In recent times, the disputes scaling between emerging brands like Prime and Mas+[i] to the well-established brands such as Burger King[ii] is surging. These disputes are circling around the protection of goodwill and reputation i.e., against infringement of trademark and trade dress. The intensifying competitive pressures emphasize on the upholding of distinctiveness and reputation of a brand for its survival.
Role of Trademark and Trade Dress in Brand Protection
But how does trademark and trade dress help in the same? It is the differentiable visual factor embodied in them which creates an association with the manufacturer. This ultimately fosters the brand identity.
Trademark[iii] is the graphical representation of goods, services or products. It can either be a word, phrase, symbol, design, or combination of these. A trade dress[iv] is the overall appearance of a product, including size, shape, colour combination etc.
| Concept | Description | Example |
|---|---|---|
| Trademark | Graphical representation of goods, services or products | The bitten apple logo on Apple devices |
| Trade Dress | Overall visual appearance of a product | Rectangular body with rounded corners of an iPhone |
Trans-Border Reputation vs Principle of Territoriality
Occasionally trademarks are protected even without being registered and business operation being carried out in that territory as the goodwill and the reputation created by trademark transcends the territory, this is generally known as the principle of trans-border reputation.
While according to the principle of territoriality a trademark gets protection in the territory it is registered and not worldwide. These two contrasting principles have paved the way toward a dialectical perspective of the same situation. And therefore, there have been instances where one was upheld and the other was overlooked.
The Pune Burger King Dispute
The recent Pune Burger King dispute could be dissected on the basis of interaction of these two principles. It all started in June 2009 when Burger King, a US based Corporation sent a cease-and-desist notice followed by a lawsuit filed in 2011 against Anahita and Shapoor Irani, the owners of Pune’s Burger King, alleging that the same name usage is causing damage to their brand reputation.
Following this, the Burger King Pune had modified their trade name to “Burger”.
Prior Use and Statutory Protection under Trademark Law
While the defendant, Burger King Pune has been using the tradename since 1992, the plaintiff had registered its trademark in India in 1979.
Section 34 of Trademark Act 1999[v] mentions about protection for prior use highlighting that a registered user of registered trade mark cannot interfere with the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior to the usage or registration of the trademark.
- Protection is granted to prior users of a trademark.
- Registration does not automatically override prior continuous use.
- The provision safeguards competing commercial interests.
This section safeguards the interest of parties by ensuring that the registration of a trademark does not directly override prior use.
Judicial Outcome
In accordance with the issues regarding maintainability of the evidence on part of the plaintiff and the doctrine of prior use, the District Court of Pune ruled in favour of the defendant. The plaintiff later moved to the Bombay High Court.
Other Aspect: Trans-Border Reputation and Universality Principle
But there is one more aspect through which the dispute in hand can be analysed, i.e., the trans-border reputation held by the US-based corporation. The landmark case of NR Dongre vs Whirlpool Corporation [(1996) 5 SCC 714][vi] introduced the concept of trans-border reputation in India. The Supreme Court observed that protection can be granted to a trademark without its actual presence, but on the basis of extensive advertisement which has led to the creation of reputation.
The US-based corporation, Burger King, was established in 1954[vii] and is the second-largest hamburger chain. This increases its probability of gaining popularity and establishing reputation in other countries as well.
Shift in Judicial Approach: The Prius Case
But a recent verdict passed by the Supreme Court in Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited [(2018) 2 SCC 1][viii] has fundamentally altered this approach. The Court stated that the presence of reputation is not enough and that the mark should have also acquired substantial goodwill in the Indian territory.
This verdict lays an important emphasis on two concepts, i.e., goodwill and reputation being distinct. It also decisively places the principle of territoriality over the principle of universality.
- Reputation alone is insufficient for trademark protection.
- Substantial goodwill must exist within Indian territory.
- Territoriality is preferred over universality in trademark disputes.
In line with this approach, the defendant argued that the Burger King Corporation cannot claim prior user status as it had no reputation in India and had not commenced its business before 1992.
Bombay High Court Interim Relief (2024)
But on December 2, 2024, the Bombay High Court granted continuation of an interim relief in favour of Burger King Corporation which was originally passed in 2012. According to the High Court, there is no justifiable explanation as to how the defendant adopted the name “Burger King”. Therefore, the defendant cannot take the defence of prior use as the plaintiff’s mark was well known all over the world.
Conclusion
While brands try to use elements that could be understood by a large consumer base, at the same time they are required to maintain distinctiveness. This distinct element not only helps the brand to protect their trademark and trade dress but also makes it stand out in the competition.
But with globalization, markets are becoming crowded with multiple brands, making it difficult to maintain their identity. The dispute between Burger King Corporation and the local eatery is a prime illustration of the same.
While the universality principle has a substantial influence over trademark law, it is because of the congested market that has increased the instances of prioritizing the territoriality principle over it. Although the protection of well-known brands is important, this should be balanced with the local brand’s ability to operate and grow. References:
- Logan Paul vs Messi: Prime faces legal action from Mas+. Source: www.reuters.com
- Burger King vs Burger King: Pune outlet wins 13-year battle against global giant – India Today. Source: www.indiatoday.in
- Trade Marks Act, 1999. Source: https://legislative.gov.in/sites/default/files/A1999-47.pdf
- Trade Dress Definition & Meaning | Merriam-Webster Legal. Source: www.merriam-webster.com/legal/trade%20dress
- Trade Marks Act, 1999 (India).
- N.R. Dongre and Others vs Whirlpool Corporation and Another, decided on 30 August 1996. Source: www.indiankanoon.org
- Burger King Corporation | History & Facts | Britannica Money. Source: www.britannica.com/money/Burger-King-Corporation
- Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited, decided on 14 December 2017. Source: www.indiankanoon.org
