Bombay HC restrains Pune eatery from using ‘Burger King’ name pending US firm’s plea, stays trial court order

A bench of Justices Atul S Chandurkar and Rajesh S Patil noted that the division bench of the high court will be the “last fact-finding court where the entire evidence will be looked into at the time of final hearing of First Appeal”. Therefore, it added that the interim relief granted by the trial court to the international chain was required to be continued until disposal of the appeal.

The bench found that the plaintiff US firm’s mark is ‘well known all over the world’ and in India it got a registered trademark ‘Burger King’ in 1979 and defendant Pune eatery adopted the trademark in 1992… The findings recorded (by Pune court) that the defendant is a prior user of trademark according to us is perverse, as plaintiff’s mark is registered outside India in the year 1954 and in India on April 25, 1979.

However, it clarified that observation in the order was limited to a present interim application by the US-based firm and asked the parties to preserve their records of business for the last ten years and for the assessment year/s henceforth for the court’s perusal. The court also admitted the firm’s appeal and expedited its hearing.

On August 26, the high court had passed an ad interim order and restrained the Pune-based eatery from using the name, pending the company’s interim application. It had continued the January 20, 2012 interim order of the Pune court till further orders “without prejudice to rights and contentions” of parties.

In an order passed earlier this year, Pune district court judge Sunil Vedpathak had said that the eatery had been using the name since 1992, and was the prior user of the trademark in question in India, much before the US company started doing business in the country and therefore, it had not violated the trademark.

Advocate Abhijit Sarwate, appearing for the Pune eatery, had argued that the place has been famous in the city since the 1990s. The eatery’s owners had sought an urgent hearing claiming that they had suffered for over a decade.

However, the corporation, in its appeal through advocate Hiren Kamod, had sought an interim injunction against the Pune joint till the final disposal of the case. It had claimed that there are over 400 Burger King joints in the country and six of these are in Pune. The appeal had claimed that the use of the name ‘Burger King’ by the Pune joint was causing the company losses, besides harm to its goodwill and reputation.

The firm had claimed that it started selling burgers under the ‘Burger King’ name in 1954 and had filed a suit in a trial court in 2011 seeking prohibitory injunction against the use of the trademark by the Pune eatery.

The US-based multinational corporation had said it discovered that a restaurant by the same name was operating in Pune in 2009, after which it immediately sent a cease-and-desist notice in June that year.