Trademark

Guest Post: An uncertain road lies ahead for ‘Burger King India’


burger kingUtkarsh Ravi, a 5th year student of RMLNLU, Lucknow, brings us his first entry to our SpicyIP Fellowship applicant series with this post looking into the on going Burger King trademark controversy in which it currently appears that the US fast food chain may just need to change its name if it wishes to continue operations in India! Read on for more. [Readers interested in finding out more details about our SpicyIP Fellowship applicant series can click here.]

An uncertain road lies ahead for ‘Burger King India’

By: Utkarsh Ravi

US based fast food chain Burger King suffered a major setback when the Delhi High court by the interim order dated November 26 allowed the Indian Company, ‘Burger King India ltd’ run by Its Manager, Shyam Hotchandani to approach the Intellectual Property appellate board, to get the trademark ‘Burger King ’ struck for non-use of the same. This happened even though The Burger King Corporation had approached the HC earlier, seeking an assurance that companies it had sued for trademark infringement will not approach lower courts for stay orders against its launch and the trademark dispute should be only decided by the High Court where the case is pending. Justice Manmohan Singh in the aforesaid order observed that “the parties shall maintain status quo with regard to registration of any legal proceedings.”

Mr. Shyam also stated that Burger King Corporation never intended to commence business in India because it offered beef. Although registered in 1979 in India, the US Company never used its trademark in India before, nor did it object to the registration of the Indian company under the Companies Act, 1956.

In August the global fast food chain had approached the High Court against Burger King India Ltd., alleging that the latter had sneakily registered this trademark. In relation to this, Burger King India had filed a counter claim.

Now Section 47 of the Trademarks Act, 1999 deals with the removal of trademarks from the register due to non-use. It puts forth two interesting scenarios regarding removal of a registered trademark from the trademark register. Under 47(1)(a), if it is proved that the trademark was not registered with a bona fide interest and was not put into use three months prior to the date of application then the trademark may be removed from the register.

Further, Clause 2 of the same section discusses about removal of trademark in case it is left unused for a period of at least five years. This period is calculated from the date of registration up to three months before the filing of application for removal.

In M/s Pops Foods Products (P) Ltd. v. M/s Kellogg Co., a trademark “POPS” belonging to the “Kellogg Company” possessing global recognition was directed to be removed by IPAB on the grounds of non-use for 22 years. The IPAB gave the following reasons:

  1. a) the respondent “Kellogg” applied for registration of their mark in 1989 as proposed to be used mark and had not used it till 2011.There was no bona fide intention of use
  2. b) there was no evidence of sale in the country from 1989 to 2011, the respondent had neither used nor shown any evidence of commencing the business.
  3. c) when the respondent itself admitted that the mark had not been used then the question of proof of non use was unnecessary.

In Corn Products Refining Co. v. Shangrila Food Products Ltd and Consolidated Foods Corporation vs Brandon and Company Private Ltd. the Supreme Court stated that the mere presence of a mark in the register does not by itself prove its use at all. The first use of the said mark is another factor that shall be considered.

In my opinion, since the American Burger King registered its trademark in 1979 in India, one could argue that this trademark should prevail over that of its Indian counterpart, which started its operations in 1996. However, from the cited law one can conclude that the registration of a trademark is not the sole criteria to decide a case on trademark infringement.

As pointed out above, according to section 47, if the trademark is not used three months prior to the date of application, it may be removed from the register. In addition, clause 2 of the same section talks about removal of trademark in case it is left unused for a period of at least five years. These sections may operate against the international fast food chain. Accordingly, the Indian company was allowed to approach the Board in Chennai to get the name “Burger King” struck for non-use. The Appellate Board’s decision is expected in three months.

If the Indian Burger King is successful, the international chain may have to rename its business. Even in Australia, Burger King is called Hungry Jack’s because the title ‘Burger King’ already belonged to a local rival when the U.S. chain arrived there in the 1970s. One can only guess what the name in India would be, suggestions anyone?

Swaraj Paul Barooah

Swaraj Paul Barooah

Follow @swarajpb Swaraj has a deep interest in IP, Innovation and Information policy, especially when they involve issues relating to Access to Knowledge, Innovation incentive mechanisms, Digital Freedoms, Open Access, Education, Health and Development. After his BA, LLB (hons) from Nalsar Univ of Law, Hyderabad, he went on to do his LLM from UC Berkeley in 2010. He is now pursuing his J.S.D. degree from UC Berkeley where he is focusing on Drug Innovation Policy and Access to Medicines. Aside from SpicyIP, he is also engaged as a consultant on various IP matters, and is a visiting faculty member at Nalsar Univ of Law. He is also in the process of starting up a New Delhi based "IP, Innovation & Information Policy" focused think-tank.

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