The Burger King Corporation V Swapnil Patil case. Here the MUST things you should know about:

WE know Justice delayed is justice denied. One does not need to be a lawyer to appreciate the significance of the legal maxim, which is the Magna Carta of the Indian Constitution.

To ensure timely and effective enforcement of intellectual property rights, courts use a number of measures, such as injunctions, search and seizure orders, and so on. These interim remedies are critical in ensuring the owner’s intellectual property rights are protected as early as possible. Before issuing injunctions or interlocutory orders, the Courts generally provide notice to the opposing party. Still, even the slightest delay in getting an injunction might cause irreparable harm to the plaintiff. In such instances, the Courts may waive the requirement of providing notice to the opposing party and grant an exparte ad interim injunction. However, the doctrine is that ex parte injunctions should be granted only where notifying the infringer would negate the purpose of the injunction.

The Delhi High Court issued an ex parte injunction against the infringement in the recent case of “Cisaco Technologies v. Shrikant 2005 (31) PTC 538 (Del.).” Besides that, the Court issued a detailed interlocutory injunction to ensure the swift enforcement of the trademark rights of Cisaco Technologies.

Another landmark case related to ex parte ad interim injunction is “Gujarat Cooperative Milk Marketing Federation Ltd. and Anr. v Maruti Metals and Ors where an ad-interim order was passed in favour of Amul.”

Let’s discuss the Case Facts of Burger King:

Burger King claims to be the world’s second-largest hamburger corporation, managing and operating a global chain of over 18,000 fast-food outlets serving over 1 million customers daily in over 100 countries and US territory.

Since opening its first restaurant in India in 2014, Burger King Corporation claimed that it has opened many more BURGER KING restaurants around the country, including in Gurgaon, Noida, Mumbai, and other cities and that it now operates over 250 BURGER KING restaurants in India.

Plaintiff was informed by its Indian Franchisee about the presence of the website www.burgerkingfranchises.in or around March 2021 and that Defendant No. 2 was duping naïve members of the public into assuming he was a representative of Burger King India Limited.

Issues:

  • Whether Defendant’s impugned marks infringe the Plaintiff’s registered trademarks?
  • Whether an injunction could be granted against the defendants or not?

Contentions from the side of Plaintiff:

Plaintiff claimed that defendant No.2 was allegedly offered the opportunity to run a BURGER KING café, bar, or restaurant. Defendants Nos. 1 and 3 were charged with registering fraudulent domain names that featured Plaintiff’s BURGER KING trademarks and operating fake websites that solicited the general public to apply for BURGER KING franchise opportunities.

It was further claimed that Defendant No. 5 was involved in registering fake domain names that included Plaintiff’s BURGER KING trademarks and operating fraudulent websites that solicited the general public to apply for BURGER KING franchise opportunities.

It was claimed that the major defendants operate in a highly covert manner and have not displayed their true address on their website. The address displayed on the Defendants’ website was Burger King India Limited (the old name of Plaintiff’s Indian Franchisee), which was clearly another attempt to mislead consumers into thinking Plaintiff’s operations were sanctioned.

Learned counsel for the Plaintiff relies upon an order dated 18.07.2017 passed in HCL Technologies Ltd. & Anr. vs. Ajay Kumar & Ors. in CS(COMM) 466/2017, order dated 17.08.2020 in MCDONALDS Corporation and Anr. vs. National Internet Exchange of India and Ors. in CS(COMM) 324/2020 and order dated 14.07.2020 in INDIAMART Intermesh Limited vs. Mr. Akash Verma and Ors. in CS(COMM) 255/2020, where directions to freeze bank accounts and disclosure of particulars of Defendants were passed.

Judgment: 

The Delhi High Court granted an ex parte ad interim injunction in favour of ‘BURGER KING‘ in its trademark infringement suit against the defendants, stating that they were exploiting its registered trademarks, registering unauthorised domain names featuring the term ‘BURGER KING,’ and operating fraudulent websites without its approval and authority.

As a result, Justice Jyoti Singh restrained the defendants from using or registering corporate names, domain names, or pages containing the trademarks BURGER KING, BK, or any mark that is confusingly similar to Plaintiff’s trademarks. The court also ordered the release of WHOIS information for the domain names www.burgerkingfranchises.co.in and www.burgerkingfranchises.in, as well as the restriction of access to those sites.

It also ordered the domain names www.burgerkingfranchises.co.in and www.burgerkingfranchises.in to be blocked and disabled. In addition, instructions were given for the issuance of Notifications to various Internet Service Providers or licensees, directing them to prohibit access to the websites at www.burgerkingfranchises.co.in and www.burgerkingfranchises.in.

Having heard the learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiff, and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted,” the Court observed.

As a result, the Court ordered Plaintiff to comply with Order 39 Rule 3 CPC within two weeks of receiving the order.

Conclusion: The court was right in granting an ex parte injunction in favour of the plaintiff as the defendants were using the domain names and trademarks of the plaintiff in an unlawful manner with the intention of committing fraud against the general public. The slightest delay in getting an injunction might cause irreparable harm to the plaintiff. In such instances, the Courts may waive the requirement of providing notice to the opposing party and grant an exparte ad interim injunction.

References

  1. https://www.livelaw.in/news-updates/punjab-haryana-high-court-section-82-crpc-proclamation-30-days-period-mandatory-appearance-199658?infinitescroll=1
  2. https://www.barelaw.in/in-a-trademark-infringement-case-the-delhi-high-court-grants-burger-king-an-ex-parte-ad-interim-injunction/?utm_source=rss&utm_medium=rss&utm_campaign=in-a-trademark-infringement-case-the-delhi-high-court-grants-burger-king-an-ex-parte-ad-interim-injunction
  3. https://www.mondaq.com/india/trademark/36558/exparte-interim-relief-in-trademark-disputes-judicial-approach
  4. https://www.barandbench.com/news/litigation/delhi-high-court-ex-parte-interim-injunction-amul-trademark-infringement
  5. https://www.khuranaandkhurana.com/2020/05/26/ex-parte-interim-orders-ex-parte-relief/

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Sukrati Gupta is a law student pursuing BBA LLB (Hons) from SVKM’s NMIMS Kirit P Mehta School of Law, Mumbai. She is exploring various kinds of streams in law with enthusiasm in Intellectual Property law, Corporate law, ADR, etc. Sukrati has published various papers in Corporate law. She has a keen interest and experience in writing blogs and legal research articles.