‘Frappuccino a Starbucks trademark,’ the Delhi High Court says, prohibiting a café in Jaipur

The Delhi High Court has ruled in favor of the well-known coffee shop chain Starbucks Corporation, permanently restraining a Jaipur café from using its registered Frappuccino brand unlawfully and awarding nearly Rs. 13 lakh in action costs.  Starbucks was arguing that it’s the “listed owner” of the trademark “FRAPPUCCINO” before a single judge bench of Justice Navin Chawla, and the HC determined that Starbucks has “a global character in the said mark.

In ruling in the pot’s favor, the HC stated, “The defendant’s use of the mark “FRAPPUCCINO” is dishonest and intended to deceive an unknowing client. It amounts to a trademark violation and would cause the defendants’ goods to be misrepresented as those of the complainant (Starbucks).

Starbucks asked the court to “permanently enjoin” the defendant cafe from using the registered trademark “FRAPPUCCINO” or any other confusingly similar mark in connection with its goods and services.

Starbucks also demanded monetary damages, an accounting of gains made immorally by the defendants (the cafe’s driver and the cafe itself), and a court order directing the delivery and transfer to Starbucks for the destruction of all allegedly unlawful goods, including menu cards and other particulars bearing the “FRAPPUCCINO” trademark.  Starbucks discovered in 2018 that the Elff ChipsFrappuccinoO was being sold by the Jaipur-based LOL Cafe without the company’s knowledge, agreement, or consent.

The order states that “the defendants were also about the libation name “Frappucino” on the electronic menu cards of their eatery, which are also being uploaded on third-party table doors like “Zomato” and “EazyDiner” for creation and announcement.

Starbucks served the defendants with a cease-and-desist notice on December 1, 2018, demanding that they stop using their registered mark “FRAPPUCCINO. The defendants made no response to the announcement. A follow-up letter was sent on January 8, 2019, but it was also disregarded.

Starbucks claimed in court that it had received assurances over the phone from the director of LOL Cafe that they would stop using the mark “FRAPPUCCINO” and would change their electronic menu cards that are posted on third-party websites such as “Zomato” and “EazyDiner. Still, despite the director of the cafe’s pledge, it was discovered through an internal inquiry that the LOL Cafe continued to vend its goods under the disputed trademark.

The defendants received a fresh notice on May 8, 2019, requesting them to respond within a week, but there had been no reaction to the original notice. Starbucks said that the defendants violated its listed trademark and were ashamed of themselves for passing off their goods as those of the complainant (Starbucks). They said that the defendant’s mark was identical to their trademark, ” FRAPPUCCINO,” and that the defendant’s use of the mark in question was not justified.

In its ruling in favor of the chain of coffee shops, the HC noted in its order from November 17 that the defendants had espoused a mark that was identical to Starbucks’ registered mark, “FRAPPUCCINO,” and had done so “supposedly intending to deceive an unwary consumer and to ride upon the character of the HC also stated that, as stated in the complaint, Starbucks used the “FRAPPUCCINO” mark in conjunction with a suffix that represented the flavors of its drinks, such as “Java Chip Frappuccino” and others.

The HC held that the complainant, in the absence of any defense and in light of the uncontested claims contained in the lawsuit and in the documents attached thereto, he was not only  able to prove his rightin the mark “FRAPPUCCINO,” but also the violation and passing out of the said mark by the defendants. 

Despite service, the HC stated that LOL Cafe and its parent business had failed to appear before the HC. On August 23, 2019, the defendants were served with processes, and an ex-parte announcement and interim instruction were issued against them.

Affirming that analogous damages should be granted in favor of the complainant and against the defendants in the current action as well, the High Court relied on its own decision in Starbucks Corporation vs. Tequila A Fashion Cafe & Anr, in which it had awarded Starbucks damages of Rs. 2 lakh.

In addition to court costs, the high court granted Starbucks status as a “legal figure” and ruled that the complainant was also entitled to the action’s costs. In addition to the court cost, the complainant has submitted an “Advocate Fee Certificate” with a legal figure of Rs. from the attorney. The same is determined to be reasonable, and as a result, the complainant wins, and the defendants lose.

Background

A business that was registered and operating under American law in the State of Washington was the subject of the lawsuit (USA). The claimant, Starbucks Corporation, was formed in 1985 and used the registered trademark “Frappuccino” and its derivatives to sell their globally popular and expertly produced blended cold drinks.  These drinks were available in a range of flavours and were also marketed in bottles in many different nations.

For several nations where drinks bearing the “Frappuccino” mark were vended in “Starbucks” outlets, the complainant created customized flavors.

In the Philippines, Switzerland, and Australia, beverages carrying the mark “Frappuccino” and in flavors similar to those of “Banana Java Chip,” “Mango Azuki,” and “Blackberry Green Tea” was designed for short-term elevations, while others were developed for long-term menu operation.  Also, the complainant had spent a substantial sum on advertising and marketing its goods and services, including those sold under the “Frappuccino” marks, and its sales numbers for the multitudinous particulars retailed under the “Frappuccino” marks were in the billions of US dollars.

 The complainant and “Tata Coffee Ltd. agreed to form an equity joint venture to open retail stores in India, and “data Starbucks Private Limited” was subsequently established in 2011. Later, in 2012, the complainant opened its first store in Mumbai and registered the trademark “Frappuccino” in colorful classes in India.

Edited by Prakriti Arora