In this post, we highlight the key aspects of the case and delve into why the Pune Court ruled against the global giant in this longstanding 13-year trademark dispute despite it being the first in the world market.
The case before Pune District Court:
Brief facts
The plaintiff company, incorporated under the laws of the State of Florida and operating over 15,000 restaurants globally, has used the trademark Burger King since 1954 and registered it in over 122 countries.
It became aware of the defendants’ trademark application for BURGER KING and their use of the same name for restaurants at two locations in Pune. The plaintiff filed a suit in 2011 after its cease-and-desist notice was rejected by the defendants, seeking permanent injunction, damages, rendition of accounts, and the relief of delivery up.
While the plaintiff launched its first Burger King restaurant in India in 2014 (and in Pune in April 2015), the defendants claim to have been operating their restaurant since 1989 and using the impugned name since 1992. The plaintiff secured an interim order of injunction in January 2012, through which the defendants were restrained from using the plaintiff’s registered trademark in India.
The plaintiff validly holds the trademark in food articles
The Court accepted that the plaintiff proved that it was validly holding the trademark in the name of Burger King in the field of hamburgers, chicken sandwiches, etc. In this regard, it was also pointed out that the defendants had withdrawn the application for cancellation of the plaintiff’s registration before the Intellectual Property Appellate Board (IPAB).
No infringement – oral and documentary evidence not considered
As to the evidence affidavit filed on behalf of the plaintiff, the defendants contended that the verification was not in accordance with Order 19 Rule 3 (1) of the Civil Procedure Code, 1908. Agreeing with this view, the Court held that it couldn’t be accepted as evidence to prove the contentions made in the plaint. The admissions of the witness during cross-examination were pulled up to show that he had no personal knowledge about facts, events, averments, etc., made in the evidence affidavit of the examination-in-chief. It was stated that he ought to have disclosed the source of his information, which he referred to in the affidavit. Moreover, while the suit was filed in 2011, the witness came in association with the plaintiff company in 2018.
The Court noted that the documents which the plaintiff had placed on record in support of its claim could not be proved. It was held that even if documents were exhibited following a previous Court order, the mere exhibition did not dispense with its proof. With this, the Court held that the plaintiff ‘miserably failed’ to prove that the defendants had infringed its trademark while running their restaurant in Pune.
Suit not instituted by authorised representatives
The plaintiff maintained that Cecilia Dempsey, being a principal officer of the plaintiff corporation at the time of the institution of the suit, was duly authorised to sign and verify the plaint. This authorisation was said to be accorded vide a power of attorney executed in February 2009. It was also averred that the amended plaint was signed and verified by Pankaj Pahuja, who was also authorised to do the same.
Finding merit in the defendants’ arguments, the Court noted that there was no resolution passed by the Board of Directors authorising said persons to sign and verify the plaint. Further, it was not proved that they were principal officers of the plaintiff company, and neither did they step into the witness box to clarify under which capacity and authority they had signed and verified the plaint.
Consequently, the Court held that the suit was not instituted by authorised persons in accordance with Order 29 Rule 1 of the Civil Procedure Code, 1908, and thus was not maintainable.
In view of the above and the absence of evidence regarding proof of infringement of the trademark and actual damage caused to it, the plaintiff was held not entitled to damages of INR 20 lakh and rendition of accounts.
Registration of trademark for restaurant service under class 42
As mentioned earlier, the plaintiff started providing services through a restaurant under its trademark Burger King in India in 2014, whereas the defendants had been using the said trademark to provide restaurant services since 1992. Considering that the plaintiff registered its trademark under class 42 pertaining to restaurant services in 2006 (after the enforcement of new Trademark Rules, which enabled the registration of service marks) and the defendants were prior users of the trademark, the Court opined that the plaintiff had no cause of action to seek relief of perpetual injunction.
Counter-claim dismissed
Due to lack of evidence, the Court also dismissed the counterclaim of the defendants, who sought to permanently restrain the plaintiff from using the name Burger King for their restaurant service in Pune, compensatory damages to the tune of INR 20 lakh along with costs.
Comments
Although this case had the potential to be a landmark ruling on trademark infringement, it was derailed by procedural lapses. As a result, the matter was argued solely on technicalities rather than on its substantive merits. The Hon’ble Court’s remark that the plaintiff had not even presented the registration certificate under Class 42 before 1991-1992 underscores the gravity of these oversights and highlights the Court’s awareness of the underlying facts.