Delhi High Court: Prathiba M. Singh, J.*, after considering the long period, during which the ‘BURGER KING’ mark and its variations had been used for fast foods specially for Burgers, opined that the said mark had achieved the status of a ‘well-known mark’. Accordingly, the Court declared ‘BURGER KING’ as a ‘well-known’ mark.
Plaintiff, Burger King Company LLC was proprietor of mark ‘BURGER KING’, adopted in 1954. Plaintiff submitted that based on reputation of the mark ‘BURGER KING’, it should acquire a ‘well-known’ status and the mark had acquired a secondary meaning in respect of burgers, keeping in mind the extent of usage of the said device mark for the said purposes. In 2011, plaintiff came to know that defendants had started using the mark ‘BURGER KING’ both as a part of the trading style and as a mark.
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Plaintiff’s Trade Mark and Logo |
Defendants’ Trade Mark and Logo |
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BURGER KING |
BURGER KING |
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A cease-and-desist notice was sent to defendants by plaintiff’s in 2011, and in 2013, plaintiff’s again sent a letter as per which an additional six months’ time was given to phase out any residual usage of the products bearing the trade mark/name ‘BURGER KING’, but defendants did not send any reply.
Thereafter, a suit was filed by plaintiff against defendants and initially, an ex parte order of injunction was granted against defendants in 2014 and later the matter was referred to mediation, however the mediation was unsuccessful. This Court noticed that defendants had adopted an almost identical logo and an identical mark as that of plaintiff. It was observed that defendants’ website with the domain name www.burgerkingfamilyrestaurant.com showed the manner of use of the mark was identical and a complete imitation of plaintiff’s mark and logo.
This Court observed an uncanny resemblance between the two logos of the parties. This Court noted that defendants’ had filed an application under Section 124 of Trade Marks Act, 1999, raising an issue as to the validity of plaintiff’s marks ‘BURGER KING’ and the Single Judge had concluded that defendants themselves had sought registrations of the said marks and were therefore estopped from taking the plea that the trade mark ‘BURGER KING’ was generic. However, the Single Judge permitted defendants to use the name/mark ‘BURGER EMPEROR’.
This Court noted that the parties had agreed to settle their disputes in respect of the marks ‘BURGER KING’ and ‘BURGER EMPEROR’ on the following terms:
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Defendants shall not in any manner use the trade mark ‘Burger King’ and other Burger King formative marks of plaintiff or any other marks deceptively similar thereto, including
/Burger King Family Restaurant or logos 
and 
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Defendants were free to use the trade mark “BURGER EMPEROR”/and other “BURGER EMPEROR”/ formative marks as also logo/device
. Defendants shall be entitled to use the ‘BURGER EMPEROR’ marks for all food items, non-alcoholic drinks, aerated water, snacks, sauces, namkeen and other cognate/allied products.
This Court, after considering the long period, during which the ‘BURGER KING’ mark and its variations had been used for fast foods specially for Burgers, opined that the said mark had achieved the status of a ‘well-known mark’. Accordingly, this Court declared ‘BURGER KING’ as a ‘well-known’ mark.
[Burger King Company LLC v. Virendra Kumar Gupta, 2023 SCC OnLine Del 7735, decided on 29-11-2023]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Plaintiff: Raunaq Kamath, Aditya Gupta, Mukul Kochhar, Rahul Bajaj, Advocates
For the Defendants: Harish Vaidyanathan Shankar, CGSC; Shailen Bhatia, Raghav Bhalla, Srish Kumar Mishra, Alexander Mathai Paikaday, Krishnan V., Advocates
Buy Trade Marks Act, 1999 HERE
