BURGER KING CORPORATION vs. MR SHAMEEK & ANR.

$~1.
* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ Date of Decision: 02.05.2016

% CS(COMM) 181/2016

BURGER KING CORPORATION ..... Plaintiff
Through: Mr. Praveen Anand, Mr. Raunaq
Kamath & Ms. Anjana Ahluwalia,
Advocates.

versus

MR SHAMEEK & ANR ..... Defendants
Through:

CORAM:
HON'BLE MR. JUSTICE VIPIN SANGHI

VIPIN SANGHI, J. (OPEN COURT)

1. On the aspect of territorial jurisdiction of this Court to entertain the
present suit, learned counsel for the plaintiff points out that the plaintiff is an
American corporation and, therefore, it does not have registered office in
India. However, the plaintiff has several outlets within the jurisdiction of
this Court in Delhi details whereof are set out in paragraph 38 of the plaint.
These BURGER KING restaurants are operating at:
(i) Select City Walk Mall, Saket, New Delhi
(ii) E-8, Inner Circle, Connaught Place, New Delhi
CS(COMM) 181/2016 Page 1 of 29


(iii) Epicuria Food Mall, Nehru Place, New Delhi
(iv) Ambience Mall, Vasant Kunj, New Delhi
(v) M Block, Greater Kailash I, New Delhi
(vi) DT City Center Mall, MG Road, New Delhi
(vii) First Floor, Plot C 1, 2 & 3, PP Towers, Netaji Subhash Place,
New Delhi
(viii) Rajouri Garden, New Delhi
2. Consequently, it is evident that the plaintiff is carrying on business
within the jurisdiction of this Court. Thus, in the facts of this case, the
plaintiff is entitled to invoke the provisions of Section 134 of the Trade
Marks Act and this Court would have jurisdiction to deal with the present
suit.
3. Learned counsel for the plaintiff has also drawn the attention of the
Court to the judgment dated 07.09.2015 passed in C.S. (OS) No.290/2015
titled Burger King Corporation Vs. Burger Place, wherein this Court in
similar circumstances decreed the suit under Order VIII Rule 10 CPC on
account of the fact that the defendant refused service of summons; was
deemed served and failed to put in appearance before the Court. In the
present case as well, the defendant has refused service and has failed to put
in appearance, and no written statement has been filed by the defendant to
contest the plaintiffs claim in the suit.
4. The Court in C.S. (OS) No. 290/2015, while dealing with Order VIII
CS(COMM) 181/2016 Page 2 of 29


CPC observed as follows:
“ 15. After the amendment to Order VIII Rule 1 CPC carried out
by Act 22 of 2002, that came into operation w.e.f. 01.07.2002,
the defendant has to present the written statement in its defense
within 30 days from the date of service of the summons. Under
the proviso to Rule (1), if the defendant fails to file the written
statement within the prescribed timeline, he shall be allowed to
file the same on such other day as may be specified by the
Court for the reasons to be recorded in writing but it shall not
be later than 90 days from the date of service. The
consequences of default in filing the written statement have
been spelt out under Order VIII Rule 10 CPC, which reads as
below:-
“10. Procedure when party fails to present written
statement called for by Court.- Where any party
from whom a written statement is required under
rule 1 or rule 9 fails to present the same within the
time permitted or fixed by the Court, as the case
may be, the Court shall pronounce judgment
against him, or make such order in relation to the
suit as it thinks fit and on the pronouncement of
such judgment a decree shall be drawn up.”
16. The object of providing a time frame to file the written
statement is to achieve speedy disposal of the case and to avoid
unnecessary adjournments. Once there is default on the part of
the defendant under Rule 1 of Order VIII and the extended time
of 90 days from the date of service lapses, consequences thereof
have been provided for under Rule 10, which contemplates that
the Court shall pronounce judgment against the defendant or
make such orders in relation to the suit as it thinks fit. In cases
of failure on the part of the defendant to file the written
statement within the permitted time or the time fixed by the
Court, the course of action that the Court may propose to adopt
would depend on the facts and circumstances of each case.
Where the case of the plaintiff is clear cut and the Court finds
that on the basis of the averments made in the plaint supported
CS(COMM) 181/2016 Page 3 of 29


by the documents filed by the plaintiff, it would be just, fair and
equitable to pass a decree for the reason that in the Court’s
opinion, no further proof would be necessary, it may take
recourse to passing a decree in favour of the plaintiff. In other
cases, where the Court is not satisfied that the plaintiff has been
able to make out a blemishless case in its favour entitling it to
the relief prayed for in a suit, even in the absence of the written
statement by the defendant, it is well entitled to direct the
plaintiff to prove its case. In the alternate, given some special
circumstances, the Court can grant the defendant time to file
the written statement on terms and conditions that may be
considered fit and proper in the circumstances of the case.
17. It can thus be seen that despite usage of the word “shall” in
Rule (10) of Order VIII, the Court has been given the discretion
to pronounce or to refuse to pronounce a judgment against the
defendant, even if a written statement is not filed. Depending on
the facts of the case, the Court can pass such orders as it may
think fit in relation to the suit. In the case of Kailash vs. Nankhu
& Ors. reported as (2005) 4 SCC 480, where the Supreme
Court had gone to great lengths to examine the historical
background behind the introduction of the amended provisions
of Order VIII of the Code and their effect, it was held as
below:-
“41. Considering the object and purpose behind
enacting Rule 1 of Order 8 in the present form and
the context in which the provision is placed, we are
of the opinion that the provision has to be
construed as directory and not mandatory. In
exceptional situations, the court may extend the
time for filing the written statement through the
period of 30 days and 90 days, referred to in the
provision, has expired. However, we may not be
misunderstood as nullifying the entire force and
impact "the entire life and vigour " of the
provision. The delaying tactics adopted by the
defendants in law courts are now proverbial as
they do stand to gain by delay. This is more so in
CS(COMM) 181/2016 Page 4 of 29


election disputes because by delaying the trial of
election petition, the successful candidate may
succeed in enjoying the substantial part, if not in
its entirety, the term for which he was elected even
though he may lose the battle at the end.
Therefore, the judge trying the case must handle
the prayer for adjournment with firmness. The
defendant seeking extension of time beyond the
limits laid down by the provision may not
ordinarily be shown indulgence. (emphasis added)
42. Ordinarily, the time schedule prescribed by
Order 8 Rule 1 has to be honoured. The defendant
should be vigilant. No sooner the writ of summons
is served on him he should take steps for drafting
his defense and filing the written statement on the
appointed date of hearing without waiting for the
arrival of the date appointed in the summons for
his appearance in the Court. The extension of time
sought for by the defendant from the Court
whether within 30 days or 90 days, as the case
may be, should not be granted just as a matter of
routine and merely for the asking, more so, when
the period of 90 days has expired. The extension
can be only by way of an exception and for reasons
assigned by the defendant and also recorded in
writing by the court to its satisfaction. It must be
spelled out that a departure from the time schedule
prescribed by Order 8 Rule 1 of the Code was
being allowed to be beyond the control of the
defendant and such extension was required in the
interest of justice, and grave injustice would be
occasioned if the time was not extended. (emphasis
added)
43. xxx xxx xxx
44. The extension of time shall be only by way of
exception and for reasons to be recorded in
CS(COMM) 181/2016 Page 5 of 29


writing, howsoever brief they may be, by the court.
In no case, shall the defendant be permitted to seek
extension of time when the court is satisfied that it
is a case of laxity or gross negligence on the part
of the defendant or his counsel. The court may
impose costs for dual purpose: (i) to deter the
defendant from seeking any extension of time just
for the asking, and (ii) to compensate the plaintiff
for the delay and inconvenience caused to him.
(emphasis added)
45. However, no straitjacket formula can be laid
down except that the observance of time schedule
contemplated by Order 8 Rule 1 shall be the rule
and departure there from an exception, made for
satisfactory reasons only. We hold that Order 8
Rule 1, though couched in mandatory form, is
directory being a provision in the domain of
processual law.” (emphasis added)
18. Subsequently, in the case of Salem Advocate Bar
Association, Tamil Nadu vs. Union of India reported as 2005
(6) SCC 344, with respect to extending the time to file a written
statement beyond the prescribed period of 90 days, the Supreme
Court had made it clear that the order extending the time to file
the written statement ought not be made in routine, the time can
be extended only in exceptionally hard cases and further, while
extending the time, it has to be borne in mind that the
legislature has fixed the upper time limit of 90 days and
therefore, the Court ought not to exercise its discretion
frequently and regularly so as to nullify the period fixed under
Order VIII Rule 1 CPC. However, in the case of Smt. Rami
Kusum vs. Smt. Kanchan Devi and Ors. reported as (2005) 6
SCC 705 a note of caution was added by the Supreme Court
that in the process of expediting the proceedings, the principles
of natural justice cannot be thrown to the winds.
19. At the end of the day, the underlying principle laid down in
all the aforesaid decisions is that the law of procedure provides
CS(COMM) 181/2016 Page 6 of 29


a methodology that the Court ought to adopt while determining
the rights of the plaintiff to a lis. Some of the provisions of the
Code are directory and not mandatory in nature even though
the legislature has used the word “shall” and that by itself will
not be conclusive to determine whether the said provision is
mandatory for the reason that the said provision could still turn
out to be directory, depending on the nature of the provisions
and the context in which it has been enacted.
20. In the instant case, the defendant had refused service of
summons and was deemed to have been served on 11.04.2015.
Even thereafter, no effort was made by the defendant to enter
appearance in the suit and file the written statement or contest
the suit in any manner. On failure to file the written statement
under Order VIII Rule 1 CPC, the Court is well empowered to
pronounce a judgment against the defendant under Rule (10), if
it is satisfied by the case set up by the plaintiff. As noted above,
Mr. Anand, learned counsel for the plaintiff has volunteered to
confine reliefs in the suit to prayers made in para 39 (a) (b) and
(c) and has walked the Court through the material placed on
record to urge that the plaintiff is an entitled to a decree under
Order VIII Rule (10) CPC.
21. Keeping in view the need for expeditious trial of civil cases
particularly when they are commercial in nature, which is a
consideration that has persuaded the Parliament to undertake
amendments from time to time in the Code and Civil Procedure
so as to tighten the procedure and avoid delay, and further,
keeping in mind the fact that commercial matters of the present
nature ought to be treated on a different footing and cannot be
kept lingering when there is no contest from the other side, in
discharge of its duty to provide fair, quick and speedy justice,
this Court is of the opinion that the plaintiff is entitled to invoke
the provisions of Order VIII Rule (10) CPC in the facts of the
present case.”
5. Mr. Anand submits that the only aspect which require the plaintiff to
lead evidence in the matter is in relation to the claim for damages and, on
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instructions, he states that the plaintiff gives up its claim for damages in the
present suit and that the plaintiff would be satisfied if this Court were to
consider grant of the injunctive relief as sought in prayers A and B of the
plaint.
6. The case of the plaintiff, as set out in the plaint, is as follows:
“2. The Plaintiff was founded in 1954 when it commenced its
business with one restaurant in Miami, Florida trading under
the name and style of BURGER KING. The Plaintiff’s very first
advertisement was aired in 1958 on Miami’s local station while
the Plaintiff’s first franchisee outlet started in 1959. Since its
inception, the Plaintiff had plans of global expansion and
opened its first BURGER KING restaurant outside the United
States of America in Puerto Rico in 1963. By 1967, the Plaintiff
already owned and operated 275 BURGER KING restaurants.
3. Today, the Plaintiff manages and operates a worldwide
chain of over 13,000 fast food restaurants serving more than 11
million customers daily in 100 countries and U.S. territories
worldwide. Approximately 97% of the Plaintiff’s BURGER
KING restaurants are owned and operated by independent
franchisees. The Plaintiff is presently the second largest fast
food hamburger company and over 30,300 people are employed
by the Plaintiff or its franchisees. The first BURGER KING
franchised restaurant in Asia was opened in 1982, and there
are currently over 1,200 of these restaurants in the Asia-Pacific
region.
T HE P LAINTIFF ’ S T RADE M ARK / N AME
4. The subject matter of the present suit is the Plaintiff’s
trade mark/ name BURGER KING which the Plaintiff has
extensively used in relation to its restaurants and restaurant
services since 1954. The BURGER KING trademark/ service
mark is an arbitrary combination of two generic words and is
therefore inherently distinctive and enjoys maximum protection
under trademark law.
CS(COMM) 181/2016 Page 8 of 29


5. Apart from being the Plaintiff’s trademark and service
mark, BURGER KING is also an integral and conspicuous part
of its trading style, so much so that the Plaintiff, its business,
goods and services are readily recognized merely by reference
to them as “BURGER KING”.
6. The BURGER KING trade mark is registered in favor of
the Plaintiff in over 122 countries of the world including 22
countries in the Asia Pacific and South-East Asia regions. The
Plaintiff owns over 4000 trade mark and service mark
applications across the world including in India, where the
Plaintiff is the registered proprietor of the BURGER KING
trade mark since 1979. Details of the Plaintiff’s registered
trade marks in India are provided in Annexure – A to the
plaint. The Plaintiff’s trade mark BURGER KING has been
declared as a well-known mark by this Hon'ble Court in CS
(OS) No. 884 of 2015 on September 29, 2015. The BURGER
KING trade mark is thus entitled to the highest degree of
protection conferred under statute including against even
disparate goods and services.
7. Apart from asserting strong common law rights in the
trade mark/ name BURGER KING, the Plaintiff has also
secured registrations for the said mark in various jurisdictions
all over the world including AAFES, Andorra, Argentina,
Aruba, Australia, Austria, Bahamas, Bahrain, Bolivia, Brazil,
Canada, Cayman Islands, Chile, China, Colombia, Costa Rica,
Curacao, Cyprus, Denmark, Dominican Republic, El Salvador,
AAFES Europe, France, Germany, Gibraltar, Guam,
Guatemala, Honduras, Hong Kong, Hungary, Iceland, Italy,
Jamaica, Jordan, Korea, Kuwait, Lebanon, Malaysia, Malta,
Mexico, Netherlands, New Zealand, Norway, Nicaragua,
Panama, Paraguay, Peru, Philippines, Portugal, Puerto Rico,
Qatar, Saudi Arabia, Singapore, Spain, St. Lucia, St. Maarten,
Suriname, Sweden, Switzerland, Taiwan, Thailand, Trinidad,
Turkey, United Arab Emirates, United Kingdom, United States
of America, Uruguay, Venezuela.
HE LAINTIFF S EPUTATION IN NDIA
T P ’ R I
CS(COMM) 181/2016 Page 9 of 29


8. With specific reference to India, the Plaintiff’s BURGER
KING trade mark/ name has acquired significant reputation
and goodwill which is demonstrated by numerous franchise
inquiries received by the Plaintiff from third parties in India in
relation to opening restaurants under the trade mark/ name
BURGER KING in the Indian Territory. These franchise
inquiries establish that the Indian public has always been well
aware of the Plaintiff’s BURGER KING brand, which is further
demonstrated by the inclusion of words such as “famous” and
“well-known” in relation to the Plaintiff’s BURGER KING
brand in the said franchise inquiries.
9. The Plaintiff’s Asia Division had also entered into a
license agreement with the Inventure Group for developing,
designing, manufacturing, distributing, selling and offering for
sale the products of the Plaintiff. The Inventure Group had
exported samples of the Plaintiff’s BURGER KING products to
India on account of the encouraging response from the Indian
public and the popularity of the BURGER KING brand in India.
10. The Plaintiff has also had brand visibility in India
through trade shows (such as the USDA India Trade Mission
2009), presence of their BURGER KING products in the
embassy of the United States of America in India, import of the
samples under the mark BURGER KING in India etc.
Additionally, the Plaintiff has tie-ups with the entertainment
industry and its BURGER KING products/ brand have been
advertised in popular movies such as The Fantastic Four
(2005), Transformers (2007), Iron Man (2008), The Twilight
Saga – New Moon (2009) etc. These movies were released in
India and the Indian public was exposed to the products of the
Plaintiff carrying the BURGER KING trade marks.
11. Further, there have been innumerable write-ups and
advertisements that have appeared over the years in Indian
publications or publications having circulation in India. These
publications include, but are not limited to the Indian Express,
Business India, Franchising World, Business World, Business
Week, Advertising Age, Brandweek, Restaurants & Institutions,
CS(COMM) 181/2016 Page 10 of 29


Financial Times, USA Today, New York Times, Washington
Times, Time etc.
12. It is a known fact that a significant number of Indian
travelers, including tourists, business people, professionals,
students etc. have routinely traveled and continue to travel to
overseas destinations including but not limited to the United
States of America. The Plaintiff’s franchisee outlets are
prominent in their presence in most countries from the airports
onward and as a result, these Indian travelers have always
been well aware of the Plaintiff’s business and services under
the BURGER KING brand.
HE LAINTIFF S NTERNET RESENCE
T P ’ I P

13. Physical travel apart, internet users all over the world
have had access to the website of the Plaintiff located at
www.burgerking.com for which the domain name was
registered as early as November 14, 1994. In addition, many
people from all over the world including in India access the
Plaintiff’s websites www.bk.com and www.burgerking.com and
have become acquainted with the Plaintiff’s business and
services under the trade mark and trading style BURGER
KING which has further contributed to the goodwill and
reputation of the Plaintiff’s brand.
14. In addition to its primary website, the Plaintiff also has
dedicated websites for different regions and holds at least 1040
domain name registrations in its name.
T HE P LAINTIFF ’ S E NTRY I NTO I NDIA
15. On account of the inclusion of ‘beef’ in the Plaintiff’s
burgers, (which in the Indian context would have previously
made the conduct of the Plaintiff’s business unviable) the
Plaintiff had previously not launched a BURGER KING
restaurant in India. However, owing to globalization and
transformation in the Indian development and consequent on
conducting exhaustive feasibility studies which have indicated
the readiness of the Indian market for the Plaintiff’s world-
renowned restaurants, in 2013, the Plaintiff entered into a Joint
CS(COMM) 181/2016 Page 11 of 29


Venture with Everstone Group, a leading private equity and
real estate firm in India and South East Asia, to set up a supply
chain in India and establish BURGER KING restaurants across
the country.
16. The Plaintiff’s long anticipated entry into India received
wide spread press coverage both in the form of articles as well
as through social media. The Plaintiff’s first Indian BURGER
KING restaurant was opened in New Delhi on November 9,
2014 which was a resounding success and received an
enthusiastic response from the Indian public as well as
significant media coverage. Since then, the Plaintiff has
launched 8 more BURGER KING restaurants in New Delhi/
NCR with an additional 5 BURGER KING restaurants
operating in Mumbai and has expanded further in the cities of
Bengaluru, Pune and Chandigarh. The Plaintiff has plans for
further expansion with several more outlets scheduled to open
in India in the coming months.
T HE P LAINTIFF ’ S R EVENUE AND P ROMOTIONAL E FFORTS
17. The enormous success enjoyed by the Plaintiff is evident
from the revenues sales generated by the Plaintiff’s BURGER
KING restaurants across the world for the last few years which
are as follows:

CS(COMM) 181/2016 Page 12 of 29

18. The Plaintiff has also spent huge sums on the
advertisement and promotion of their services under the
BURGER KING brand. The Plaintiff’s advertisement expenses
which were approximately US$ 14 million in the years 1993-
1994 rose to US$ 13.88 million in Asia (excluding Australia)
alone in the year 2007. The Plaintiff’s consolidated global
system wide advertising expenses, including franchisee
contributions are as follows:

CS(COMM) 181/2016 Page 13 of 29


19. As a result, the Plaintiff’s BURGER KING brand has
acquired excellent reputation and goodwill internationally as
well as in India. The consuming public and trade in India
identify, recognize and exclusively associate the well-known
trademark/ service mark BURGER KING with the services of
the Plaintiff, especially in the field of restaurant services. The
Plaintiff’s trademarks having priority in adoption, long and
continuous use and extensive popularity, are entrenched in the
minds of the international public including the Indian
population at large.
20. Owing to the long, continuous and ubiquitous use of the
BURGER KING trade mark/ name since 1954 coupled with
extensive promotional efforts, the Plaintiff has acquired
significant common law rights in the said mark across the
world including India and is thus entitled to the exclusive use
thereof.
21. The Plaintiff has also been vigilant in protecting its
rights and interests in its intellectual property in India and has
consistently monitored and taken appropriate measures to
tackle misuse of its trade marks by unrelated third parties in
different forums. Illustrative copies of orders and decrees
passed in favor of the Plaintiff in previous lawsuits are filed
herewith.”
7. In relation to the defendant, the plaintiff states that:
“22. The Defendants in the present proceedings are as under:
(i) Defendant No. 2 viz. KING BURGERZ is a restaurant
operating at Methu Colony, Manapakkam Main Road,
Ramapuram, Chennai, 600089.
(ii) Defendant No. 1 viz. Mr. Shameek is verily believed to be
the proprietor of Defendant No. 2 and is actively
running, operating, steering and managing Defendant
No. 2’s day-to-day business and is responsible for key
business decisions.
CS(COMM) 181/2016 Page 14 of 29


The exact constitution of the Defendants will however be known
only after discovery in the present proceedings. The Plaintiff
reserves its right to amend the plaint if necessitated after
discovery.
23. In or around December 2012, the Plaintiff became
aware of the existence of the Defendants’ restaurant in Chennai
operating under the trading style of KING BURGER and were
alarmed to note that the Defendants’ were using a trade mark/
name which is a mere rearrangement of the Plaintiff’s well-
known trade mark/ name BURGER KING .
24. The Plaintiff accordingly initiated enquiries which
revealed that the Defendants were engaged in the business of
providing restaurant services and were serving fast food
including burgers to customers in Chennai under the impugned
trading style of KING BURGER .
25. The Plaintiff’s attorneys accordingly sent the
Defendants a cease and desist notice in an attempt to amicably
settle the matter without resorting to legal proceedings. On
December 16, 2012 the Plaintiff’s attorneys received an email
from Defendant No. 1 in response to the cease and desist notice
wherein it was stated as under:
(i) Defendant No. 1 confirmed receipt of the Plaintiff’s
notice and also confirmed that he was the proprietor of
M/s KING BURGER .
(ii) Defendant No. 1 informed that the Defendants intended
to restructure their restaurant and change their name
“very shortly”.
(iii) Defendant No. 1 categorically admitted that “…I do
know that complications that would happen when I depict
a huge brand like BURGER KING …”
(iv) Defendant No. 1 categorically admitted that the
impugned trade mark/ name KING BURGER “…could
be similar to BURGER KING…”.
CS(COMM) 181/2016 Page 15 of 29


(v) Defendant No. 1 undertook to change the name of his
restaurant at the earliest and positively within 20 days.
(vi) Defendant No. 1 requested the Plaintiff’s attorneys to
confirm whether the Plaintiff would have any objection if
he changed the Defendants’ impugned trading style to
BURGERTIME, HAPPY BURGERS, BURGER PALACE,
ROYAL BURGER or ROYAL BURGERS.
26. The Plaintiff’s attorneys sent an email dated January 8,
2013 to Defendant No. 1 confirming that the Plaintiff had no
objection to the Defendants’ use of any of the trade marks/
names BURGERTIME, HAPPY BURGERS, BURGER
PALACE, ROYAL BURGER or ROYAL BURGERS. The
Plaintiff’s attorneys also requested the Defendants to execute a
formal undertaking and to provide the Plaintiff with the
executed undertaking and photographs of their new banner/
signage evidencing that they had discontinued use of the
impugned trade mark/ name KING BURGER , by January 28,
2013. Defendant No. 1 responded with an email dated January
23, 2013 informing that he was travelling and requesting for
time till February 5, 2013 to comply with the Plaintiff’s
requisitions. The Plaintiff agreed to accommodate the
Defendants’ request. On February 5, 2013 however the
Plaintiff’s attorneys’ received an apologetic email from
Defendant No. 1 informing that he was still travelling and
requesting for additional time to execute the formal written
undertaking. Significantly Defendant No. 1 categorically
requested the Plaintiff to consider his email as an undertaking
and informed the Plaintiffs’ that the Defendants had already
changed the name of their restaurant to ROYAL BURGERZ .
The Plaintiff’s attorney’s responded with an email dated
February 11, 2013 calling upon the Defendants to furnish
packaging materials and photographs evidencing the change in
the trading style of their restaurant to ROYAL BURGERS,
pending the formal written undertaking. Defendant No. 1
however failed to respond to this email following which the
Plaintiff’s attorneys sent a reminder email to Defendant No. 1
on March 15, 2013. Defendant No. 1 eventually responded with
CS(COMM) 181/2016 Page 16 of 29


an email dated March 16, 2013 informing that he was closing
down the restaurant in 2 months and enquiring whether it was
still necessary to execute the formal undertaking. The Plaintiff’s
attorneys confirmed that the written undertaking was required
and even provided the Defendants’ with a draft undertaking to
execute. On March 30, 2013, Defendant No. 1 confirmed that
he would execute and forward the undertaking as soon as
possible and also enquired whether Plaintiff would be
interested in making the Defendants a BURGER KING
franchisee in India. The Defendants however failed to execute
and send the Plaintiff’s attorneys the undertaking. On June 20,
2013 the Plaintiff’s attorneys sent an email to the Defendants
reminding them that they were yet to receive the executed
written undertaking and that the Plaintiff would not consider
the matter closed till receipt thereof. Defendant No. 1 replied
with an email on the same date informing that the Defendants
had closed their restaurant in March 2013 and that the Plaintiff
may check at the available address. Defendant No. 1 thus
requested the Plaintiff to consider the matter closed.
27. By way of caution, the Plaintiff initiated enquiries to
verify the contents of the Defendants’ last email, which
revealed that the Defendants had shifted their restaurant to a
new premises located at First Floor, 3/211-3, SRCM, Ashram
Road, Manpakkam, Chennai – 600125. This restaurant
however was operating under the trading style of ROYAL
BURGERZ. Photographs of the Defendants’ ROYAL
BURGERZ restaurant are filed in the present proceedings and
may be referred to. In light of Defendant No. 1’s undertaking
not to use the impugned mark KING BURGER in future and
coupled with the change of name of the Defendants’ restaurant
to ROYAL BURGERZ, the Plaintiff considered the matter
closed at the time.

28. Recently, in August 2015, the Plaintiff was surprised to
learn of the existence of a restaurant in Chennai operating
under the name and style of KING BURGERZ . The Plaintiff
immediately instructed an investigation agency to conduct an
investigation into the activities of this restaurant and was taken
CS(COMM) 181/2016 Page 17 of 29


aback when the investigation revealed that the restaurant
KING BURGERZ is owned and operated by the Defendants
herein.
29. The investigation confirmed that the Defendants had
renamed their restaurant ROYAL BURGERZ to KING
BURGERZ i.e. Defendant No. 2 herein and had shifted to a new
premises located at Methu Colony, Manapakkam Main Road,
Near EB office, Ramapuram, Chennai around 8 months ago.
The investigation confirmed that the Defendants are providing
restaurant services to customers under the impugned name and
style of KING BURGERZ . Significantly the signage adopted by
the Defendants is virtually identical to the signage of the
Plaintiff’s BURGER KING restaurants and comprises an
identical get up, lay out, font, colour scheme and arrangement
of features viz. a red signboard/ background with the trading
style depicted in white capitalized lettering in identical font.
30. The Defendants’ impugned trade name KING
BURGERZ incorporates the Plaintiff’s registered and well-
known trade mark/ name BURGER KING in entirety being a
mere rearrangement thereof and is suffixed with the letter ‘z’
which is clearly not sufficient to obviate confusion or
distinguish the Defendants’ restaurant services from those of
the Plaintiff. The Defendants’ use of the Plaintiff’s registered
and well-known trade mark/ name BURGER KING in any
manner or by way of a simple rearrangement with or without
the addition of the letter ‘z’, in relation to restaurant services,
is bound to cause confusion among the relevant class of
consumers. Moreover, Defendant No. 1 had already undertaken
to the Plaintiff that the Defendants would change their name to
ROYAL BURGERZ ; had also admitted that there was a strong
likelihood of confusion on account of the Defendants’ adoption
and depiction of a “huge brand” as that of the Plaintiff; and
even requested to be made a franchisee for the Plaintiff’s
BURGER KING brand in India.
31. As stated above, the Plaintiff has plans for expansion of
its BURGER KING restaurants throughout India including in
Chennai. A simple Google search for the words ‘Burger King
CS(COMM) 181/2016 Page 18 of 29


Chennai’ however provides links to third party websites
pertaining to the Defendants which demonstrates the high
likelihood of actual confusion in market on account of the
Defendants’ adoption and use of a rearrangement of the
Plaintiff’s well-known trade mark/ name BURGER KING .
32. A prudent and reasonable person is thus bound to be
misled into believing that the Defendants’ services and goods
originate from the Plaintiff or that Defendants have an
association/ relationship/ sponsorship/ affiliation/ authorization
or nexus with the Plaintiff on account of the following factors:
a) The Defendants’ use of a mere rearrangement of the
Plaintiff’s registered trade mark / name BURGER KING as
its trading style and trade mark.

b) The Defendants’ depiction of the impugned mark/ name
KING BURGERZ on their restaurant signage in an
identical manner as that of the Plaintiff viz. white bold
lettering on a red background.
c) The Defendants’ use of the Plaintiff’s registered trade mark/
name BURGER KING in relation to identical services as
those of the Plaintiff i.e. restaurant services.
33. The Defendants’ adoption of the impugned mark/ name
is clearly motivated with a view to encash the Plaintiff’s
enormous and unsurpassable goodwill and stellar reputation
earned by it in relation to the trade mark BURGER KING and
to pass off the Defendants’ services and business as those of the
Plaintiff. This is clearly demonstrated by Defendant No. 1’s
categorical admission as regards his prior knowledge of the
goodwill and reputation associated with the Plaintiff’s
BURGER KING brand and that confusion is bound to arise
amongst consumers on account of his depiction of the
Plaintiff’s said trade mark/ name.
34. The Defendants have adopted a rearrangement of the
Plaintiff’s BURGER KING registered trade mark / name in
respect of the identical services in bad faith and several
decades subsequent to the Plaintiff’s adoption of the BURGER
KING trade mark/ name in 1954. The adoption of the impugned
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mark/ name KING BURGERZ by the Defendants is patently
dishonest as they are admittedly aware not only of the goodwill
and reputation of the Plaintiff’s BURGER KING trade mark/
name but also of the Plaintiff’s use of the BURGER KING
mark in India as well as abroad. The Defendants’ knowledge of
the Plaintiff’s use of the BURGER KING name/ mark is
demonstrable from the correspondence exchanged between
Defendant No. 1 and the Plaintiff’s attorneys in 2012-2013.
Moreover the Defendants adopted the impugned mark/ name
KING BURGERZ at least one year after undertaking to
change their impugned trading style to ROYAL BURGERZ .
Such dishonest adoption itself disentitles the Defendants from
using the impugned mark/ name in relation to their restaurant
services.
35. The Defendants’ adoption and use of the Plaintiff’s
BURGER KING trade mark/ name in any manner including by
way of a mere rearrangement and the addition of the letter ‘z’
is bound to cause dilution of the Plaintiff’s trade mark/ name.
The adoption and use of the impugned mark KING BURGERZ
by the Defendants therefore amounts to infringement of the
Plaintiff’s registered trade mark BURGER KING as well as
passing off their restaurant services as those of the Plaintiff
apart from amounting to breach of the undertaking tendered by
Defendant No. 1. The Plaintiff has already sustained significant
dilution, diminution, weakening and erosion of the goodwill,
reputation and the positive associations linked to its trade
mark/ name. The Plaintiff is also suffering loss of
distinctiveness, uniqueness and exclusivity attached to the
BURGER KING trade mark/ name by reducing its capacity to
identify and distinguish the business of the Plaintiff as
originating from a particular source, regardless of the presence
or absence of likelihood of confusion, mistake or deception.

36. Owing to their aforementioned infringing acts,
Defendants have made and are continuing to make illegal
profits and are causing losses to the Plaintiff. Further, the
Defendants’ aforesaid infringing acts have caused and are
causing undue harm and injury to the reputation and goodwill
CS(COMM) 181/2016 Page 20 of 29


to the Plaintiff and its registered trade mark/ name BURGER
KING. The Plaintiff estimates that it has already suffered
damages to the tune of Rs. 2,00,00,000/-. The Plaintiff reserves
its rights to claim further damages after making discovery of
better particulars of the Defendants’ illegal sales and profits
from the adoption and use of impugned mark/ name KING
BURGERZ . ”
8. In Annexure A of the plaint, the plaintiff has tabulated the trade mark
registrations obtained by the plaintiff, particulars whereof are as follows:

CS(COMM) 181/2016 Page 21 of 29

CS(COMM) 181/2016 Page 22 of 29

9. The plaint has been signed and verified by Mr. Pankaj Pahuja, the
constituted attorney of the plaintiff and is also supported by the affidavit of
Mr. Pankaj Pahuja, wherein he has deposed that he is the constituted
attorney of the plaintiff and is well-conversant with the facts &
CS(COMM) 181/2016 Page 23 of 29


circumstances of the case and has also deposed that the contents of the
company and plaint has been provided on his instructions and based on the
legal advice received. He states that the contents are true and nothing
material and relevant has been concealed therefrom. He has also affirmed
that the documents filed along with the plaint are true copies of their
originals. Along with the plaint, the plaintiff has placed on record the copies
of the registrations obtained by the plaintiff from the Trade Marks Registry
in respect of its trade mark. The plaintiff has also filed the original affidavit
of Nripendra Kashyap who on instructions of the plaintiff conducted
investigation into the activities of the defendant. In his affidavit, he, inter
alia , states as follows:

CS(COMM) 181/2016 Page 24 of 29



10. The photograph of the defendant’s premises filed along with the said
report at Annexure-A is as follows:
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11. The menu card of the defendant filed as Annexure-C reads as follows:

12. The plaintiff has also placed on record the copy of the seize and resist
notice dated 13.12.2012 issued to the defendant. In this notice, the plaintiff,
inter alia , stated as follows:
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“Your use of the mark KING BURGER which is merely
identical to our client’s mark BURGER KING amounts to
infringement of our client’s statutory rights in its registered
trademarks in India and is also designed to pass off your
business activities under the impugned mark as being approved
by or connected with our client.
Your adoption and use of the trademark KING BURGER is
evidently in bad faith and unlawful. The registrations subsisting
in favour of our client on the Trademark Register are deemed to
be constructive notice to you of our client’s statutory rights.
You have therefore chosen to use the impugned mark with full
knowledge of the statutory rights of our client in the registered
trademark BURGER KING® and with constructive notice of
the priority in international use and reputation of this
trademark by our client.
While our client can exercise at any time the option of filing a
lawsuit to restrain the wrongful use of the impugned
name/trademark by yourselves upon and in relation to goods or
services identical to our client’s goods and services, our client
nonetheless wishes to attempt to resolve the matter at the outset
by fairly putting you on strict notice and requires you to comply
with the following demands:
1. You shall immediately cease and desist from the use of the
trademark/trading style/trade name KING BURGER or any
other mark/name deceptively similar to our client’s
trademark BURGER KING for restaurants and food/drink
items, and in any other manner whatsoever so as to infringe
our client’s trademark registrations or pass off your goods
and/or business there under.
2. You shall confirm that the discontinuation of the impugned
mark by you will be total, including but not limited to
packaging, stationery, advertising and promotion material,
etc.
3. You shall refrain at all times from using or registering
BURGER KING or a mark deceptively similarity thereto as
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part of a firm name, corporate name or domain name.”
13. The defendant responded to the said legal notice and in the said reply,
he inter alia , stated:
“ I do not want to change the name at that time itself, but time
elapsed until I receive your notice. But now I would like to
inform you that I am restructuring the outlet and going to start
the same in another name-very shortly.
Also for your reference I have not imitated your logos at any
time, as I do know the complications that would happen when I
depict a Huge brand like BURGER KIING.
I have attached a logo of my KING BERGER for your
reference.
Still I Agree that the Name could be similar to BURGER KING-
Which I would change at the earliest also I do not have Special
PACKING/STATIONARY/PROMOTIONS.”
14. The photographs of the banners displayed on its restaurant after the
change and after adoption of the mark ROYAL BURGERZ have also been
placed on record by the plaintiff. The case of the plaintiff, as noticed above,
is that the defendant has, however, once again back to using the mark KING
BURGER.
15. The mark KING BURGER adopted by the defendant appears to be
similar to the plaintiff’s registered mark BURGER KING as the defendant
has merely changed the order of use of the two words BURGER and KING.
The addition of the letter ‘Z’ at the end of the word BURGER has little
impact phonetically. An unwary customer is likely to be deceived and
confused and to assume that KING BURGERZ is a mark of the plaintiff,
who has been using BURGER KING since 1954 worldwide, and in India
CS(COMM) 181/2016 Page 28 of 29


since 2014. The plaintiff being the registered proprietor of the mark
BURGER KING is entitled to protection against infringement of the said
mark by anyone, who uses any other mark which may be deceptively or
confusingly similar to the plaintiff’s mark.
16. Accordingly, the plaintiff is entitled to the injunctive reliefs sought in
the plaint. The suit is, accordingly, decreed in favour of the plaintiff and
against the defendant in terms of prayers (A) and (B) contained in paragraph
40 of the plaint. The parties are left to bear their own respective costs.

VIPIN SANGHI, J
MAY 02, 2016
B.S. Rohella

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