Burger King Corporation Vs Ranjan Gupta & Ors.
In a lawsuit for trademark infringement brought by Burger Kings, a single judge of the Delhi High Court ruled that a civil court will only frame the issue of the plaintiff's trademark's invalidity if it is prima facie satisfied about the plea of invalidity and not otherwise. The Court further held that simply because the Defendant had asserted invalidity in its Written Statement, it was not obligatory upon it to frame the issue.
Facts of the case
Burger King filed a lawsuit before the Delhi High Court in 2014 seeking an injunction against the defendants, alleging trademark infringement of its mark "BURGER KING". The Defendants in their Written Statement took a plea of invalidity of the Mark Burger King primarily on the ground that the mark is generic and therefore must be cancelled. After Burger King filed the action in 2014, the defendant filed several rectification petitions asking for the cancellation of the Burger King mark.
Question
Whether the Defendants' claim that the Burger King trademark is invalid is prima facie tenable for the Court to frame an issue.
Conclusion
As per the language of Section 124 (1) (b) (ii) of the Trademark Act, the Court will only frame an issue regarding the invalidity of the Plaintiff’s registered trademark if it is satisfied that the plea is prima facie tenable. Defendant will only get the right to file rectification petitions if the court frames the issue and not otherwise.
The finding of prima facie tenability is a statutory safeguard to ensure that the defendants do not file frivolous rectification proceedings as a counter blast to the infringement actions against them.
Under Order XIV Rule 1 of the CPC, issues have to be framed on the basis of material propositions of fact or law and not on all propositions of fact or law raised in the pleadings. Section 124 read with Order XIV Rule 1 of CPC shows that an issue with regard to validity of the registration granted in favour of the plaintiff can only be framed, when the plea to the said effect taken by the defendant is found prima facie tenable. Merely because the Defendant has pleaded in the written statement about the invalidity of Burger King’s trademark, that does not mandatorily require the court to frame the issue of invalidity.
Since Burger King had no intention to abandon its trademark in the relevant period between August 2009 and August 2014, the Defendant is not right in contending that Burger Kings mark is liable to be cancelled because it was not used for a continuous period of five years from the date on which the trademark was entered in the register.
The defendants are estopped from contending that the trademark BURGER KING is generic and widely used in commerce because they themselves applied for registration of the mark Burger King.
No issue with regard to validity of the registrations of trademarks of the plaintiff is liable to be framed as there is no reasonable prospect of the defendants succeeding in the cancellation petitions filed by them.
Comments
The Court has rightly held—in consonance of the plain language of the section 124 of trademarks act—that the court is not bound to frame an issue merely because defendant has pleaded a defense of invalidity of plaintiff's mark in its written statement. The court must satisfy itself before framing an issue regarding the plea of invalidity. The reason for doing so other than the reason mentioned in the judgment regarding the frivolity of the plea or as only a counter blast to the civil suit, is that framing of an issue under order XIV CPC and framing of an issue under Section 124 of the Trademark Act have different standards.
Under Order XIV, the Court frames issues which arise when a material proposition of fact or law is affirmed by one party and denied by the other party to the suit. Material propositions are those propositions of fact or law which a plaintiff must allege to show a right to sue or a defendant must allege in order to constitute his defense.
Contrary to S.124, Order XIV CPC does not state anywhere that the court will only frame an issue if it is prima facie satisfied that the registered trademark is invalid. Consequently, the Court was correct to reject the Defendants’ argument that once the argument for invalidity was pleaded in the Written Statement, an issue had to be raised in relation to it.
The Court rejected the Defendants’ argument that the mark Burger King is generic and well-known in the industry and should be cancelled as a result. The Court reasoned that the Defendants are precluded from making this argument because they themselves have applied for registration of the mark Burger King.
On this point, I think the argument of estoppel might only be significant in deciding the interim injunction application and not in a rectification procedure. The court must evaluate the registered mark's validity in rectification proceedings using the grounds allowed by the Trademark Act. The actions of the Defendant are no longer relevant if the Act categorically prohibits the registration of a generic mark. The court under S.124 must formulate an issue rather than relying on a rule of estoppel if it is prima facie convinced that the trademark in question is covered by S.9 or S.11 of the Act. At this point, the defendant's actions are no longer relevant.
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