By Chandan Mohanty, KIIT Law School, KIIT University, Bhubaneswar.

With the emergence of competitive market economy, manufacturers began to identify their products by certain symbol, marks or devices so as to distinguish their goods from similar goods manufactured and marketed by others.

Trademark law primarily serves two purposes:

  • it protects the public from confusion and deception by identifying the source and origin of particular products as distinguished from other similar products;
  • It protects the trademark owner’s trade and business as well as the goodwill which is attached to his trademark.[1]

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A trademark normally performs the following functions:

  • it identifies the goods of one trader and distinguishes them from goods sold by others;
  • it signifies that all goods bearing a particular trademark come from a single source;
  • it signifies that all goods bearing a particular trademark are of an equal level of quality; and
  • It acts as a prime instrument in advertising[2] and selling the goods.

As discussed earlier, the main objective of trademark laws are to provide marks which are not same or similar to the mark of another company in order to prevent the confusion. Trademarks help a consumer to differentiate between the original product and the counterfeit product. If marks of two companies are same then the consumers will get confused between the original product and the deceptively similar product.

Well known trademark

Well-known trademark means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of suck mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between goods or services and a person using the mark in relation to the first mentioned goods or services.[3]

Section 11(6) – Section 11(10) of the Indian Trade Marks Act, 1999, provides the relevant facts which the Registrar should consider while determining whether a trade mark as a well known trade mark.

Delhi High Court Case

Facts

Burger King Corporation (hereinafter the petitioner) is a Florida based fast food giant. It was set up in the United States (hereinafter US) in 1954. It made an entry into the Indian market on November, 2014 with its first outlet in Delhi and later on two more in Mumbai.

Burger King Restaurant Pvt. Ltd. (hereinafter the defendant) has been using the trade name i.e. the Burger King in India since 1996.

Though the Plaintiff has never entered the Indian economic market for the purpose of business, it has registered its mark in India in 1979 for 35 years. On the other hand the defendant has registered its mark in 1996.

After having sent out legal notices to several companies in India for using its name i.e. the Burger King, the Plaintiff approached the Delhi High Court and prayed for a permanent injunction against several parties in a trademark infringement suit. The Plaintiff alleged that the defendants were using the mark i.e. Burger King with mala fide intentions.

Mr. Sudhir Chandra, learned Senior counsel appearing on behalf of the plaintiff is that once the suit is pending before this Court where all the disputes of the parties are yet to be decided, the defendants are not supposed to initiate further proceedings in different form connecting with the similar cause of action.

Despite this pending proceedings before the Delhi High Court, the defendant had filed an application before the Registrar of Companies (hereinafter RoC), Mumbai seeking an order directing a change in corporate name of the Plaintiff under Section 16[4] of the Companies Act, 2013.

Contentions of the Defendant

The defendant has the following contentions:

  1. They have been using the name Burger King since 1996.
  2. The global brand must give up the disputed name as its trademark rights in India has expired on account of non-use.

Order of the Court

Hon’ble Justice Manmohan Singh issued an interim order permitting the Defendant to continue the rectification proceedings filed against the plaintiff in the Intellectual Property Appellate Board, Chennai with regard to the Burger King trademark. If the defendant is successful in the suit, the American Burger King Corporation will not be permitted to use the mark Burger King. Till the next date of hearing, the parties to the suit shall maintain status quo with regard to any fresh legal proceedings and not to proceed with any other matter.[5]

Conclusion

Property in a mark does not mean a few isolated sales under that mark, but it means that you had sold so much goods under it that the mark had come, in a certain market, to be associated with your goods that in the eye of the public the mark came to be associated with those goods.[6]

For a mark to be well known, its registration is not compulsory. The mere fact that people have knowledge about the mark and recognise it is enough to term a mark as a well known mark. Knowledge and recognition of the mark does not mean that it will be recognised by a majority number of people. It means that it is known to the targeted consumers.[7]

What is necessary is that the reputation should attach to the trade mark; it should appear that the public associated that trade mark with certain goods. The reputation with which we are concerned in the present case is the reputation of the trade mark.[8]

In the above mentioned judgements, importance of a well known trade mark is given. It provides that the mark should create its own identity in the market and the more it sales, the more it creates a reputation. However, according to Section 11(6)(i) of the Indian Trade Mark Act, the mark should be known or recognised in India.

A District Court in Pune, in a case in 2009, where the US based restaurant Burger King filed a petition against a local restaurant for its trade mark infringement, held that the mark used by the US based restaurant is a well known trade mark and it has also registered itself in India and therefore its Rights should be protected. The Hon’ble Court, hence, issued a restraining order against its owner.

From the above discussion it can be concluded that the mark used by the US based restaurant is a well known trade mark as it satisfies all the statutory requirements and hence protection should be provided by the Delhi High Court.

However, this present case also attracts the provisions of Section 47 of Indian Trade Mark Act, which provides for removal of a mark from the register and imposition of limitations on grounds of non-use.

Clause (a) and (b) of sub-section (1) of the Section 47 sets out two distinct alternative grounds for removal of a mark from the Register. Clause (a) requires that an applicant should satisfy the tribunal that the mark in suit was registered without any bona fide intention that it should be used in relation to the goods in respect of which it had been registered and that there has in fact been no bona fide use of the trade mark in relation to those goods . Under clause (b) the issue is somewhat different. The original intention of the registered proprietor is quite irrelevant and the applicant has to show that for five years and three months immediately preceding the application there has been no bona fide use of the mark in relation to the goods in respect of which it is registered.

In clause (b) bona fide use means real and genuine use of the mark and not a fictitious or colourable use and not a real or genuine use.[9]

Also in a leading case of Batt & Co. v. Dunnett[10], it was held that, if there was no real user before or after registration and no bona fide intention at the date of registration to use the mark, it could be expunged from the Register.

The proviso to the sub-clause (1) provides that the tribunal may refuse removal of the mark if it is shown that any proprietor had in fact made bona fide use of the trade mark for goods and services of the same description or associated goods or services.

But in this present case no such proprietor had made a bona fide use of the trade mark as mentioned above.

As the present case is still pending in the High Court, it is difficult to give a clear opinion about the future judgement. But the furtherance of justice, in my opinion, the Delhi High Court will judiciously decide this present case and provide the appropriate Rights the party who deserves it.

[1] VK Ahuja, Law Relating to Intellectual Property Rights (LexisNexis), 2013, p 224.

[2] JT McCarthy, Trademark and Unfair Competition, 1973, vol 1, p 86.

[3] VK Ahuja, Law Relating to Intellectual Property Rights (LexisNexis), 2013, p 228.

[4] Rectification of Company Name.

[5] Burger King India Pvt. Ltd. v. Vishanber Shewakramani (CS (OS) 3347/2014).

[6] Consolidated Food Case.

[7] Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239.

[8] Corn Products Refining Case.

[9] Venkateswaran, Trade Mark and Passing-off, vol.2, 5th Edition, 2010, pg 1578.

[10] Batt & Co. v. Dunnett, (1899) A.C. 428.

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