Bombay High Court grants interim relief to Burger King in trademark suit filed against Pune-based restaurant

The Bombay High Court has granted an interim stay until the next hearing on a Pune trial court's order that permitted a Pune-based eatery to use the name - ‘Burger King’.

The bench of Justices AS Chandurkar and RS Patil was hearing a plea filed by the US giant Burger King against the usage of its trademark name by the Pune-based restraunt. The bench saw that there had been an injunction against the use of the name until the trial court had ruled in favour of the Pune eatery and retained that till September 6, the next date of hearing.

Burger King, one of the second largest fast food hamburger company in the world had started using the trademark since 1954 and had its first franchised restaurant in Asia in 1982 and there are currently over 1,200 of these restaurants in Asia. The company's first restaurant opened in New Delhi on November 9, 2014. After that some more outlets were opened up, including one at Pune in April 2015.

The issue in this case goes back to 2008 when the US firm in order to safeguard its prior statutory rights had issued a caveat when it saw the Pune-based food outlet, owned by Anahita and Shapoor Irani, had filed an application for the trademark "Burger King".

In 2009, the US company wrote to the owners of the eatery located at Camp and in Koregaon Park. However, they opposed it denying the US company's legal rights and insisted on using Burger King trademark for its restaurant and said that the US company's restaurants do not exist in India and therefore it cannot claim any common law rights.

The US giant's claim was that it has lot of good will in the market and any adoption or use of an identical mark or a deceptively similar mark by any trader would be dishonest, malafide and therefore contrary to law. According to the company, "the likely losses, damage and harm to its goodwill and business and reputation due to the unlawful acts of the Iranis are unquantifiable and irreparable."

The Iranis on the other hand said that there was no similarity in US giant's trade mark and the usage of their shop's name Burger King. There is no similarity in the design used for the usage of name Burger King, especially with regards to colour usage and that they used a crown between the words Burger King. The Iranis had submitted that they had been operating one of their shop since 1989 and using the name Burger King since 1992. The wife and husband said that they were not even aware of US giant's existence.

Later in 2011, the US based company had dragged Iranis to Pune court where a trial ensued with witnesses being brought to support the case.

The Iranis alleged that the Burger king trademark was registered for paper and paper products in 1979 and only as recently as May 2000 for sandwiches, burgers etc. So, the classes in which the goods are registered are different. They also alleged mental harassment and sought compensation of Rs 20 lakh.

The trial Judge, in an order passed on August 16, dismissed the US giant's contentions and said that the Pune based eatery 'Burger King' was operating even before the US burger joint opened shop in India and that the latter failed to prove the local food outlet had infringed its trademark.

The court while dismissing the 2011 suit, however, also did not accept the contention of monetary damages being sought by Iranis.