Starbucks Coffee v. Sardarbuksh Coffee



Citation: CS (COMM) 1007/2018

Bench: Justice Manmohan

Court: Delhi High Court

Facts:

The Plaintiff, Starbucks, registered their word mark ‘STARBUCKS’ and corresponding logo as a trademark in the year 2001 in India. The Defendants started their company in 2015 with the name ‘Sardarbuksh Coffee & Co''. Sardarbuksh’s logo comprised the face of a turban commander with wavy lines on the sides surrounded by a circular black band. In 2017, the Plaintiff asked the Defendants to change this logo through a letter of demand. In response to this, the Defendant only changed the colour scheme to black and yellow and resumed business. In May 2018, the Defendant commenced operations under the same name. The goods and services provided by the Defendant and the Plaintiff are similar. The entire previous sequence of events culminated in the plaintiff filing a suit against Sardarbuksh in the Hon’ble High Court of Delhi. The Plaintiffs filed a suit against the defendants for infringing their trademark by having a deceptively similar mark.

Issues:

Whether the Defendant’s mark is deceptively similar to that of the Plaintiff’s?

Laws:

Section 2(1)(h) of Section 11 of the Trademarks Act, 1999.

Analysis:

After referring to judgements in the past, the Court set forth various tests to prove deceptive similarity, like the test of likelihood and confusion, goodwill and so on. They relied on the case of National Sewing Thread Co. Ltd. vs. James Chadwick and Bros AIR 1953 SC 357 , where it was held that deceptive similarity could only be determined by stepping into the customer’s shoes under the presumption that he is a man with ordinary intelligence. If the customer feels confusion while differentiating the two brands, they can be deemed deceptively similar.

The Court gave the decision in the plaintiff’s favour. It ordered the defendants to change the name of the business from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.”. The order was enforced upon twenty of the defendant’s stores in total, all of which had not been opened as of then. The Court, however, permitted the use of the name “Sardarbuksh Coffee & Co.” for two stores that were already operating.

On the 27th of September, 2018, the defendant conceded and changed all of its outlets’ names to "Sardarji-Bakhsh Coffee & Co." It was also held that if a third party were to use the term “Bakhsh”, the defendant would be granted the right to file a suit against such infringement. The suit at hand was thus settled.

Conclusion:

In this case, the understanding and the essence of a trademark was reiterated, that it is a unique factor of identification and distinguishment to a consumer and the business in question. The most significant characteristic of a trademark is the goodwill it garners over its period of usage. ‘Starbucks Coffee v. Sardarbuksh Coffee’ laid down essential guidelines as to when it can be claimed that one trademark is deceptively similar to another and the effect that it can have on the business whose trademark has been infringed.

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