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12 April 2024

Importance Of Substantiating User Claims Reiterated By The Trade Marks Registry

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The Trade Marks Registry, Delhi passed an order dated March 02, 2023 in favour of the Opposition No. 944407 filed by Burger King Corporation against the registration of the trade mark filed vide Application No. 2052255 by Mr. Virendra Kumar Gupta.
India Intellectual Property
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The Trade Marks Registry, Delhi passed an order dated March 02, 2023 in favour of the Opposition No. 944407 filed by Burger King Corporation against the registration of the trade mark filed vide Application No. 2052255 by Mr. Virendra Kumar Gupta (Trading as Burger King Family Restaurant).

The order reiterated the importance of substantiating the user claim for registration of marks, and refused to grant registration to the Applicant, holding that they had failed to provide any cogent evidence in support of their user claim of September 17, 2005, and that the evidence submitted is not able to prove the user claim in question.

Brief facts of the case:

The opposition was filed by Burger King Corporation (hereinafter "the Opponent"), which is a restaurant chain established in the year 1954, currently operating over 15,000 restaurants in more than 100 countries. The trade mark/trade name BURGER KING has been in continuous and extensive use since 1954 in over 122 countries, and is registered worldwide including in India since 1979 in various classes, including Class 29.

The Applicant

Virendra Kumar Gupta, trading as BURGER KING FAMILY RESTAURANT (hereinafter "the Applicant") is providing manufacturing and marketing services in respect of goods included in Class 29, and claims to have adopted the trade mark /BURGER KING FAMILY RESTAURANT on September 17, 2005, and using the same since then. However, the application was filed on November 11, 2010.

Contentions of the Parties:

Submissions of the Opponent in support of the opposition-

  • The Opponent is the prior and bonafide adopter, user and registered proprietor of the arbitrary and inherently distinctive trade mark BURGER KING and variations thereof such as , etc.,
  • Owing to the extensive use of the trade mark BURGER KING in India, even prior to the launch of the restaurant, in forms of advertisements, movie promotions, newspaper articles, etc., the said mark is exclusively associated with the Opponent and has garnered immense reputation and goodwill.
  • The Applicant's trade mark /BURGER KING FAMILY RESTAURANT is visually, phonetically, structurally and deceptively similar to the Opponent's registered mark BURGER KING, and has been filed in respect of allied and cognate goods. In fact, the use of the words FAMILY RESTAURANT in a smaller font as compared to the other words, is an intentional attempt to cause confusion in the minds of the consumers. Therefore, the use or registration of the subject mark will cause confusion and deception amongst the public, and has been adopted in bad faith to ride upon the goodwill and reputation of the Opponent.
  • The Opponent has obtained various decrees from various scourts in India to restrain third parties, including the Applicant from using their well-known trade mark BURGER KING. The Applicant failed to provide any explanation behind adoption of the impugned mark. The Hon'ble Delhi High Court also restrained the Applicant from infringing the mark and logo BURGER KING in respect of food outlets, restaurants, etc. and declared the adoption of the mark as "dishonest".

Submissions of the Applicant in support of the Application-

  • The Applicant is the honest adopter and user of the impugned mark BURGER KING FAMILY RESTAURANT/ since September 17, 2005. In view of the use since 2005, the mark has become distinctive and has gained reputation and goodwill in India.
  • The Opponent cannot claim monopoly over generic and common names such as BURGER or KING, and that no amount of use can bestow a secondary meaning to the said words.
  • The mark of the Opponent differs from their mark, and therefore, there is no likelihood of confusion and deception between them as claimed by the Opponent.

Court's observations and Order

On a side by side comparison of the marks, it is clear that from the point of view of a person with average intelligence person, the mark BURGER KING FAMILY RESTAURANT/ , wherein BURGER KING is the prominent part, is structurally, phonetically and visually similar to the Opponent's marks BURGER KING, , etc., and the words "FAMILY RESTAURANT" (in a smaller font) are not enough to create dissimilarity. While arriving at such a conclusion, reliance was placed on the case of M/S South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr.,1 wherein the Hon'ble Delhi High Court had re-stated the well-established principle that the two marks should not be examined with a microscope to highlight the differences between them. Further, the nature of goods offered are also similar thereby, causing confusion amongst the illiterate and uneducated consumers.

The invoices submitted by the Applicant date back to 1972, however, none of the invoices contain the impugned mark in question i.e., . Further, the said invoices were in the name of the partnership firm, whereas the Applicant is an individual proprietor who was added as a partner in the partnership firm only in the year 2014. Therefore, it was held that the Applicant had failed to provide any cogent evidence to substantiate the user claim of September 17, 2005. Thereafter, the application was also formally withdrawn by the Applicant (even though it was refused registration earlier) vide letter of withdrawal dated January 20, 2024, stating that the same is due to the settlement between the parties before the Hon'ble Delhi High Court in C.O.C (COMM-IPD-TM) 686/2022.

Conclusion

It is of paramount importance that the Applicant proves the user claim and does not file the application on a false and fabricated user date, as "honesty" in adoption is a pre-requisite for entitlement for registration. The said order also acts as a deterrent in cases wherein the Applicant might try to ride on the established goodwill and reputation of certain well-known marks by producing false and bogus claims, as was the case in the present matter.

Although, on the flipside, given that there were clear deficiencies in the user claim, and considering the obvious similarities between the marks, opposition could have been obviated if the Trade Marks Registry had thoroughly scrutinized the application at the examination stage itself, and refused it pre-publication. #

Footnote

1 FAO(OS) 389/2014

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

ARTICLE
12 April 2024

Importance Of Substantiating User Claims Reiterated By The Trade Marks Registry

India Intellectual Property

Contributor

S.S. Rana & Co. is a Full-Service Law Firm with an emphasis on IPR, having its corporate office in New Delhi and branch offices in Mumbai, Bangalore, Chennai, Chandigarh, and Kolkata. The Firm is dedicated to its vision of proactively assisting its Fortune 500 clients worldwide as well as grassroot innovators, with highest quality legal services.
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