Delhi High Court: In a matter wherein Starbucks trademark ‘frappuccino’ was being infringed, Jyoti Singh, J., while observing that, FRAPPUCCINO trademarks have acquired formidable reputation and goodwill in India, awarded Starbuck Rupees 2 lakhs damages and 9 lakh costs.
Instant suit had been filed to seek a decree of permanent injunction restraining the defendants, their partners, etc. from infringing the plaintiff’s trademark “FRAPPUCCINO” either alone or with any prefix or suffix or any other confusing and deceptively similar trademark in relation to their goods, services and business as well as passing off.
Plaintiff also sought an award for damages and a decree for rendition of accounts of profits earned by the defendants by using the FRAPPUCCINO marks was sought.
In 2019, this Court had granted an ex parte and interim injunction in favour of the plaintiff and against the defendants.
It was averred that the plaintiff uses the trademark FRAPPUCCINO and variations thereof for its widely popular hand crafted blended cold beverages and the said mark has been registered in over 185 countries and territories.
To the above, it was added that the plaintiff had obtained top-level domain name frappuccino.com in the year 1987, which was redirected to the parent website of the plaintiff and has been a prominent part.
Further, it was stated that, FRAPPUCCINO marks constitute an invaluable intellectual property of the Plaintiff and Plaintiff has been vigilant in protecting its property rights not only through registrations but enforcement actions, ranging from opposing the trademark applications to legal actions in Courts, wherein positive decisions have been given both by the Foreign Courts as well as Indian Courts.
What was the trigger?
The plaintiff had received information that defendant 2 was operating a café/restaurant wherein defendant 1 was selling/serving beverages under the name ‘BUTTER SCOTCH FRAPPUCCINO’ and ‘HAZEL NUT FRAPPUCCINO’, without Plaintiff’s permission, authorization or license.
References to the trademark FRAPPUCCINO were prominently made on the printed menu card as well as on the electronic menu card of the Defendants’ Cafe/restaurant and latter was uploaded on third-party listing portal www.zomato.com for promotion, advertisement and generating business.
Even after sending a cease-and-desist notice, the defendants continued to sell the impugned products, hence the present suit was filed.
Analysis and Decision
High Court expressed that the plaintiff’s FRAPPUCCINO trademarks have acquired a formidable reputation and goodwill in India and the defendants have used identical marks with respect to similar goods and the trade channels and the customer base are also common.
In view of the above, the triple identity test was also satisfied.
Therefore, the plaintiff proved that the use of the impugned marks by the defendants amounted to infringement of Plaintiff’s FRAPPUCCINO trademarks. It was also proved that the defendant’s intent was to pass off their goods as that of the plaintiff and a case of passing off was also established.
The claim for damages was based on presumptions that the defendants would have sold 400 beverages, but in Court’s opinion, the same was based on conjectures and surmises and no evidence had been led to support the claim of damages.
Court added that, the defendants were guilty of infringement and notional damages could be granted in terms of the decision in Indian Performing Right Society v. Debashis Patnaik, 2007 (34) PTC 201 Del.
Therefore, damages to the tune of Rs 2,00,000 were awarded in favour of the plaintiff and a Cost of Rs 9,60,100 was awarded in favour of the Plaintiff and against the Defendants.[Starbucks Corpn. v. Teaquila A Fashion Café, 2022 SCC OnLine Del 1381, decided on 6-5-2022]
Advocates before the Court:
For the plaintiff:
Ms. Priya Adlakha and Ms. Rima Majumdar, Advocates.
For the defendants: Defendants are ex parte