Virender Kumar Gupta v. Burger King Corporation and Anr.

1. The present rectification petitions have been filed on behalf of the petitioner seeking cancellation/removal of the following marks registered in the name of the respondent no.1, from the Register of Trade Marks: i. under registration no. 2011497 in class 43 ii. under registration no.1494245 in class 42 iii. under registration no. 1615231 in class 29 BANSAL C.O. (COMM.IPD-TM) 568/2022 and connected Page 3of 5 iv.

2. The rectification petitions were filed before the IPAB and the same have been transferred to this Court pursuant to the enactment of the Tribunal Reforms Act, 2021. The rectification petitions have been contested on behalf of the respondent no.1 by filing a counter-statement.

3. Earlier, the respondent no.1, Burger King Corporation, had instituted a suit being CS(COMM) 2200/2014 in the year 2014(later renumbered as CS(COMM) 229/2018), inter alia, against the petitioner herein, Mr. Virender Kumar Gupta, who was the defendant no.2 in the suit. In the aforesaid suit, the respondent no.1 had sought a decree of permanent injunction against the petitioner herein and other defendants restraining them from infringing the trademark ‘BURGER KING’ as well as passing off their goods as that of the respondent no.1.

4. In the aforesaid suit, the petitioner herein had sought to raise an issue with regard to invalidity of the registrations of the trademark ‘BURGER KING’ of the respondent no.1 herein. Vide judgment dated 6th March, 2023 passed in the said suit, I had held that the plea raised by the defendant in the suit with regard to invalidity of the registrations granted in favour of the plaintiff in respect of its trademark ‘BURGER KING’ and other formative marks, is prima facie not tenable and therefore, no issue with regard to validity of registrations of the trademarks of the plaintiff is liable to be framed in the suit.

5. Placing reliance on the judgment of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd, (2018) 2 SCC 112,it was observed that the jurisdiction with regard to rectification of a mark under Section 124 BANSAL C.O. (COMM.IPD-TM) 568/2022 and connected Page 4of 5 Trademarks Act, 1999 can be exercised only upon finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. Relevant paragraphs of the judgment in the aforesaid suit are set out below: “12. I am in agreement with the submission of the plaintiff that the finding of prima facie tenability is a statutory safeguard to ensure that the defendants do not file rectification proceedings as a counter blast to the infringement actions against them, unless their plea of invalidity is prima facie tenable. If this were not so, the defendants would be permitted to challenge the registrations of the plaintiff by filing rectification petitions on frivolous and untenable grounds. It is for this reason that the legislature has placed the safeguard of prima facie tenability in cases where the rectification proceedings are filed after a suit for infringement has been filed, whereas no such safeguard is there in cases where rectification proceedings have been filed before the suit.

13. In Patel Field Marshal (supra), the Supreme Court observed that where a civil suit is pending, the jurisdiction can be exercised by a statutory authority only on account of finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. It was further observed that such a finding is a basic requirement so that false, frivolous and untenable claims of invalidity are not raised.”

6. The petitioner has filed an appeal against the aforesaid judgment before the Division Bench of this Court. However, the said appeal was withdrawn by the petitioner on 18th April, 2023 with liberty to file a Special Leave Petition before the Supreme Court.

7. Since the rectification petitions were admittedly filed after filing of the aforesaid suit, in terms of the judgment in Patel Field Marshal (supra), the rectification petitions could only be filed upon finding of the Civil Court BANSAL C.O. (COMM.IPD-TM) 568/2022 and connected Page 5of 5 as regards the prima facie tenability of the plea of invalidity.

8. In view of my aforesaid findings in the judgment dated 6th March, 2023 in CS(COMM)229/2018, the rectification petitions are not maintainable. Consequently, the rectification petitions are dismissed. AMIT BANSAL, J. APRIL 21, 2023 BANSAL