A Pune trial court dismissed Burger King Corporation’s infringement suit in July 2024 after finding the trademark prior rights and use of local “Burger King” to be a prior user within the meaning of Section 34. The Bombay High Court then restrained the local outlet in December 2024 while hearing the appeal—only for the Supreme Court to stay that restraint on 7 March 2025, restoring the local status quo until the High Court decides the appeal. The doctrinal spine: Section 34’s prior-user shield and the Toyota Prius territoriality rule—foreign fame doesn’t automatically win in India unless you prove reputation here before the defendant’s adoption.
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Why founders and litigators should care
- Local first use can trump global registration—at least in that user’s market area—if you can prove continuous, honest use predating the registrant’s entry. That’s Section 34 in action.
- Global fame ≠ Indian reputation by default. After Toyota Prius, courts require evidence of Indian goodwill prior to the junior user’s adoption. Mere international renown won’t do.
- On appeal, expect status-quo protection. Appellate courts often prefer interim restraint to avoid market churn while they hear the case; the Supreme Court may recalibrate that balance if warranted, as it did here by staying the HC restraint.
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The case in three moves (reasoning before result)
1) Trial court (Pune) — Prior user wins (July 16, 2024)
Reasoning: The District Judge recorded that the defendants had used “BURGER KING” locally since 1991–1992, whereas Burger King’s Class 42 (restaurant services) registration dates to 06.10.2006 and Indian restaurant operations began in 2014. The court concluded that the plaintiff failed to establish actionable infringement/passing off in India, including a lack of admissible proof of Indian reputation covering the defendants’ earlier adoption. Section 34 therefore shielded the local user for restaurant services in its territory.
Conclusion: Suit dismissed; no perpetual injunction; damages declined.
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2) High Court (Mumbai) — Appeal + interim restraint (Dec 2, 2024)
Reasoning: On appeal, a Division Bench granted interim relief, restraining the Pune outlet from using “Burger King” pending the appeal—classic status-quo preservation to prevent alleged confusion while the record is scrutinized. News reports and the SC’s docket reflect the HC’s 02.12.2024 interim order.
Conclusion: Temporary restraint against the local outlet until the appeal is decided.
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3) Supreme Court — Stay of HC restraint (Mar 7, 2025)
Reasoning: The SC, hearing the local outlet’s SLP, stayed the HC’s restraint, noting the underlying suit stands dismissed. It allowed the Bombay High Court to proceed on merits expeditiously, but kept the HC’s interim order in abeyance in the meantime.
Conclusion: Local outlet may continue using the name temporarily, while the HC appeal is heard. (Not a final ruling on rights.)
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What actually decides “global fame vs local first-use”?
| Question | Court’s lens | Practical proof to win it |
|---|---|---|
| Who used first in India? | Section 34 protects prior, continuous, honest use—often territorial to the local market. | Licenses, bills, photographs, ads, staff affidavits, tax/GST history before registrant’s Indian launch. |
| Does foreign fame suffice? | Toyota Prius requires Indian reputation before defendant’s adoption. | Indian press, ads, sales, enquiries, web analytics geo-data pre-adoption—not just global clippings. ( |
| Interim appeal posture | HC may restrain to preserve status quo pending appeal. SC can re-balance. | Be ready to argue hardship and equities on stay applications both ways. |
Flowchart — How to run (or resist) a prior-user defence
Fix your timeline → Prove continuous local use → Test Toyota/territoriality → Frame appellate strategy
- Timeline discipline: Build a dated chronology: first signage, menus, municipal/food licenses, early invoices, photos, media coverage.
- Continuity & geography: Show no gaps and define the market area (e.g., Pune/Camp/Koregaon Park). Section 34 shields use in relation to those goods/services in that area.
- Territorial reputation (for registrant): If you’re the multinational, prove Indian reputation before the defendant’s start date (not just global fame). Prius demands it.
- Appeal posture: Expect status-quo orders; prepare stay or vacate-stay strategies citing hardship, consumer impact, and public-interest angles.
Case timeline (compressed)
- 1991–1992: Pune outlet begins using BURGER KING locally (trial court record).
- 2006: BKC obtains Class 42 (restaurant services) registration in India.
- 2014–2015: BKC opens outlets in India, including in Pune.
- 16 Jul 2024: Trial court dismisses BKC’s suit, credits prior local use.
- 02 Dec 2024: Bombay HC grants interim restraint pending appeal.
- 07 Mar 2025: Supreme Court stays the HC restraint; HC to decide the appeal expeditiously.
Checklist — Building (or breaking) a Section 34 shield
- Five pillars of “prior use”: (i) Start date, (ii) Continuity, (iii) Good faith, (iv) Market area, (v) Same goods/services. Put proof for each in the affidavit.
- Registrants (global brands): Assemble India-specific reputation pre-adoption: Indian media, consumer surveys, inquiries, distributor deals, website traffic from India, not just global buzz. Prius is your benchmark.
- Interim playbook on appeal: Prepare both sides of status quo arguments—preserve goodwill vs avoid market disruption—and be ready for SC calibration.
Sparring-partner skeptic check (calling out easy assumptions)
- “But it’s a famous global mark—surely that wins?” Not unless you prove Indian reputation before the defendant’s start date. Territoriality controls.
- “Prior use means permanent immunity.” No; it’s co-existence bounded by proof (goods/services, territory, continuity). Weak evidence narrows protection.
- “An HC restraint settles it.” It’s interim, and the SC can stay it—as here—pending a full merits hearing. Don’t over-read provisional orders.
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About the Author
Suresh Kumar, Advocate, is the Managing Attorney at Unimarks Legal Solutions, Chennai. Practising since 2008, he focuses on trademark infringement and passing off, appeals from the Registrar, rectification, and online/platform enforcement before the Madras High Court (IPD), Commercial Courts, and District Courts across Tamil Nadu. His practice is courtroom-first, grounded in robust pleadings, evidence discipline, and post-order enforcement. He frequently speaks on IP law at industrial forums and universities and is associated with SICCI, CII, and the Tamil Nadu Chamber of Commerce.
Sources: Pune trial court judgment (16 Jul 2024); Bombay HC interim restraint (02 Dec 2024) reported contemporaneously; Supreme Court stay of HC restraint (07 Mar 2025); Section 34 commentary and Toyota Prius on territorial reputation.
This article is for information and education. It is not legal advice, does not create a lawyer–client relationship, and avoids case-specific recommendations. Conflicts are screened per firm policy before any engagement.
