‘Frappuccino a Starbucks trademark’: Delhi HC rules against Jaipur-based cafe

Holding in favour of the corporation the HC held that, “The adoption of the mark ‘FRAPPUCCINO’ by the defendants is dishonest, and is intended to deceive an unwary consumer. It amounts to infringement of the plaintiff’s trade mark and would also result in passing off the goods of the defendants as that of the plaintiff’s (Starbucks)”.

Starbucks sought an order for “permanently restraining” the defendant cafe from infringing its registered trademark ‘FRAPPUCCINO’ or using the said trademark or any other similar trademark in relation to its goods and services. Starbucks also sought damages, rendition of accounts of profits illegally earned by the defendants (operator of the cafe and the cafe itself); and for an order of delivery and handing over of all the impugned goods, menu cards, and all other goods of any nature bearing and/or containing ‘FRAPPUCCINO’ trademark, to Starbucks for its destruction.

Starbucks claimed it found out in 2018 that Jaipur-based LOL Cafe was selling a beverage called ‘BROWNIE Chips FRAPPUCCINO’ without its permission, authorisation or license.

“The defendants were also making reference to the beverage name ‘Frappucino’ on the electric menu cards of their establishment, which are also being uploaded on third-party listing portals such as ‘Zomato’ and ‘EazyDiner’ for promotion and advertisement,” the order records.

Starbucks served the defendants with a cease-and-desist notice on December 1, 2018, calling upon the defendants to stop using their registered mark ‘FRAPPUCCINO’, however, they did not respond. A reminder letter was sent on January 8, 2019, which also went unanswered.

Starbucks asserted before the HC that on a telephonic conversation with the director of LOL Cafe, its advocate was assured that they would cease all use of the mark ‘FRAPPUCCINO’ and will update their electronic menu cards which are listed on third-party portals like ‘Zomato’ and ‘EazyDiner’. However, through an internal investigation, it was 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 period of a week, however, again there was no response to the notice.

Starbucks further argued that the defendants were not only infringing its registered trade mark “but are also guilty of passing off their products as those of the plaintiff’s” (Starbucks). They said that the mark adopted by the defendants is identical to its “FRAPPUCCINO” trademark and there is no explanation for the defendants to have adopted the said mark.

Ruling in favour of the coffeehouse chain, the HC in its November 17 order observed that the defendants had adopted an identical mark, using the prefix ‘BROWNIE Chip’ along with the registered mark of Starbucks– ‘FRAPPUCCINO’ “apparently intending to deceive an unwary consumer and to ride upon the reputation of the mark”. The HC further noted that Starbucks themselves used the ‘FRAPPUCCINO’ mark with a suffix depicting the flavours of its beverages, like ‘Java Chip Frappuccino’ and others as stated in the plaint.

Noting that LOL Cafe and its proprietor company had not appeared before the HC despite service, the HC held that, “The plaintiff, in absence of any defence and in view of the uncontroverted assertions in the plaint and the documents filed therewith, has not only been able to prove its right in the mark ‘FRAPPUCCINO’, but also the infringement and passing off of the said mark by the defendants”.

On August 23, 2019, the high court had issued summons to the defendants and passed an ex-parte ad interim injunction against them.

Placing reliance on its own order in Starbucks Corporation vs Teaquila A Fashion Cafe & Anr case, wherein the High Court had awarded damages of Rs. 2 lakh to Starbucks, and observed, “In my opinion, similar damages deserve to be awarded in favour of the plaintiff and against the defendants in the present suit as well”.

Apart from court fees, the high court awarded Rs. 13,38,917.85 as a “legal fee” in favour of Starbucks and held, “The plaintiff is also held entitled to the cost of the Suit. 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 counsel as legal fee. The same is found to be reasonable and is thus awarded in favour of the plaintiff and against the defendants”.