Delhi High Court: In a suit for permanent injunction restraining the defendants from infringing and/or passing off the Starbuck’s registered trade mark, the Single Judge Bench of Prathiba M. Singh, J. held that the adoption of mark by the defendant was dishonest and intended to deceive customers, hence, awarded Rs. 2 lakhs damages in favour of Starbucks.
Background
Plaintiff was a company that was organized and existed under the law of the State of Washington, the United States of America (USA). In 1985, the plaintiff was incorporated as ‘Starbucks Corporation’ and under its registered trade mark ‘Frappuccino’ and the variations thereof, offered its widely popular hand-crafted blended cold beverages throughout the world, which were also sold in bottled form in many countries in a variety of flavours.
Plaintiff developed specific flavours for various countries in which beverages under the ‘Frappuccino’ mark were available in the ‘Starbucks’ stores. Some flavours were developed for short-term promotions, while some were developed for long-term menu use, such as beverages bearing the mark ‘Frappuccino’ and in flavours including but not limited to ‘Banana Java Chip’, ‘mango-Azuki’, ‘Blackberry Green Tea’ in the Philippines, Switzerland, and Australia. Moreover, the plaintiff’s sales figure in relation to the various products sold under ‘Frappuccino’ marks were in billions of US Dollars and it had spent substantial amount on advertisement and promotion of its products and services, including in ‘Frappuccino’ marks.
In 2011, plaintiff signed a pact with ‘Tata Coffee Ltd.’ to open retail stores in India by way of equity joint venture and later ‘Tata Starbucks Private Limited’ was incorporated in 2011. Later, the plaintiff opened its first store in 2012 in Mumbai and obtained registration of the trade mark ‘Frappuccino’ in India in various classes.
Submissions on behalf of the Plaintiff
It was submitted that in 2018, it was brought to the notice of the plaintiff that defendants were operating a café/restaurant in Rajasthan, wherein a beverage under the name of ‘Brownie Chips Frappuccino’ was being sold without the plaintiff’s permission, authorization, or license. Moreover, defendants also referred to the beverage name ‘Frappuccino’ on the electric menu cards of their establishment, which were also being uploaded on third-party portals like, ‘Zomato’ and ‘EasyDiner’ for promotion and advertisement.
Further, it was submitted that the plaintiffs sent notices to defendants to stop the use of plaintiff’s registered mark ‘Frappuccino’ but even after repeated reminders no response was received. Therefore, it was submitted that the defendants were not only infringing the registered trade mark but were also guilty of passing off their product as those of the plaintiffs.
Counsel for the plaintiff placed reliance on Starbucks Corporation v. Jail Café, 2019 SCC OnLine Del 12301 (Jail Café case) and Starbucks Corporation v. Teaquila A Fashion Café, 2022 SCC OnLine Del 1381 (Tequila A Fashion Café case), wherein this Court provided protection to the plaintiff’s mark ‘Frappuccino’ and damages were also awarded to the plaintiffs.
Analysis, Law, and Decision
The Court noted that the plaintiff was a registered proprietor of the mark ‘Frappuccino’ as was evident from the plaint and documents filed with it. Further, the Court opined that the defendants had adopted an identical mark, with the prefix ‘Brownie Chip’ used by the defendants with the registered mark of the plaintiff ‘Frappuccino’ intending to deceive a customer and to ride upon the reputation of the mark. Moreover, the plaintiff itself used its mark ‘Frappuccino’ with a suffix depicting the flavours of its beverages, like ‘Java Chip Frappuccino’.
The Court held that the adoption of mark ‘Frappuccino’ by the defendants was dishonest and was intended to deceive a consumer. Moreover, it amounted to infringement of the plaintiff’s trade mark and would also result in passing off the goods of the defendants as that of the plaintiffs. The Court placed its reliance on Jail Café case and Teaquila A Fashion Café case to reach the said conclusion. The Court further opined that in Teaquila A Fashion Café case, this Court awarded damages of Rs. 2,00,000 in favour of the plaintiff and against the defendant, similarly damages deserved to be awarded in favour of the plaintiff and against the defendant in the present case as well. Further the Court also awarded legal fees of around Rs. 13 lakhs filed as ‘Advocate Fee Certificate’ in favour of plaintiff and against defendants.
[Starbucks Corporation v. Lol Café, 2022 SCC OnLine Del 3878, decided on 17-11-2022]
Advocates who appeared in this case:
For the Plaintiff(s): Advocate Priya Adlakha;
Advocate Bindra Rana;
Advocate Rima Majumdar;
Advocate Shipli Sinha.