IMPORTANT POINT
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.

JUDGMENT

Prathiba M. Singh, J. (Oral) - This hearing has been done through hybrid mode.

2. These are three cancellation petitions under Section 57 of the Trade Marks Act, 1999 and a suit under Section 134 of the Trade Marks Act, 1999 filed by Burger King Company LLC against Defendant No.1-Ms. Ranjana Gupta, Defendant No.2-Mr. Virendra Kumar Gupta and Defendant No. 3-M/s Burger King (hereinafter, `the Defendants'). The Defendants were operating under the name and trading style of "Burger King Family Restaurant". The litigation between the parties has a long and checkered history.

3. In addition to the relief of permanent injunction against the Defendants, in CS(COMM) 229/2018, Burger King Company LLC also prays for declaration of the mark `BURGER KING' as a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999, as per paragraph 38 (e) of the prayer clause in the plaint.

Declaration as a `Well-Known' Mark

4. The Plaintiff-Burger King Company LLC is the proprietor of the mark `BURGER KING', which it had adopted in the year 1954, and has expanded over the years to more than 100 countries. The Plaintiff avers that it owns over 4000 trade mark and service mark applications across the world. The Plaintiff first became the registered proprietor of the mark `BURGER KING' in India in the year 1989. The sales of the Plaintiff for the mark `BURGER KING' worldwide is stated to be more than 23,000 million dollars and a substantial amount of 960 million dollars has also been invested for promotional and advertising purposes.

5. The Plaintiff claims to operate more than 400 `BURGER KING' outlets in India. It is stated that the Plaintiff has a chain of 13,000 fast foods restraunts in around 92 countries. It operates its business through the domain name www.bk.com and www.burgerking.com, holding registrations since the year 1994. It claims to have 350 domain name registrations in its name for different regions. The registered trade marks of the Plaintiff for the mark `BURGER KING' in India are set out below:

6. It is further averred that the Plaintiff's rights in the `BURGER KING' mark have been recognized through various suits i.e., CS (COMM) 303/2022 titled `Burger King Corporation v. Swapnil', CS (COMM) 1662/2016 titled Burger King Corporation v. Michel David & Ors., CS (COMM) 1654/2016 titled Burger King Corporation v. Ali Akbar & Ors., etc.

7. Reliance is placed upon Hermes International v. Crimzon Fashion Accessories Pvt. Ltd., [2023 SCC OnLine 883], wherein the factors outlined by the Co-ordinate Bench under Section 11(6) of the Trade Marks Act, 1999, would be relevant for declaring the mark as well-known, are as follows:

"(i) The knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark.

(ii) The duration, extent, and geographical area of any use of that trademark.

(iii) The duration, extent, and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies.

(iv) The duration and geographical area of any registration of, or any application for registration of that trademark under the Trademarks Act to the extent that they reflect the use or recognition of the trademark.

(v) The record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record."

8. Further, this Court in Disruptive Health Solutions v. Registrar of Trade Marks, [C.A. (COMM.IPD-TM)] 133/2022, decision dated 8th July 2022] discussed test of distinctiveness of trade marks. The relevant extract of the said decision is as follows:

"10. The general rule regarding distinctiveness is that a mark is capable of being protected if either it is inherently distinctive or has acquired distinctiveness through secondary meaning