Preparatory use of a mark as legitimate use

By Manisha Singh and Omesh Puri, LexOrbis

To prevent the cancellation of a trademark due to non-use, the owner must use the mark within a specified timeframe. Under section 47 of the Trade Marks Act, 1999, an aggrieved party may petition for cancellation of the mark because of non-use. This is when the registered mark has not been put to actual use by the proprietor for the goods and services covered by its registration. A registered mark is vulnerable to non-use cancellation after 60 months from the date of granting the registration, that is the date the mark is entered in the register of trademarks.

Manisha Singh, LexOrbis
Manisha Singh

In the recent case of Burger King Corporation v Ranjan Gupta and Ors, the Delhi High Court dismissed the defendants’ claim of invalidity against the plaintiff’s mark Burger King in its judgment dated 6 March 2023. The plaintiff was granted an interim injunction in 2014, which was subsequently confirmed until final adjudication. The defendants appealed. One of the defences was that the plaintiff’s registered trademark, Burger King, should be cancelled. The first issue to be determined was whether the defendants’ argument was tenable.

The court held that tenability serves as a legal gateway to ensure that defendants cannot file unmeritorious rectification proceedings. Without this safeguard, defendants could challenge the plaintiff’s registrations by filing baseless and untenable rectification petitions. The legislature has thus required tenability where rectification proceedings are brought after an infringement suit is filed, while no such requirement exists in cases where rectification proceedings are started before the suit.

The defendants argued that the plaintiff’s registered trademark Burger King is liable to be cancelled as the word Burger is generic and common, the word King is laudatory and the two cannot create a distinctive trademark. According to the defendants, the plaintiff’s trademark should be cancelled for non-use, as it was not being used in India when the suit was filed in 2014.

Omesh Puri, LexOrbis
Omesh Puri

The plaintiff argued that it has used the trademark Burger King since 1954, and the mark has acquired a secondary meaning and is exclusively associated with the plaintiff. The plaintiff maintained that the trademark Burger King had been used within the 60 days from registration and that there had been no intention to abandon it. The plaintiff submitted documents to show its use of the mark before entering the Indian market, including a board resolution in 2013 to allow the mark to be used by a company to be incorporated in India. The incorporation certificate dated 2013 for Burger King Private Limited to provide restaurant services in India was also provided. Posts on the plaintiff’s website and newspaper articles were shown relating to the decision to enter the Indian market.

The court recognised the plaintiff’s preparatory use of the mark before entering the market as a valid use of the mark and held that since the defendants had attempted to register an identical mark, they could not argue that the plaintiff’s mark was generic. The court held that the plaintiff had proved the use of the trademark Burger King in India and its intention to maintain this trademark.

The defendants argued that the trademark Burger King was generic, common to trade and could not be registered. However, the plaintiff drew attention to the trademark applications filed by the defendants for the trademark and its device marks. The plaintiff argued that the defendants were estopped from advancing non-registrability. The court held that defendants were estopped from pleading that the trademark Burger King was generic and common to trade. The defendants’ arguments that the trademark Burger King was generic, common to trade, and could not be registered were rejected by the court.

The case highlights the importance of using a registered trademark within a specified time frame to prevent attempts to cancel it due to non-use. The court acknowledged the plaintiff’s preparatory use of the mark before entering the market as legitimate use, concluding that the defendants’ effort to register an identical mark prevented them from asserting that the plaintiff’s mark was generic. This decision reinforces the legal protection that precludes defendants initiating rectification proceedings in response to infringement actions unless their claim of invalidity is initially viable.

Manisha Singh and Omesh Puri are partners at LexOrbis.

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