Pune court crowns local fast food joint in Burger King trademark war

After over a decade of litigation, a Pune Court recently dismissed a trademark infringement suit filed by United States' (US) fast-food giant Burger King Corporation against a Pune-based burger joint from using the iconic name ‘Burger King’ [Burger King Corporation v. Anahita Irani and Another]..The controversy arose after Burger King Corporation, which manages a global network of 13,000 fast-food restaurants, filed a suit against Anahita and Shapoor Irani, the owners of Pune's Burger King joints in Camp and Koregaon Park. The US Corporation, founded in 1954, had just entered the Indian market in 2014. After learning that a restaurant with the same name had been serving locals since 2008 with the trademark application No. 1209146, the corporation filed a suit claiming that the use their name by the Pune joint was causing irreparable harm to its brand reputation.The corporation sought permanent injunction from the court to restrain the Pune-based restaurant from using the 'Burger King' moniker.They claimed trademark infringement and sought damages and a permanent injunction..Judge Sunil Vedpathak decided in favour of the Pune restaurant, noting that the city's Burger King had been using the name and brand since 1992, long before the US corporation registered its trademark in India. The Court emphasised that while the international conglomerate had not operated under the name in India for almost 30 years, the Pune restaurant had regularly supplied its customers under the 'Burger King' brand, making its use of the name legitimate and authentic."With respect to relief of perpetual injunction is concerned, admittedly the plaintiff has started to provide services through restaurant under its trademark Burger King in India particularly in the year 2014 whereas since 1991-92 defendants are using the trademark Burger King to provide restaurant services. Even the plaintiff has not placed on record the registration certificate about registration of its trademark in India under class 42 prior to 1991-92. Admittedly plaintiff has registered its trade mark Burger King under class 42 pertaining to restaurant services is of 06.10.2006. So, considering the fact that defendants are prior user of trademark in question, I am of the opinion that the plaintiff has no cause of action to seek relief of perpetual injunction," the Court observed.The Court was of the view that the Pune establishment has been conducting their business for long with the said name without interruption. Therefore, they are the honest and prior user of the name and not the US corporation..The Pune joint too sought compensation of ₹20 lakh for the distress and harassment caused by the legal proceedings initiated by the US Corporation.But the Court turned down the same as well saying no sufficient material was adduced to satisfy claims of monetary relief."So far as claim of compensation / damages of ₹20,00,000 is concerned, except bare interested words that due to exparte order sought by the plaintiff against them, they had caused loss to their goodwill. He had to answer the questions of some customers including the plaintiff. As such, according to him, due to all these things, defendants had caused loss of Rs.20,00,000/-. However, there is no supporting evidence to prove the actual damages caused to defendants. Therefore, like plaintiff, defendants are also not entitled to claim of damages," the Court said while refusing any monetary relief to Pune establishment..Advocate SP Pathak appeared for the US corporation.Advocates AD Sarwate, Srushti Angane and Rahul Pardeshi appeared for the Pune joint..[Read Judgment]