement is that the plaintiff’s registered trademark ‘BURGER KING’ is liable to be cancelled. It was observed that the first question that is required to be adjudicated in the present case is whether the case of the defendants on this account is prima facie tenable.

5. Submissions on behalf of the parties on the aforesaid aspect were heard on 16th January, 2023, 24th January, 2023 and 22nd February, 2023.

6. Counsel appearing for the plaintiff has made the following submissions:

I. In terms of Section 124(1)(b)(ii) of the Trademarks Act, 1999 (hereinafter ‘Act’), the Court shall raise an issue regarding the plea of invalidity of a registered trademark only upon being satisfied that such a plea is prima facie tenable. From the date of framing of the said issue, the Court shall adjourn the case for a period of three months in order to enable the concerned party to apply for rectification of the register.

II. It is necessary for the Court to determine the prima facie tenability of the plea of invalidity of the registered trademark raised by the defendant in order to ensure that the defendants do not institute rectification proceedings as a counter blast to the infringement actions filed against them. Reliance in this regard is placed on the judgments of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd, (2018) 2 SCC 112 and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad & Anr., 2018 SCC OnLine Del 6657.

III. A total of 13 rectification petitions have been filed on behalf of the defendants seeking cancellation of the trademark registrations of the plaintiff, of which four are listed before this Court today. The remaining nine were filed before different benches of Intellectual Property Appellate Board (IPAB) and are liable to be transferred before different High Courts after coming into effect of the Tribunals Reforms Act, 2021.

IV. The grounds taken by the defendants in their written statement with regard to invalidity of the registration of the trademarks of the plaintiff are not tenable at all. The ground of ‘non-use’ of the registered trademark of the plaintiff taken by the defendants under Section 47 of the Act, is not tenable as the defendants have failed to show that the plaintiff had an intention to abandon the use of their trademark in India. Reliance in this regard is placed on Hardie Trading Ltd. & Anr. v. Addissons Paint & Chemical Ltd., (2003) 11 SCC 92, and Express Bottlers Services Private Ltd. v. Pepsico Inc. & Ors., 1988 SCC OnLine Cal 62.

V. Prior to the launch of BURGER KING restaurant in India in November, 2014, the plaintiff had taken various steps towards the launch of the said restaurant in India, which would constitute ‘use’ under Section 47 of the Act.

VI. The defendants are estopped from taking the defence that the trademark ‘BURGER KING’ is generic and common to the