Trademark

SpicyIP Tidbit: Exciting things are happening at Burger King!


David Beckham in one of the commercials for Burger King

As Indians await the launch of the first ever Burger King outlet in India tomorrow, we discovered that the fast-food giant is caught in a trademark row with an Indian company by the name of Burger King India Ltd.

Burger King Corp., the US company, had filed an application in August this year to for a permanent injunction against a number of companies for trademark infringement; the matter is sub-judice. Even though it is only now that the Florida-based company is opening its outlets in India, it had registered ‘Burger King’ as a trademark in India in 1979 and had also renewed it subsequently.

Ahead of its launch in India, Burger King Corp., had moved the Delhi High Court yesterday, seeking an assurance that the companies which Burger King had sued for trademark infringement in the past would not seek stay orders against the launch of the Burger King store. Understandably, Burger King did not want to face any eleventh-hour hurdles in the opening of its store, given that there is already a lot of social media buzz and excitement generated around the launch of Burger King in India.

Burger King also pleaded that all the disputes surrounding its trademark should be brought only in the Delhi High Court, where the case is pending.

Justice Manmohan Singh granted relief to Burger King and in his order stated that, “the parties shall maintain status quo with regard to registration of any legal proceedings”.

Professor Shamnad, in an interview to Livemint, had opined, “The case will turn on who is the first to use trademark. The one who first used it gets the priority in terms of trademark usage. It’s quite possible that both parties have registrations, but registration is not absolutely conclusive as it can still be invalidated on the ground that the registration should not have been granted in the first place. The other possibility is that one party gets their trademark right and the other party gets to continue to use their trademark because they were honest concurrent users. India also recognizes trans-border reputation. Although you’re not operating in India, because of the fact that people travel abroad and see you, Indian consumers, at least of a certain class will be familiar with your name because of television, Internet, travelling abroad. If there is trans-border reputation, you can still stop someone even if you yourself haven’t opened in the country.”

In the case of Burger King, it would not be hard to prove ‘trans-border reputation’. This is because Burger King is a well-known brand in India and when one refers to Burger King, one invariably relates the name to the famous US company. Further, even before the store has opened in India, it is reported that Burger King India (Burger King Corp.’s India outlet) has already received pre-orders from customers who placed their orders online on eBay; this proves that people in India were already acquainted with the Burger King brand.

Trademark infringement or not, customers in India would have definitely been heartbroken if somebody were to bring a stay order restraining Burger King Ltd. from opening up a branch in India!

 

 

Devika Agarwal

Devika Agarwal

Devika is a Policy Analyst at Nasscom. She first started writing on Spicy IP in 2013 when she was awarded the Spicy IP Fellowship, which sparked her passion for writing on IP. Devika is interested in copyright and technology law.

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