Delhi High Court STARBUCKS
CORPORATION
V.
SARDARBUKSH COFFEE & CO.
& ORS.
CS (COMM) 1007/2018 & I.A.Nos.9022/2018, 10113/2018
Bench:
Hon’ble Justice Manmohan Decided on: 27th September 2018
Name of Student – Rahul Jindal Course: BALLB (HONS)
Year: 3rd year
College: Gd Goenka University
Introduction
The Case Comment takes the reader on a ride to the section 2 (1) (h) and section 11 (2) of the trademark act, 1999. This case is basically based on the deceptively similar mark and the issue arise in this case is whether the mark of defendant is deceptively similar that of plaintiff or not.
This case is basically based on the deceptively matter and of intellectual property rights case in which it says that defendants has copied the trademark of the plaintiff.
Table of content
|
SNo. |
Topic |
Page. |
|
1. |
Facts of the case |
6-7 |
|
2. |
Question in Issue |
8 |
|
3. |
Rules Applicable |
9 |
|
4. |
Application / Analysis |
10-11 |
|
5. |
Conclusion |
12 |
|
6. |
Reference |
13 |
Facts of the case:
·
The suit was brought in by the Starbucks Corporation
alleging that sadarbuksh is copying their
company name as well as their logo which is too similar and close to their
famous 2- tailed mermaid and they
illegal use in their promotion of their products. Defendant has opened the
five coffee shops in Delhi and they are offering
a wide menu of coffee, snacks
and shakes. Defendant was accused of copying the similar logo as well as name which was very close to that of US global Starbucks coffee chain.
·
The plaintiff has already registered the word mark
Starbucks and the logo depicting a crowned
maiden with long hair in India in 2001. And the defendant started their
business in 2015 naming their venture
as Sadarbuksh coffee & co which define Sadar the Hindi word meaning
commander and buksh which define the word as pardon.
·
In May 2018, the defendant incorporated the business into
a private limited company with the
name as Sadarbuksh private limited and they have been carrying their business under that name since that date. Both the
plaintiff and the defendant provided the goods
and services are identical and the
defendant used a logo consisting that circular black band with the word Sadarbuksh coffee
and co and a device
of a turbaned commander
with the wavy lines extending from the sided in addition to reversing the use of the color scheme as compared to that of Starbucks logo.
· Sadarbuksh coffee and co has received
the letter of demand from the Starbucks
corporation in 2017, which states to change their logo by way of a
letter of demand. Further it was
modified to a color scheme of black and yellow and operation were commenced
with the newly modified logo.
·
Although, the Starbucks Corporation has filed the suit
against the Sadarbuksh coffee and co
for using their trade name sadarbuksh. On date august 01, 2018 the high court
of Delhi ordered the defendant to
modify their store name from sadarbuksh coffee and co to sadardji bakhsh coffee and co for 20 outlet that have not yet opened. However, the Delhi
high court permitted the use of previous name sadarbuksh coffee and co only for their two store which are operating in Delhi.
·
The legal perspective in this case is that it was the
case of deceptively similar analogy which is derived from section 2 (1) (h) read in section 11 of the trademark act, 1999 that
states that when two marks are put next to each other, if they cause confusion to viewers then therefore cannot registered.
·
On September 27, 2018 the parties exchange terms and
condition and they were put on record
with the Delhi high court. Finally, the defendant agreed to change their name
on the said terms.
Issue of the case:
·
Whether the sadarbuksh coffee & co (defendant) trademark
is deceptively similar to that of Starbucks corporation (plaintiff) trademark or not?
Provision applied /Rule applicable:
·
In this case section 2 (1) (h) read in section 11 (2)
of the trademark act, 1999 is applied because
as per this case the Starbucks corporation filed the suit against the defendant because
the defendant uses their logo
and similar name.
·
And in section 2 (1) (h) of the trademark act, 1999
which states that a mark shall be deemed to be deceptively similar to another mark that
can cause confusion to viewers.
·
And in this case this section applied and also read in
with section 11 (2) as that defines a trademark
which are identical or similar to an earlier trademark and is to be registered
for good and services which are not
similar to those for which the earlier trademark in the registered in the name of
a different proprietor shall not be registered.
·
Overall, the Starbuck corporation is already a
well-known trademark and well-known trademark already define under section 2 (zg)
of the trademark act, 1999.
·
According to the section 2 (zg) of the trademark act,
1999: Well-known trademark means a
mark which has become so to the substantial segment of public which use such
goods and receives such services that
use of such mark in relation to other goods and services would be likely to be taken as connection in the course of trade
and a person using the mark in the
relation to the first
mentioned goods and services.
Analysis:
·
According to the judgment given in the past there were
various test that were determined by
the courts to prove the deceptively similar analogy such as test of likelihood
and confusion and goodwill etc. there
was one case i.e. National Sewing Thread
Co. Ltd. V. James Chadwick and Bros
AIR 1953 SC 357, in this case it was held that the controversy of the deceptively similar analogy can only be decided by the stepping
into the shoes of
purchaser who is considered to be a person with ordinary intelligence. If the identification of two brands causes confusion and mislead to the buyer then it would be right to say that they are deceptively similar.
·
Another point to be noticed in this case as the fact
both the parties are dealing in same kind
of the trade and offering same goods and services to its customers, also plays
an important role. For this there was another case i.e., M/S Nandhini
Deluxe V. M/S Karnataka
Co-operative Milk Producers Federation Ltd. Civil appeal no. 2943-2944 of 2018,
in this case it was held that due to the difference variety in the products traded and
difference in visuals of both the companies the trademarks NANDINI and NANDHINI will be considered to be an non-infringement.
·
Now in the present case the legal aspect is that the
mark being deceptively similar would also have certain economic
complication on the plaintiff. As we all know that Starbucks is a global brand and well-known
trademark which is having goodwill that has been amassed over a longer period of time. Here it can be said that the defendant
had knowledge of the global reputation
of the Starbucks Corporation and defendant wanted to
exploit that image to get market attention rapidly and get his business to rise with the help of using Starbucks name.
·
But on august 01, 2018 the decision was given by the
Delhi high court in favor of Starbucks
Corporation and court ordered the defendant to modify their store name from Sadarbuksh coffee & co to Sadarji -
Bakhsh coffee & co. The order given by the court to modification of 20 outlet that have not yet opened.
·
Also, there is one point that the defendant didn’t get
registered his trademark and despite of this the defendant
is using the deceptively similar
mark which is close to the Starbucks. And as we already know that if someone is using the deceptively similar mark
of another mark i.e., already a well-known mark and also get registered then it was entitled to infringement.
·
The Delhi high court also permitted to use the name
Sadarbuksh coffee & co. for the previous
operating two outlet. The final decision was given by the Delhi high court on September
27, 2018 and it was held that the defendant
agreed to change the name of all its
outlet to sadarji – bakhsh coffee & co. in addition to this, the court give
some right to the defendant and also
explained and decided that if the third party uses the name bakhsh, then defendant has full right to bring
an action against such a violator. And the suit was settled on those terms.
Conclusion:
·
In this case the judgment is given in a way that
encouraged the registration of trademark because
if the person has registered trademark, then there cannot be nay mean through which such trademark can be exploited by
making a deceptively similar. But if any person tries the registered mark of other
for economic gains, then he/she will have to face legal consequences.
·
As we all know the trademark has the good
reputation it is really important to get registered and protect it from exploitation or any misuse. With
the help of above case we can clearly
say and understand that the court go beyond
and protect the right of the traders
and interest of consumers
·
In this case Starbucks coffee v. Sadarbuksh coffee
laid down the essentials guidelines as to
when it can be claimed that one mark is similar to that of another and the
effect that it can have on
the business whose mark has been infringed.
Reference
1. Starbucks vs Sardar Baksh: The Case
of Local coffee chain agrees to change logo, name to Sardarji-Bakhsh which is
retrieved from Business Today on 27 March 2022.
2. True Brew:
Starbucks Corporation v. Sardarbuksh Coffee & Co. – Intellectual Property – India
which is retrieved from the website i.e., www.mondaq/starbuckcase.com
3.
Deceptively Similar Trademarks: Examples & Case Study | Intepat IP
4. National Sewing Thread Co. Ltd. V. James Chadwick and
Bros AIR 1953 SC 357 case which is retrieved from the website of http://www.soolegal/starbuckvs.sadarbaksh.com
on the 27 march 2022.
5. M/S Nandhini Deluxe V. M/S Karnataka Co-operative Milk
Producers Federation Ltd. Civil appeal no. 2943-2944 of 2018 case which is retrieved
from the website
of http://www.soolegal.com.
6. Section 11 (2) trademark
act, 1999 which is taken from the bare act which is on page no. 8 of intellectual property laws of
commercial of student edition 2022.
7. The case analysis of Starbucks vs. sadar Baksh
which is retrieved from the website of http://www.ipmatter.com
8. The swaritadvisors explained in her blog which
is retrieved from the website
of www.swaritadvisors.com/starbuckscase which is retrieved on the 27 march 2022.
9. Starbuck corporation vs. sadar Baksh given in the website of Aishwarya
Sandeep i.e., http://www.aishwaryasandeep/starbuckvssadarbaksh.com
10. The case Starbuck vs. sadar Baksh which also retrieved from the financial
express i.e., www.finanacialexpress/starbuckscase.com
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