Pune’s local Burger King wins trademark battle against US food chain

A Pune court has dismissed US fast-food chain Burger King Corp.’s (BKC’s) 13-year-old case seeking to restrain a local eatery with the same name from using the ‘Burger King’ trademark.

Last week, the Pune district court passed an order rejecting BKC’s case filed in 2011 that sought a permanent injunction against the owners of the local eatery, which claimed that it had been in operation since 1992.

The fast-food giant had claimed that the restaurant in Pune’s cantonment area allegedly misused its trademark, “Burger King.”

The US fast-food chain argued that its brand was already well-known in India even before it had opened its first restaurant in 2014, supporting its claim.

BKC, which was founded in 1953 as Insta-Burger King, was renamed Burger King in 1959. It entered India in November 2014, opening its first outlet in Delhi before launching in Pune the next year.

The fast-food chain said it had sent a cease and desist notice to Anahita Irani and Shapoor Irani, a Parsi couple running the eatery in the city, in 2009 after finding out that they were using the name ‘Burger King’ for their restaurant.

In response, the couple said BKC could not claim any common law rights as there were no restaurants operating in India by that name at the time.

In 2011, BKC filed a lawsuit seeking damages, while claiming that the local restaurant’s name was a violation of its trademark.

The Pune couple argued that they had been using the name since 1992, over a decade before the US chain landed in India.

There was no similarity between the logos, which prevented anyone from confusing the Pune restaurant for the US chain.

Meanwhile, as the case continued, the Pune couple rebranded their eatery to ‘Burger’.

The court last week ruled in favor of the defendants, Anahita and Shapoor, recognizing their prior use of the name “Burger King” in Pune since 1992, before the American company had entered India.

It said that their use did not infringe the trademark or constitute ‘passing off’ according to the Trademarks Act, 1999. “Passing off” is a situation where a party misrepresents their goods or services as those of another, leading to confusion among consumers.

The Pune court also dismissed the defendants’ claim for damages as unfounded.

“Both Anahita and Shapoor Irani are the bona fide prior users of the name. They had been using the name “Burger King” for their restaurant since 1992, much before Burger King Corp. entered the Indian market,” advocate Abhijit Sarwate said.