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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Burger King Company LLC – Petitioner
Versus
Virendra Kumar Gupta and Another – Respondents
CO. (COMM. IPD-TM) No. 686/2022
Decided On : 21-04-2023
Trademark - Rectification Petition - Trademarks Act, 1999 - Section 11, Section 29 - The court discussed the impugned mark registered under no. 2052257 in class 43 in the name of the respondent no. 1 and its similarity to the well-known trademark BURGER KING. The court highlighted the dishonest adoption of the impugned mark and its potential to deceive the public and create confusion in the market. The court also referred to the judgment dated 24th September, 2018 confirming the injunction against the respondent no. 1 from using the mark BURGER KING and the observations made in the said judgment. The court stayed the operation of the impugned mark till the final adjudication of the rectification petition.
Fact of the Case:
The petitioner, a company based in the United States, sought cancellation/removal of the impugned mark registered under no. 2052257 in class 43 in the name of the respondent no. 1. The petitioner operates worldwide chain of over 18,000 QSRs under the trademark BURGER KING and had filed a suit for infringement against the respondent no. 1.
Finding of the Court:
The court found that the impugned mark was adopted by the respondent no. 1 dishonestly to trade upon the established goodwill and reputation of the petitioner. The court also noted the potential for the impugned mark to deceive the public and create confusion in the market.
Issues: The issues included the similarity of the impugned mark to the well-known trademark BURGER KING, the dishonest adoption of the impugned mark, and the potential for confusion in the market.
Ratio Decidendi: The court's decision was based on the dishonest adoption of the impugned mark by the respondent no. 1 and its potential to deceive the public and create confusion in the market.
Final Decision: The court stayed the operation of the impugned mark bearing registration no 2052257 in class 43 till the final adjudication of the rectification petition.
JUDGMENT :
AMIT BANSAL, J.
I.A. 10228/2022(for stay)
1. The present rectification petition has been filed seeking cancellation/removal of the impugned mark 
registered under no. 2052257 in class 43 in the name of the respondent no. 1, from the Register of Trade Marks.
2. Earlier, the petitioner had filed a writ petition being W.P. (C) No. 2695/2018 (later renumbered as W.P.(C)-IPD 53/2021) seeking cancellation of the aforesaid trademark. Vide order dated 20th March, 2018, while issuing notice in the said writ petition, a Coordinate Bench of this Court had granted stay on the operation of the aforesaid mark and the marks bearing registration nos. 2052258 and 2052259.
3. Vide order dated 26th May, 2022, the aforesaid writ petition was dismissed as withdrawn by a Coordinate Bench of this Court while giving liberty to the petitioner to file a rectification petition. The stay granted on the operation of the impugned mark was extended for a period of six weeks.
4. Pursuant to the aforesaid liberty, the present rectification petition was filed by the petitioner. Vide order dated 12th July, 2022, notice was issued and the respondent no. 1 undertook the following:
5. The aforesaid undertaking given by the respondent no. 1 has continued to be in effect till date. Counter-affidavit has also been filed on behalf of the respondent no. 1.
6. The petitioner is a company based in United Stated of America, which was founded in the year 1954 under the name BURGER KING. It is currently the second largest quick service restaurant (QSR) hamburger company in the world, which manages and operates a worldwide chain of over 18,000 QSRs, serving more than 11 million customers daily in approximately 100 countries.
7. The trademark BURGER KING is registered in the name of petitioner in over 122 countries worldwide. In India, the earliest registration of the trademark BURGER KING dates back to the year 1979. Details of registrations of the trademarks of the petitioner in India in various classes are given in paragraph 10 of the petition. The registration of the device mark 
in class 43 dates back to 19th August, 2010. The petitioner entered India in the year 2014 and opened its first BURGER KING restaurant in New Delhi on 9th November, 2014. At present, the petitioner operates over 250 Burger King Restaurants in India.
8. The petitioner has mentioned its annual sales turnover worldwide from the years 2010 to 2021 in paragraph 25 of the petition. The annual turnover of the petitioner in the year 2021 was 23,050 million US dollars. The expenses incurred by the petitioner on advertisement and promotions are mentioned in paragraph 26 of the plaint.
9. In August, 2011, the petitioner became aware that the respondent no. 1 has applied for registration of the impugned trademark in class 43. As per the examination report issued by the Registry, the trademark application of the respondent no. 1 was objected to and the registered mark of the petitioner was cited in the examination report. The petitioner's attorneys filed a request under form TM-58 with the Trade Mark Registry in terms of Rule 41 of Trademark Rules, 2017, in order to receive intimation when the impugned applications are published in the trademark journals so that the petitioner may oppose the same. However, the Registry advertised the impugned mark of the respondent no. 1 in 2016 without informing the petitioner and the impugned mark was registered in favour of the respondent no. 1.
10. In the year 2014, the petitioner filed a suit for infringement against the respondent no. 1. On 25th July, 2014, an ex parte injunction order was passed in favour of the petitioner and against the respondent no. 1, restraining the respondent no. 1 from u
The central legal point established in the judgment is the potential for the impugned mark to deceive the public and create confusion in the market, leading to the court's decision to stay its operat....
The central legal point established in the judgment is the recognition of the mark 'BURGER KING' as a well-known mark under the Trade Marks Act, 1999, and the distinctiveness of trade marks.
The jurisdiction to exercise rectification of a mark is subject to the finding of the Civil Court as regards the prima facie tenability of the plea of invalidity, as a statutory safeguard to prevent ....
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'....
The registration of a trade mark that is identical or similar to an existing mark is liable to be cancelled if it is likely to cause confusion among consumers.
A trademark rectification petition is not maintainable if the validity is contested in a prior ongoing suit, as per the Trade Marks Act, 1999.
In a case where issue of invalidity is raised or arises independent of a suit, prescribed statutory authority will be sole authority to deal with matter.
The central legal point established in the judgment is the application and interpretation of various provisions of the Trademarks Act, 1999 in determining the similarity of trademarks, dishonest adop....
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