It is said that a lot can happen over a cup of coffee or Frappuccino; in the case of Starbucks, it happened to be just that.
Starbucks, an American multinational corporation found that a cafe in Jaipur called LOL cafe was selling a beverage on its menu called ‘BROWNIE Chips FRAPPUCCINO’ without its permission, authorisation or license. Starbucks claimed it found out the same in 2018
Starbucks won its litigation case over infringement of its trademark Frappuccino; a single judge bench of Justice Navin Chawla who was hearing a plea moved by the American multinational corporation that claimed that it is the “registered proprietor of the trademark ‘FRAPPUCCINO’.
The HC held that Starbucks has a global reputation in the said mark.
Starbucks sought an order from the Delhi HC for “permanently restraining” the defendant cafe, LOL Cafe, from infringing upon its registered trademark ‘FRAPPUCCINO’ and using the said trademark or any similar trademark concerning its goods and services.
Starbucks also sought damages, understanding of accounts of profits illegally earned by the defendants, the operator of the cafe and the cafe itself, and handing over of all the goods, menu cards, and all other goods of any nature bearing or containing ‘FRAPPUCCINO’ trademark, to Starbucks for its destruction.
The Delhi High Court ruled in favour of Starbucks, stating that the defendant’s adoption of the mark ‘FRAPPUCCINO’ (LOL Cafe) is dishonest and intended to deceive an unwary consumer. It amounts to infringement of Starbucks’ trade mark and would also lead to in passing off of the goods of the defendants as that of the plaintiff, Starbucks.
Further, HC stated that apart from using the trademark, the LOL cafe had also gone ahead to make reference to the beverage name on the electric menu cards of the cafe. These were uploaded on Zomato and EazyDiner, third-party listing portals for promotion and advertisements.
Starbucks served the defendants with a cease-and-desist notice on December 1, 2018, calling upon them to stop using their registered mark ‘FRAPPUCCINO’. However, they did not respond, and the corporation also sent a reminder letter on January 8, 2019, which also went unanswered.
Starbucks asserted before the HC that on a telephonic conversation with the director of LOL Cafe, Starbucks advocate was assured that they would cease all use of the mark ‘FRAPPUCCINO’ and would update their electronic menu cards, which are listed on third-party portals like ‘Zomato’ and ‘EazyDiner’.
However, an internal investigation found that the LOL Cafe continued to sell its products under the impugned trade mark despite the undertaking of the cafe’s director.
Another reminder was sent on May 8, 2019, requesting the defendants to comply within a week; however, again, there was no response to the notice.
Starbucks additionally argued that the defendants were infringing its registered trade mark and were guilty of passing off their products as those of Starbucks.
The American corporation argued that the mark adopted by the defendants is identical to its “FRAPPUCCINO” trademark, and there is no basis for the defendants to have adopted the stated mark.
Ruling in favour of Starbucks, the HC, in its November 17 order, observed that LOL Cafe had adopted an identical mark while using the prefix ‘BROWNIE Chip’ with the registered mark of Starbucks– ‘FRAPPUCCINO’.
The HC further noted that Starbucks used the ‘FRAPPUCCINO’ mark with a suffix depicting the flavours of its beverages, like ‘Java Chip Frappuccino’ and others, as stated in the plaint.
Despite summonings, the LOL Cafe and its proprietor company had not appeared before the HC. Hence the plaintiff, in the absence of any defence and lack of documents filed, has not only been able to prove its right in the mark ‘FRAPPUCCINO’.
They had also infringed and passed off the said mark of the coffee house.
On August 23, 2019, the high court issued a summon to the defendants and passed an ex-parte ad interim injunction against them.
Placing reliance on High Court order in Starbucks Corporation vs Teaquila A Fashion Cafe & Anr case, wherein the High Court had awarded Rs. 2 lakh damages to Starbucks.
Delhi High Court said similar damages deserve to be awarded in favour of the plaintiff and against the defendants in the present suit.
Apart from court fees, the high court awarded Rs. 13,38,917.85 as a “legal fee” in favour of Starbucks and held that the plaintiff is also entitled to the Suit’s cost.
Apart from the Court fee, the plaintiff has filed an ‘Advocate Fee Certificate’ showing an amount of Rs.13,38,917.85 charged by the council as a legal fee. The same is found to be reasonable and is thus awarded in favour of the plaintiff and against the defendants.”