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  • Writer's pictureAnkita Sabharwal

“Frappuccino” an exclusive trade mark of Starbucks: High Court




Introduction


The Hon’ble High Court of Delhi in the case of Starbucks Corporation v. LOL Cafe & Anr[1] has restrained a Jaipur-based café for infringement of the ‘FRAPPUCCINO’ trade mark. The court, while relying on the global reputation of the Starbucks chain, held that the Defendant’s use of the mark ‘BROWNIE Chips FRAPPUCCINO’ was dishonest and, is intended to deceive an unwary consumer. The Court also awarded litigation costs to Starbucks amounting to INR 13,38,917.85 (approx. USD 15,764.55) for the institution of the present suit.


Background


The present suit was instituted by Starbucks Corporation (hereinafter the “Plaintiff”) against LOL Cafe and Others (hereinafter the “Defendant”) alleging infringement of its mark ‘FRAPPUCCINO’. It was the case of the Plaintiff that the Defendant was operating a cafe/restaurant in Jaipur, Rajasthan, wherein a beverage under the name of ‘BROWNIE Chips FRAPPUCCINO’ was being sold without the plaintiff’s permission, authorization, or license. It was asserted by the Plaintiff that the Defendant was also making reference to the beverage name ‘Frappuccino’ on the electric menu cards of their establishment, which were uploaded on third-party listing portals including ‘Zomato’ and ‘EazyDiner’ for promotion and advertisement.


To support its assertions, the Plaintiff affirmed that it used the trade mark ‘FRAPPUCCINO’ in 30,626 ‘Starbucks’ stores in 80 countries and territories, as well as a bottled-coffee beverage that is distributed to multiple third-party grocery, retail and wholesale stores globally. The plaintiff affirmed that it was selling several beverages bearing the mark ‘FRAPPUCCINO’ in flavors including but not limited to ‘Banana Java Chip’, ‘Mango-Azuki’, ‘Blackberry Green Tea’ in the Philippines, Switzerland, and Australia. Specifically in India, the Plaintiff stated that in January 2011, it signed a pact with ‘Tata Coffee Ltd’. to open retail stores in India by way of equity joint venture. Since then, the plaintiff has expanded its presence in India by opening at least 145 ‘Starbucks’ stores in various cities across India. The plaintiff has also obtained registration of the trade mark ‘FRAPPUCCINO’ in India in various classes.


It was the case of the Plaintiff that initially, on a telephonic conversation with the director of the Defendant, its advocate was assured that the Defendant would cease all use of the mark ‘FRAPPUCCINO’ and will update their electronic menu cards which are listed on third-party portals like ‘Zomato’ and ‘EazyDiner’. However, through an internal investigation, it was found that the LOL Cafe continued to sell its products under the impugned trade mark despite the undertaking of the cafe’s director.


It was argued that an ex-parte injunction was already in force against the Defendant since August 23, 2019.


Findings of the Court


The Court while upholding infringement by the Defendant held that the prefix ‘BROWNIE Chip’ used by the Defendant with the registered mark of the plaintiff ‘FRAPPUCCINO’ was intending to deceive an unwary consumer and to ride upon the reputation of the mark. It was observed by the Court that the plaintiff itself used its mark ‘FRAPPUCCINO’ with a suffix depicting the flavors of its beverages, like ‘Java Chip Frappuccino’ etc. Thus, the adoption of the mark ‘FRAPPUCCINO’ by the defendants is, therefore, dishonest, and is intended to deceive an unwary consumer.


Placing reliance on its own order in Starbucks Corporation vs Teaquila A Fashion Cafe & Anr case, wherein the High Court had awarded damages of Rs. 2 lakhs to Starbucks, the Court awarded litigation costs to Starbucks amounting to INR 13,38,917.85 (approx. USD 15,764.55) for the institution of the present suit. The Court, while upholding the objectives of the Commercial Courts Act, 2015 noted that the Plaintiff was not required to undertake the exercise of proving the facts and documents that are otherwise not disputed, such as in the present case.


Conclusion:


In today’s age, Starbucks is truly one of the global brands which has acquired worldwide reputation and has become synonymous with some beverages. Orders of this nature play an integral role in preventing these brands from getting diluted, especially in such a fast-paced and cluttered marketspace. The Indian courts have been instrumental in imposing high costs against offenders in the recent past, in order to create effective deterrence within the IP ecosystem.


[1] 2022/DHC/004921

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