Full Judgment Text
$~1 to 4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of Decision:-29 November, 2023.
+ C.O. (COMM.IPD-TM) 686/2022 & I.A. 10228/2022
BURGER KING COMPANY LLC ..... Petitioner
Through: Mr. Raunaq Kamath, Mr. Aditya
Gupta, Mr. Mukul Kochhar, Mr.
Rahul Bajaj, Advs. (M.
9873941450)
versus
VIRENDRA KUMAR GUPTA & ANR. ..... Respondents
Through: Mr. Shailen Bhatia & Mr Raghav
Bhalla, Advs.
Mr. Harish Vaidyanathan Shankar,
CGSC, with Mr. Srish Kumar
Mishra, Mr. Alexander Mathai
Paikaday, Mr. Krishnan V. Advs.
(M. 9810788606)
2 WITH
+ CS(COMM) 229/2018, I.As. 16492/2019 & 10536/2022
BURGER KING COMPANY LLC ..... Plaintiff
Through: Mr. Raunaq Kamath, Mr. Aditya
Gupta, Mr. Mukul Kochhar, Mr.
Rahul Bajaj, Advs.
versus
RANJANA GUPTA & ORS ..... Defendants
Through: Mr. Shailen Bhatia & Mr Raghav
Bhalla, Advs.
3 WITH
+ C.O. (COMM.IPD-TM) 709/2022 & I.A. 11582/2022
BURGER KING COMPANY LLC ..... Petitioner
Through: Mr. Raunaq Kamath, Mr. Aditya
Gupta, Mr. Mukul Kochhar, Mr.
Rahul Bajaj, Advs.
versus
VIRENDRA KUMAR GUPTA & ANR. ..... Respondents
Through: Mr. Shailen Bhatia & Mr Raghav
C.O. (COMM.IPD-TM) 686/2022 & connected Page 1 of 23
Signature Not Verified
Digitally Signed
By:RAHUL
Signing Date:08.12.2023
13:16:57
Bhalla, Advs.
Mr. Harish Vaidyanathan Shankar,
CGSC, with Mr. Srish Kumar
Mishra, Mr. Alexander Mathai
Paikaday, Mr. Krishnan V. Advs.
(M. 9810788606)
4 AND
+ C.O. (COMM.IPD-TM) 710/2022 & I.A. 11586/2022
BURGER KING COMPANY LLC ..... Petitioner
Through: Mr. Raunaq Kamath, Mr. Aditya
Gupta, Mr. Mukul Kochhar, Mr.
Rahul Bajaj, Advs.
versus
VIRENDRA KUMAR GUPTA & ANR. ..... Respondents
Through: Mr. Shailen Bhatia & Mr Raghav
Bhalla, Advs.
Mr. Harish Vaidyanathan Shankar,
CGSC, with Mr. Srish Kumar
Mishra, Mr. Alexander Mathai
Paikaday, Mr. Krishnan V. Advs.
(M. 9810788606)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. These are three cancellation petitions under Section 57 of the Trade
Marks Act, 1999 and a suit under Section 134 of the Trade Marks Act, 1999
filed by Burger King Company LLC against Defendant No.1- Ms. Ranjana
Gupta, Defendant No.2- Mr. Virendra Kumar Gupta and Defendant No. 3-
M/s Burger King (hereinafter, ‘the Defendants’ ). The Defendants were
operating under the name and trading style of “Burger King Family
Restaurant” . The litigation between the parties has a long and checkered
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history.
3. In addition to the relief of permanent injunction against the
Defendants, in CS(COMM) 229/2018, Burger King Company LLC also
prays for declaration of the mark ‘BURGER KING’ as a well-known mark
under Section 2(1)(zg) of the Trade Marks Act, 1999, as per paragraph 38
(e) of the prayer clause in the plaint.
Declaration as a ‘Well-Known’ Mark
4. The Plaintiff- Burger King Company LLC is the proprietor of the
mark ‘BURGER KING’, which it had adopted in the year 1954, and has
expanded over the years to more than 100 countries. The Plaintiff avers that
it owns over 4000 trade mark and service mark applications across the
world. The Plaintiff first became the registered proprietor of the mark
‘BURGER KING’ in India in the year 1989. The sales of the Plaintiff for the
mark ‘BURGER KING’ worldwide is stated to be more than 23,000 million
dollars and a substantial amount of 960 million dollars has also been
invested for promotional and advertising purposes.
5. The Plaintiff claims to operate more than 400 ‘BURGER KING’
outlets in India. It is stated that the Plaintiff has a chain of 13,000 fast foods
restraunts in around 92 countries. It operates its business through the domain
name www.bk.com and www.burgerking.com , holding registrations since
the year 1994. It claims to have 350 domain name registrations in its name
for different regions. The registered trade marks of the Plaintiff for the mark
‘BURGER KING’ in India are set out below:
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6. It is further averred that the Plaintiff’s rights in the ‘BURGER KING’
mark have been recognized through various suits i.e ., CS (COMM)
303/2022 titled ‘Burger King Corporation v. Swapnil’ , CS (COMM)
1662/2016 titled Burger King Corporation v. Michel David & Ors. , CS
(COMM) 1654/2016 titled Burger King Corporation v. Ali Akbar & Ors .,
etc.
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7. Reliance is placed upon Hermes International v. Crimzon Fashion
Accessories Pvt. Ltd. [2023 SCC OnLine 883] , wherein the factors outlined
by the Co-ordinate Bench under Section 11(6) of the Trade Marks Act,
1999, would be relevant for declaring the mark as well-known, are as
follows:
“(i) The knowledge or recognition of that trademark in
the relevant section of the public, including knowledge
in India obtained as a result of promotion of the
trademark.
(ii) The duration, extent, and geographical area of any
use of that trademark.
(iii) The duration, extent, and geographical area of any
promotion of the trademark, including advertising or
publicity and presentation, at fairs or exhibition of the
goods or services to which the trademark applies.
(iv) The duration and geographical area of any
registration of, or any application for registration of
that trademark under the Trademarks Act to the extent
that they reflect the use or recognition of the trademark.
(v) The record of successful enforcement of the rights in
that trade mark, in particular the extent to which the
trade mark has been recognised as a well-known trade
mark by any court or Registrar under that record.”
8. Further, this Court in Disruptive Health Solutions v. Registrar of
Trade Marks [C.A. (COMM.IPD-TM)] 133/2022, decision dated 8 th July
2022] discussed test of distinctiveness of trade marks. The relevant extract
of the said decision is as follows:
“10. The general rule regarding distinctiveness is that a
mark is capable of being protected if either it is
inherently distinctive or has acquired distinctiveness
through secondary meaning. In the spectrum of
distinctiveness, the first category of marks is of
arbitrary, fanciful and invented marks which is of
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absolute distinctiveness. Similarly, suggestive marks can
also be registered due to their inherent distinctiveness.
Descriptive marks can be registered as trademarks
provided secondary meaning is established. Insofar as
descriptive marks are concerned, just because some
portion of the mark may have some reference or
indication as to the products or services intended for,
the same may not be liable to be rejected straightaway.
In such a case, the merits of the marks would have to be
considered along with the extent of usage. Other
registrations of the applicant would also have a bearing
on the capability of the mark obtaining registration. The
owner of a mark is always entitled to expand the goods
and services, as a natural consequence in expansion of
business.”
9. On the strength of averments in the plaint, and the documents placed
on record, and the reputation of the ‘BURGER KING’ mark, it is clear that
it should acquire a ‘well-known’ status. The mark has acquired a secondary
meaning in respect of burgers, keeping in mind the extent of usage of the
said device mark for the said purposes. Therefore, the ‘BURGER KING’
mark and its variations deserve to be protected.
10. In the year 2011, the Plaintiff came to know about the Defendants
mark bearing registration numbers 2052257, 2052256, 2052255 in class 43,
30 and 29 respectively. It is averred that the Defendants in the present case
had started using the mark ‘BURGER KING’ both as a part of the trading
style and as a mark which led to the filing of CS(COMM) 229/2018. It is
claimed that the Defendants also operates its business through the website
with the domain name www.burgerkingfamilyrestaurant.com.
11. A cease and desist notice was sent to the Defendants by the Plaintiff’s
nd
in November, 2011. The Plaintiff’s again sent a letter dated 2 April, 2013,
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as per which an additional 6 months’ time was given to phase out any
residual usage of the products bearing the trade mark/name ‘BURGER
KING’, but the same was never replied to.
12. Thereafter a suit CS (OS) No. 2200 of 2014 was filed by the Plaintiff
against the Defendants, which was later renumbered as CS(COMM) 229 of
2018. Initially, an ex parte order of injunction was granted against the
Defendants on 25th July, 2014, in the following terms:
“I have heard counsel for the plaintiff and perused the
plaint, application and the supporting documents. I am
satisfied that this is a fit case for grant of ex parte ad
interim injunction. Accordingly, till the next date of
hearing, defendants, their servants, agents,
distributors, stockists and representatives are
restrained from using the trademark 'BURGER KING'
or any other deceptively similar trade mark.”
13. Thereafter the matter was referred to mediation, however the
mediation was unsuccessful. The Defendants filed their written statement
and claimed prior use of the mark ‘Burger King’ since 1970. It was also
stated that the Defendant No.2 was using the firm name ‘BURGER
EMPEROR’ and ‘Burger King Family Restaurant’. The Defendants also
attempted to give an explanation for use of the mark ‘BURGER
EMPEROR’ claiming derivation of the word ‘BURGER’ from the names of
the family members.
14. After hearing detailed submissions, the injunction application was
decided by a detailed judgment on 24th September, 2018. The Court noticed
that the Defendants had adopted an almost identical logo and an identical
mark as that of the Plaintiff. It was also observed that the Defendants
website with the domain name www.burgerkingfamilyrestaurant.com shows
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the manner of use of the mark is absolutely identical and a complete
imitation of the Plaintiff’s mark and logo. The reputation and the goodwill
of the Plaintiff was also recorded. The competing logos which were being
used are set out below:
Plaintiff’s Trade Mark and Logo Defendants' Trade Mark and Logo
BURGER KING BURGER KING
15. In the said decision, the Defendants had also placed on record various
invoices which they claim dated back to the year 1970 to show use of the
mark ‘BURGER KING’. However, the Court had come to a conclusion that
though the Defendants had obtained various trademark registrations,
copyright registrations and user invoices etc. the claim of user since the year
1970 was to be established at trial.
16. The Court observed that there was an uncanny resemblance between
the two logos of the parties and had accordingly, directed that the
Defendants shall stand restrained from using the mark ‘BURGER KING’ as
also the infringing logo. However, in the operative portion it was
observation that the Defendants had adopted the mark ‘BURGER
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EMPEROR’ and had applied for the registration of the same. The Court had
then permitted the Defendants to use the name/mark ‘BURGER
EMPEROR’. The relevant portion of the said judgment is set out below:
“17. In this background, this Court has to take a view
on the balance of probabilities in respect of adoption
of use of the mark and logo “Burger King”. The first
and the foremost fact that strikes the Court is an
uncanny resemblance between the two logos. The
Plaintiff has shown registration of these logos in some
registrations dating back to 2000 (for example in EI
Salvador) and in 2003 in Germany. There is no
document of the Defendant showing use of the crescent
shaped logo prior to 2000. The trademark registrations
of these countries are easily verifiable online and have
not been seriously challenged. The said registrations of
the respective statutory authorities of those countries
cannot be ignored. The pleadings of the Plaintiff ought
to have been clearer on this aspect
18. The Defendants have not been able to show prior
use of the logo. For the time being, since the logos are
almost identical, the Plaintiff is held to be the prior
user of the logo. Thus, the use by the Defendants of an
imitative logo is violative of the Plaintiff’s right.
19. Insofar as the adoption of the trademark “Burger
King” is concerned, the explanation given by the
Defendants in their written statement is `fantastic’ to
say the least. The manner, in which the Defendants
claim coinage of the mark, by using the first letters of
the names of various family members shows that the
same is a completely dishonest attempt to defend
something which is indefensible. The explanation for
the coinage of the mark makes it clear that the
Defendants are trying to adopt a process of reverse
deduction to explain use of the mark Burger King. Such
an explanation, if accepted, would lead to trivializing
trademark rights.
20. The plaint is clear that the mark “Burger King”
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was adopted in 1954 in the US, and thus, the evidence
of trans-border reputation, which is mentioned in the
plaint, cannot be rejected at this stage when the trial is
yet to commence. The list of outlets in various airports
thus shows that travellers from India would have had
knowledge of Burger King. It cannot be disputed that
there are thousands of outlets of the Plaintiff across the
world. The Defendants’ explanation for the adoption
being extremely unimaginative and the identical logo
being an indication of dishonest adoption, the
injunction already granted is liable to be confirmed.
The manner in which the Defendants are soliciting
enquiries and are wanting to give franchisees for their
outlets under the name Burger King poses a clear and
imminent threat for extreme dilution of the mark.
21. The present case being a commercial suit, evidence
can be recorded by means of a Local Commissioner
and to disturb the status quo that has been preserved
since 2014 would be inequitable to the rights of the
Plaintiff which claim to enjoy a global reputation.
22. It is accordingly directed that the injunction
granted on 25th July, 2014 shall stand confirmed. The
Defendants are thus injuncted from using the mark
BURGER KING as also the infringing logo in respect
of their food outlets or restaurants, in any manner
whatsoever. The Defendants are also restrained from
granting any franchisees or opening any new outlets
under any name containing the mark BURGER KING.
This, however, does not bar the Defendants from
using the mark/name Burger Emperor .”
17. The above judgment has been challenged by the Defendants in
FA(OS)(COMM) 276/2018. The said appeal is stated to be pending. It is to
be noted that the Plaintiff had not challenged the said judgment and as on
date, therefore, as per ld. Counsel for the defendants, they are using the mark
‘BURGER EMPEROR’.
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18. The Defendant’s filed an application under Section 124 of Trade
Marks Act,1999, raising an issue as to the validity of the Plaintiff’s marks
‘BURGER KING’.
19. It was the case of the Defendants that the Plaintiff has not used the
said mark and neither had the intention to do so at the time of filing of the
present suit, and had, thus, claimed that the marks of the Plaintiff were
prima facie liable to be cancelled/rectified. The Plaintiffs submitted that the
Court has to be satisfied that the plea regarding the invalidity of registration
of the trademark is prima facie tenable, in view of sub clause (b) (ii) of
Section 124(1) of the Act.
20. The Court observed that pre-launch and preparatory activities before
the launch of the product would amount to ‘use’ under the Act and as the
Plaintiff’s had entered into an agreement for supply of glass bottles in
respect of its trade mark the same will fall under the category of ‘use’. In
addition, it was argued by the Defendants that the mark ‘BURGER KING’ is
a generic mark and common to the trade, therefore the same cannot be
registered.
21. This stand of the Defendants was considered by the ld. Single Judge
in a decision dated 6th March, 2023 where the ld. Single Judge arrived at the
finding that the Defendants themselves had sought registrations of the said
marks and are therefore estopped from taking the plea that the trademark
‘BURGER KING’ is generic.
22. The plea of the Defendants that the mark ‘BURGER KING’ is prima
facie liable to be cancelled was, thus, rejected by the ld. Single Judge. The
observations in the said order are as under:
“30. A perusal of the trademark applications of the
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defendants shows that the defendants have themselves
sought for registration of the said marks and therefore,
in light of the dicta of the aforesaid judgments, the
defendants are estopped from taking a plea that the
trademark BURGER KING is generic and common to
trade. Therefore, reliance placed on behalf of the
defendants on National Bell (supra) is misplaced.
31. In my view, the defendants have failed to
place any material in support of their submission that
the trademark ‘BURGER KING’ is either generic or
common to trade. It cannot be denied that the plaintiff
has used the trademark ‘BURGER KING’ since 1954
and holds registrations for the said mark in over 122
countries including India. The Division Bench of this
Court in M.A.C Personal Care Pvt. Ltd. & Anr. v.
Laverana GMBH and Co. K.G. & Anr., 2016 SCC
OnLine Del 530, observed that the registrations of the
plaintiff in multiple jurisdictions create an even
stronger presumption that the plaintiff’s trademark has
reputation in the market. It was further observed that if
a trademark is registered in favour of the plaintiff in a
jurisdiction abroad, the said fact suggests that the
mark of the plaintiff is distinctive and hence, the same
is capable of distinguishing the plaintiff’s trademark
from those of other businesses.
32. In view of the discussion above, I am of the
considered view that the plea raised by the defendant
with regard to the invalidity of registrations granted in
favour of the plaintiff in respect of the trademark
BURGER KING and other formative marks, is prima
facie not tenable. There is no reasonable prospect of
the defendants succeeding in the cancellation petitions
filed by them. Therefore, no issue with regard to
validity of the registrations of trademarks of the
plaintiff is liable to be framed in the facts and
circumstances of the present case.”
th
23. This decision dated 6 March, 2023 was carried in appeal by the
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Defendants by way of LPA No. 301/2023 which was withdrawn vide order
th
dated 18 April, 2023 with liberty to file an SLP. The Defendants then filed
th
SLP Civil No. 17831/2023 which was dismissed on 14 August, 2023.
24. Thus, the decision of the ld. Single Judge dated 6th March, 2023 has
now attained finality and all the cancellation petitions filed by the
Defendants against the Plaintiff’s mark ‘BURGER KING’ are no longer
entertainable.
th
25. On 20 November, 2023, when the matters were listed for hearing,
certain proposals were made by the ld. Counsel for the Plaintiff. ld. Counsel
for the Defendants sought some time to consider the proposals made by the
Plaintiff.
26. Today, the ld. Counsel for the Defendants have reverted and the
parties have agreed to settle their disputes in respect of the marks ‘BURGER
KING’ and ‘BURGER EMPEROR’ on the following terms:
i. The Defendants shall not in any manner use the trademark
‘Burger King’ and other Burger King formative marks of the
Plaintiff or any other marks deceptively similar thereto,
including
/ Burger King Family
Restaurant or the following logos:
.
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The Defendants shall not challenge the registrations or
applications of the above stated marks in favour of the Plaintiff.
ii. The Defendants shall henceforth be free to use the trademark
“BURGER EMPEROR” / and other “BURGER EMPEROR/”
formative marks as also the following logo/device mark:
( hereinafter `Burger Emperor’ marks )
iii. The Defendants shall be entitled to use the ‘BURGER
EMPEROR’ marks without any hindrance or objection from the
Plaintiff. The Defendants shall be entitled to use the ‘BURGER
EMPEROR’ marks for all food items, non-alcoholic drinks,
aerated water, snacks, sauces, namkeen and other cognate/allied
products.
iv. The Defendants are the proprietors of the Trademark/device
Burger Emperor bearing registration number 2052259 and
2052258 in Class 30 for the following device/logo mark:
The Plaintiff shall withdraw the rectifications filed against the
said marks.
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v. The Defendants shall also be entitled to use the following
device/logo mark bearing registration number 2467850 in Class
30 registered in favour of the Defendant.
The Plaintiff shall not file any proceedings challenging the use
or registration of the said mark.
vi. The Defendants are also the owner of the following artistic
work bearing number A-114976/2016:
The Defendants shall be entitled to use the same without any
objection or hindrance. The Plaintiff shall not file any
proceedings challenging the use or registration of the said
artistic work.
vii. The Defendants shall be entitled to use the trademark ‘Taste
King’ without any objection or hindrance and will be entitled to
seek registration. The Plaintiff shall withdraw all oppositions
thereto.
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viii. The Plaintiff agrees to not press for the relief of damages or
accounts of profits as prayed in the commercial Suit bearing
number CS(COMM) 229 of 2018 or in CO(COMM-IPD-TM)
709 of 2022 and CO(COMM-IPD-TM) 710 of 2022.
ix. All oppositions/rectifications as mentioned in Annexure- A
would stand withdrawn in accordance to this agreement.
x. The Defendants shall withdraw its appeal being FAO (OS)
(COMM) 276 of 2018.
27. The cancellation petitions are dismissed as withdrawn in the above
terms. All the parties and anyone acting for or on their behalf shall be bound
by the terms of settlement. Mr. Virender Kumar Gupta who is the Defendant
No.2 in the present case is also present in the Court today.
28. The present order be communicated to the Registrar of Trademarks
for the purposes of ensuring that the directions given in the above terms of
withdrawal of trademark registrations are duly reflected on the website.
29. The complete list of various proceedings pending between the parties
and the action to be taken pursuant to the above settlement is annexed as
ANNEXURE A to the present order. Both parties shall take the necessary
steps within two weeks, in respect of the said proceedings, except the suit
and the cancellation petitions which are disposed of by the present order.
The suit is accordingly decreed in the above terms.
30. However, for the declaration of the mark ‘BURGER KING’ as a well-
known mark, considering the long period, during which the ‘BURGER
KING’ mark and its variations have been used for fast foods specially for
Burgers, and the factors outlined above, the said mark has achieved the
status of a ‘well-known mark’ . Accordingly, a decree of declaration, is
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liable to be passed declaring the ‘BURGER KING’ mark as a ‘well-known’
mark in terms of paragraph 38 (e) of the prayer in the Plaint.
31. Decree sheet be drawn accordingly.
32. All pending applications between the parties are disposed of.
PRATHIBA M. SINGH
JUDGE
NOVEMBER 29, 2023
SDS/KS
th
(corrected & released on 7 December, 2023)
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ANNEXURE A
CS(COMM) 229 of 2018
LIST OF MATTERS BETWEEN THE PARTIES
S. No. Forum Suit Title Nature Status Actions to be
taken
1.
2.
3.
Hon’ble
Delhi High
Court
Burger King Corporation
vs Ranjana Gupta & Ors.;
CS (Comm) 229 of 2018
before the Delhi High
Court
Suit against use
of BURGER
KING and
BURGER
EMPEROR by
Defendant
Status:
Application
under Order 6
Rule 17 to be
considered
Decreed in
terms of
order
th
dated 29
November
2023.
Ranjan Gupta & Ors. Vs
Burger King Corporation;
FAO (OS) (COMM) 276 of
2018 before the Delhi High
Court
Defendant’s
appeal against
order dated
September 24,
2018 passed in
CS(Comm) No.
229 of 2018
Status: The
stay
application
has been
withdrawn
and appeal
has been
placed in the
‘Finals’
category for
final
arguments
Defendants to
withdraw this
appeal in terms
of the order
th
dated 29
November 2023.
Burger King Corporation
vs Virendra Kumar Gupta
& Anr.; C.O. (COMM.IPD-
TM) 686/2022
Plaintiff’s
rectification
petition against
the Defendant’s
trademark
BURGER KING
FAMILY
RESTAURANT
Status: The
stay
application in
the
rectification
petition has
been allowed.
Dismissed as
withdrawn as
per order dated
th
29 November
2023
4. Hon’ble
Delhi High
Court
Burger King Corporation
vs Virendra Kumar Gupta
& Anr.; C.O. (COMM.IPD-
TM) 709/2022
Plaintiff’s
rectification
petition against
the Defendant’s
trademark
BURGER
EMPEROR
Status: The
stay
application in
the
rectification
petition is to
be considered.
Dismissed as
withdrawn as
per order dated
th
29 November
2023
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5. Burger King Corporation
vs Virendra Kumar Gupta
& Anr.; C.O. (COMM.IPD-
TM) 710/2022
Plaintiff’s
rectification
petition against
the Defendant’s
trademark
BURGER
EMPEROR
Status: The
stay
application in
the
rectification
petition is to
be considered
Dismissed as
withdrawn as
per order dated
th
29 November
2023
6. Virendra Kumar Gupta
trading as M/S Burger King
V/s Union of India through
the Secretary & Ors.;
W.P.(C)-IPD33/2022
Writ petition filed
by Defendant
seeking to file an
opposition
against the
Plaintiff’s
trademark
registration no.
IRDI – 4771744
for the mark
BURGER KING
Status: The
pleadings have
not yet been
completed.
Matter is
listed before
Joint
Registrar for
completion of
pleadings.
To be withdrawn
as per order
th
dated 29
November 2023
7. Varanasi
District
Court
Taste King vs Burger King
Corporation; Suit No. 26 of
2016 before the District
Court, Varanasi
Suit for
groundless
threats filed by
the Defendant
against the
Plaintiffs and suit
for injunction of
copyright
Status:
Application
for summary
judgment &
interim
injunction is
pending
adjudication
To be withdrawn
by the Defendant
as per order
th
dated 29
November 2023
8. Calcutta
High Court
Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/16/2015/TM/CH)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
828558
Status:
Transferred
from the IPAB
to Calcutta
High Court.
Matter is
currently in
the monthly
cause list.
Not
maintainable in
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
9. Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/17/2015/TM/CH)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
Status:
Transferred
from the IPAB
to Calcutta
High Court.
Matter is
Not
maintainable in
terms of the
order passed in
Section 124
application in
C.O. (COMM.IPD-TM) 686/2022 & connected Page 19 of 23
Signature Not Verified
Digitally Signed
By:RAHUL
Signing Date:08.12.2023
13:16:57
Bombay
High Court
828560 currently in
the monthly
cause list.
the suit and
upheld by the
Supreme Court
10. Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/18/2015/TM/DEL)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
828559
Status:
Transferred
from the IPAB
to Calcutta
High Court.
Matter is
currently in
the monthly
cause list.
Not
maintainable in
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
11. Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/19/2015/TM/DEL)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
828561
Status:
Transferred
from the IPAB
to Calcutta
High Court.
Matter is
currently in
the monthly
cause list.
Not
maintainable in
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
12. Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/24/2015/TM/MUM)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
348562
Status:
Transferred
from the IPAB
to Bombay
High Court.
Matter is at
the pre
admission
stage.
Not
maintainable in
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
13. Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/25/2015/TM/MUM)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
348561
Status:
Transferred
from the IPAB
to Bombay
High Court.
Matter is at
the pre
admission
stage.
Not
maintainable in
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
14. Virendra Kumar Gupta vs
Burger King Corporation;
Rectification
petition filed by
Status:
Transferred
Not
maintainable in
C.O. (COMM.IPD-TM) 686/2022 & connected Page 20 of 23
Signature Not Verified
Digitally Signed
By:RAHUL
Signing Date:08.12.2023
13:16:57
(ORA/26/2015/TM/MUM) the Defendant
against Plaintiff’s
trademark
registration no.
348560
from the IPAB
to Bombay
High Court.
Matter is at
the pre
admission
stage.
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
15. Virendra Kumar Gupta vs
Burger King Corporation;
(ORA/27/2015/TM/MUM)
Rectification
petition filed by
the Defendant
against Plaintiff’s
trademark
registration no.
348563
Status:
Transferred
from the IPAB
to Bombay
High Court.
Matter is at
the pre
admission
stage.
Not
maintainable in
terms of the
order passed in
Section 124
application in
the suit and
upheld by the
Supreme Court
16. Trademarks
Registry
Taste King vs Burger King
Corporation
Cancellation
action against the
Plaintiff’s trade
mark TASTE IS
KING
Status:
Pleadings are
complete and
matter has
been
appointed for
hearing
To be withdrawn
as per order
th
dated 29
November 2023
17. Trademarks
Registry
Opposition No. 944407 Plaintiff’s
opposition
against
Application No.
2052255 filed by
the Defendants
Status:
Pleadings are
complete and
matter has
been
appointed for
hearing
To be withdrawn
as per order
th
dated 29
November 2023
18. Trademarks
Registry
Opposition no. 978927 Plaintiff’s
opposition
against trade
mark application
No. 2513771 filed
by the Defendants
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
19. Trademarks
Registry
Opposition no. 959139 Plaintiff’s
opposition
against trade
mark application
No. 2638470 filed
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
C.O. (COMM.IPD-TM) 686/2022 & connected Page 21 of 23
Signature Not Verified
Digitally Signed
By:RAHUL
Signing Date:08.12.2023
13:16:57
by the Defendants
20. Trademarks
Registry
Opposition no. 944408 Plaintiff’s
opposition
against trade
mark application
No. 2052256 filed
by the Defendants
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
21. Trademarks
Registry
Opposition no. 897011 Plaintiff’s
opposition
against trade
mark application
No. 2841594 filed
by the Defendants
for the TASTE
KING logo
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
22. Trademarks
Registry
Opposition no. 897012 Plaintiff’s
opposition
against trade
mark application
No. 2841595 filed
by the Defendants
for the TASTE
KING logo
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
23. Trademarks
Registry
Opposition no. 786731 Plaintiff’s
opposition
against trade
mark application
No. 2052260 filed
by the Defendants
for the trademark
BURGER
EMPEROR
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
24. Trademarks
Registry
Opposition no. 1115375
and 1115511
Plaintiff’s
opposition
against trade
mark application
No. 3618423 filed
by the Defendants
for TASTE KING
(in Hindi)
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
25. Trademarks Opposition no. 1115431 Plaintiff’s Status: To be withdrawn
C.O. (COMM.IPD-TM) 686/2022 & connected Page 22 of 23
Signature Not Verified
Digitally Signed
By:RAHUL
Signing Date:08.12.2023
13:16:57
Registry opposition
against trade
mark application
No. 3618424 filed
by the Defendants
for TASTE KING
(composite logo)
Hearing date
is to be
appointed
as per order
th
dated 29
November 2023
26. Trademarks
Registry
Opposition No. 1112070 Plaintiff’s
opposition
against trade
mark application
No. 3674959 filed
by the Defendants
for the trademark
BURGER KING
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
27. Trademarks
Registry
Opposition no. 882987 Defendant’s
opposition
against the
Plaintiff’s trade
mark application
No. 2011499
Status:
Hearing date
is to be
appointed.
To be withdrawn
as per order
th
dated 29
November 2023
28. Trademarks
Registry
Opposition nos. 900156,
900157 900748, 900749,
900750, 900751
Opposition
against the
Plaintiff’s trade
mark application
No. 3535316
Status:
Hearing date
is to be
appointed
To be withdrawn
as per order
th
dated 29
November 2023
29. Trademarks
Registry
Opposition no. 1253321 Opposition
against the
Plaintiff’s trade
mark application
No. IRDI-
4863074
Status:
Pleadings are
yet to be
completed.
To be withdrawn
as per order
th
dated 29
November 2023
30. Trademarks
Registry
Opposition no. 1253320 Opposition
against the
Plaintiff’s trade
mark application
No. IRDI-
4889193
Status:
Pleadings are
yet to be
completed.
To be withdrawn
as per order
th
dated 29
November 2023
*
C.O. (COMM.IPD-TM) 686/2022 & connected Page 23 of 23
Signature Not Verified
Digitally Signed
By:RAHUL
Signing Date:08.12.2023
13:16:57