Who doesn’t love burgers? While burgers in the trademark case Burger King Co. v Anahita & Shapoor Irani excite us for the spicy IP discussions involved, courts in India also seem to express their love for whoppers by taking more than 14 years to settle the dispute. Last week, the Supreme Court bench comprising Hon’ble Justices BV Nagarathna and SC Sharma stayed an order of the Bombay High Court restraining a Pune-based eatery named “Burger King” (“petitioner”) from using its tradename, on a suit filed by the US Burger King Corporation (“Burger King US/respondent”). While doing so, the SC did not intervene in the High Court’s hearing and disposal of the appeal in the coming months.
The eatery owners argued that they had been using the name “Burger King” since 1992, which was over two decades before Burger King US entered the Indian market in 2014. Although the Pune commercial court held that Burger King US “miserably failed” to prove that the local eatery had committed trademark infringement, the Bombay High Court stayed this order and restrained the latter from using the trademark “Burger King”. In this backdrop, I examine the nature of the trademarks involved through the lens of identicality, prior use, and transborder reputation, whilst inclining towards the Pune eatery’s case of non-infringement/passing off under the Trademarks Act, 1999 (“the Act”).
Unwrapping the Case: How Burger King travelled from Pune to Delhi
Before the Pune court & Bombay HC, Burger King US argued that: firstly, its trademark not only enjoyed worldwide reputation and goodwill, but was also registered in India back in 1979; secondly, the Pune eatery adopted such trademark only in 1992, and hence cannot be termed its “prior user”; and finally, Burger King US’s exclusive right to use its registered trademark by virtue of Section 28 of the Act has been infringed by the eatery’s adoption of an identical trademark that causes both, consumer confusion and loss of business.
In response, the Pune eatery contended that there neither existed any similarity between both parties’ trademarks, nor did Burger King US provide its services under the contested trademark before 1992. The trademark infringement claim was dismissed by the Pune court owing to the hearsay nature of the evidence presented by the witness of Burger King US, which resulted in his inability to vouch for the submitted documents. However, this was deemed a technicality by the Bombay HC, which granted relief to the US burger giant until disposal of the Commercial First Appeal.
Exploring the Presented and Potential Trademark Arguments
1. Sections 29(2)(c) and 29(3): Consumer Confusion stemming from identical use
The relevant sections in this case, which formed the basis of the Burger King US’s argument, are sections 29(2)(c) and 29(3) of the Act. Let’s carefully examine the contents of these provisions.
i. Identicality of Trade Names
Section 29(2)(c) of the Act provides that when a person, not being a registered proprietor or permitted user, uses a mark which because of “its identity with the registered trademark and the identity of the goods or services covered by such registered trademark” is likely to cause confusion to the public, they are deemed to commit infringement. Further, sub-section 3 provides that the confusion on the part of the public is assumed in such cases.
In Mohan Meakin Ltd v AB Sugars Ltd (2013), wherein the mark “TALL MOM” was deemed identical to “OLD MONK” on grounds of phonetic similarity, despite the difference in product categories (former being “country liquor” and latter being “Indian Made Foreign Liquor”), the Delhi HC found infringement under section 29(2)(c), while presuming consumer confusion. In the instant case, not only do both parties share an identical tradename, i.e. “Burger King”, they provide identical services of selling burgers, fries, and wraps/rolls at their restaurants and through delivery.
ii. Logos/Visual Representations of Trade Names
Another interesting factor is the representation of this tradename by both Parties. The Pune-based eatery contended that there exists “absolute dissimilarity” between its usage of the name “Burger King” from how the respondent uses it. While the former adds a crown between both words, Burger King US represents the name between two semi circles of red and yellow colors. In Renaissance Hotel Holdings v B Vijaya Sai (2022) [discussed here], the Supreme Court found the words “Renaissance” and “Sai Renaissance” visually, as well as phonetically similar. However, the visual similarity was only a supplementary point in the Court’s finding of infringement which was primarily based on the identicality of the business names, and their registration under the same classes.
Additionally, in Pratibha M. Singh v Singh & Associates (2014), despite the defendant’s registration of its logo containing the tradename, Hon’ble Justice Endlaw directed it to add its founder’s name under the logo to avoid any deception for consumers. A similar approach was adopted by the Delhi High Court against a Canadian law firm named “Singh + Singh LLP” [discussed by Adyasha here]. Hence, where both parties have registered identical names for provision of identical services, visual representation is rarely a focus. The same goes for the instant case. In fact, in contrast to the defendants in both the above cases, the Pune eatery has not registered its logo with the Trademarks Registry.
While this twin-analysis favors Burger King US, the question of “prior use” [see below] becomes a key determinant in assessing infringement.
2. Does the Pune eatery enjoy Prior Use of “Burger King”?
As highlighted by Burger King US, it has registered its trademark “Burger King” in several jurisdictions including India over the years. While its first registration for the brand name in India (1979) was under Class 16 [Paper & Paper Products], the trademark was registered w.r.t. to restaurant services only in 2006. Relying on this observation, the Pune court found the local eatery to be a prior user of the contested trademark. It becomes critical to ask whether prior use in the worldwide market suffices in such cases.
i. Applying Section 34 on Prior Use
Decided on a similar factual matrix in Syed Ghaziuddin v PepsiCo (2019), a Hyderabad court noted that while PepsiCo secured trademark registration for manufacturing soft drinks back in 1985, it did not initiate such activity until 2003. On the other hand, Hyderabad-based Magfast Beverages started manufacturing their drink under the name “Mountain Dew” in 2000. Relying on Syed Mohideen v P. Sulochana Bai (2016) on priority in adoption superseding subsequent registration w.r.t. common law rights, the Court held in favor of Magfast Beverages here.
While Section 34 of the Act codifies the principle of prior use, it was interestingly not discussed by the Pune or Hyderabad courts. The provision restricts the proprietor/registered user of a trademark from interfering with the use of an identical mark in relation to which the person concerned enjoys continuous use from a date prior:
“(a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;”whichever is earlier.
In the instant case, the Pune eatery’s use of “Burger King” predates both, Burger King US’s use (2014) and registration (2006) of such mark in India. Hence, I agree with the Pune Court’s finding of the former being identified as the prior user of such mark.
ii. Transborder Goodwill & Reputation
Flowing from the SC judgment in NR Dongre v Whirlpool (1996), it is acknowledged that when a trademark’s reputation & goodwill transcends geographies, it must be safeguarded from infringement/passing off by individuals/entities who seek to ride on these values. While this aspect was not analysed in detail by the Pune Court and Bombay HC, it was pressed upon by Burger King US given its incremental gross sales and advertising expenses on building reputation (some of the factors highlighted in Laverana Gmbh).
It cannot be denied that Burger King US enjoys immense popularity and goodwill worldwide, reflected by more than 400 outlets in India alone. In fact, the first outlet in Asia commenced operations back in 1982, a decade before the Pune eatery was opened. However, I think some other factors demand attention here: firstly, in contrast to the Whirlpool, Laverana, Toyota v Prius, or Mountain Dew cases, the Pune eatery is more of an “experience-focused”, rather than “product-focused” entity. In my understanding, the burgers made here are not packaged/branded distinctly under the tradename; rather, the eatery enjoys its reputation as one of the older burger cafes in Pune. Secondly, the eatery is located only in Pune, against trademark-infringing products that may be delivered all over the country. It is difficult to imagine Pune locals confusing between a fast-food chain and a local café.
Concluding Remarks
To conclude, although the Pune court missed out on discussing several intriguing aspects of trademark law in this case, they will shape the discussion going forward. While the identicality of trademarks seems to tilt the balance in favor of the global, mighty Burger King, prior use by the Pune eatery coupled with the difference in consumer expectations/use case give the debate an interesting turn. As a consumer, my motivation towards ordering from/dining at a Burger King outlet would be different from going to a local café. However, trademark cases aren’t that simple, after all!
The author would like to thank Swaraj & Praharsh for their comments.