The following case comes with a few IP law reminders. First, where trademarks are concerned, location and timing matter. Second, it is possible for both sides to lose in a trademark lawsuit. And finally, when the battle is between David and Goliath, sometimes David can lose even if they win.
All of these things are still playing out in a 13-year-old (and counting!) court battle in India between the U.S. Burger King Corporation and an Indian restaurant that also goes by Burger King – or at least used to. After losing their case in trial court this past July, Burger King Corporation has been given new life by the Bombay High Court, which agreed to hear their appeal.
How did we get here?
Burger King, Meet Burger King
Burger King Corporation was founded in the United States in 1953 and officially took on the name Burger King in 1959. It started opening restaurants outside of the U.S. in 1963. However, it did not start operating in India until 2014.
Before that, though, the corporation learned that a restaurant in the Indian city of Pune was named Burger King. In 2009, the corporation sent a cease and desist notice to the Indian Burger King, but the owners argued that Burger King Corporation had no common law rights because it did not have any restaurants in India. In response, Burger King Corporation filed a 2011 lawsuit claiming the Pune restaurant’s name violated its trademark and asked for damages.
The owners of the Pune restaurant had a clear, simple argument against that suit: not only had they been using the name Burger King since 1992 – 12 years before Burger King Corporation was even operating in India – their logos were significantly different. Whereas Burger King Corporation’s logo features the name between two buns, the Pune Burger King shows a crown between the words. Clearly, there was no visual deception, and according to them, little chance of consumer confusion. They also filed a countersuit against Burger King Corporation for two million Rupees, alleging that the corporation’s suit had damaged their business.
The Pune Trial Court Sides With Burger King… And Also Burger King
The headlines about the trial court’s July decision highlight the fact that the giant Burger King Corporation lost their case against a tiny Indian restaurant. In fact, in their decision the court wrote that the company had “miserably failed” in their attempt to prove trademark infringement. Burger King Corporation was denied damages, and the Indian Burger King was allowed to keep using that name.
A win for David against Goliath? Not exactly.
Despite Burger King Corporation losing the case, the court also denied the smaller restaurant’s counterclaim, saying they had provided no evidence of damages caused. Moreover, as the case dragged on and on, the owners of the Pune restaurant actually went ahead and changed the name on their own – from “Burger King” to, simply, “Burger.”
Then there is the fact that Burger King Corporation appealed the trial court’s decision. The Bombay High Court recently agreed to hear the case, granting interim relief from the trial court’s earlier order allowing the Pune restaurant to continue to use the name. The business was restrained from using it until September 6, when the case was supposed to be heard by the High Court. We have no further updates on that at this time.
Who Is Really Winning Here?
Obviously, this case is still ongoing, and the High Court’s decision will play a huge role in determining the final outcome. However, no matter how the case is ultimately decided, both sides have already lost quite a bit.
The Pune restaurant was pushed into changing its name. If the court decides in their favor, will the cost of going back to “Burger King” be worth it? Especially now that Burger King Corporation has numerous restaurants with the same name in their area?
An argument could be made that Burger King Corporation is winning by tying the smaller restaurant up in a court battle, getting them to change their name, and forcing them to spend lots of money and time they probably cannot afford. However, 13 years is a lot of time – and likely a lot of expense – for the burger giant as well. Especially when they are spending it on a single case against an individual restaurant in one city.
While companies like Burger King Corporation can and should protect their trademarks, perhaps this situation would have been better served by both businesses coming to an agreement with each other.