Case Name: Starbucks Corporation v. Copamocha Cafe & Restaurant & Anr.
Citation: 2020 SCC OnLine Del 2830; (2020) 82 PTC 359
Court: Delhi High Court
Bench: Justice Mukta Gupta
Date of Judgment: 28 February 2020
Acts/Sections Referred: Trade Marks Act, 1999, Sections 29, 31, 47 and 134
Case Type: IPR / Trademark / Well-Known Mark / Infringement / Permanent Injunction
1. Introduction
The case of Starbucks Corporation v. Copamocha Cafe & Restaurant & Anr. concerned a trademark infringement action filed by Starbucks Corporation, the globally renowned coffee company, against a small cafe in Kerala that was selling cold blended beverages under the trademark “FRAPPUCCINO,” a registered and notified well-known trademark owned by the Plaintiff. The Delhi High Court was required to determine whether the Defendants’ unauthorised use of the registered trademark for identical goods constituted infringement under the Trade Marks Act, 1999, and whether the Plaintiff was entitled to a permanent injunction, delivery up of infringing materials, and costs. The case was decided ex parte given the Defendants’ failure to appear, and is significant for its application of the principles governing the protection of well-known trademarks against unauthorised use, including use facilitated through online food delivery platforms.
2. Summary of Facts
Starbucks Corporation has used the trademark “FRAPPUCCINO” since 1994 for its signature line of blended cold coffee beverages. The mark has been registered in numerous countries including India and has been officially notified as a “well-known trademark” under Indian law. In India, Starbucks operates through its subsidiary Tata Starbucks Private Limited with over one hundred and sixty retail outlets across major cities. In January 2019, the Plaintiff discovered that the Defendants were operating a cafe in Thrissur, Kerala, and were selling cold blended beverages under the identical trademark “FRAPPUCCINO.”
The Plaintiff found that the Defendants were not only using the mark at their physical establishment but had also listed products under this name on popular online food delivery platforms including Swiggy, Zomato, and UberEats. The Plaintiff sent cease and desist notices in January and February 2019 demanding immediate discontinuation of the unauthorised use. The Defendants did not respond to either notice. Market surveys conducted in May, June, September, and October 2019 confirmed continuing use. The Plaintiff then filed the present suit for permanent injunction, delivery up of all infringing materials, and costs.
3. Issues Before the Court
(i) Whether the Defendants’ unauthorised use of the registered and well-known trademark “FRAPPUCCINO” for selling cold blended beverages, being identical goods for which the Plaintiff holds the trademark registration, constituted infringement under the Trade Marks Act, 1999, entitling the Plaintiff to a permanent injunction, delivery up of infringing materials, and costs.
4. Arguments by Both Parties
Arguments on behalf of the Plaintiff:
The Plaintiff contended that it was the registered owner of the “FRAPPUCCINO” trademark in India, that the mark had been officially notified as a well-known trademark, and that the Defendants’ use of an identical mark for identical goods constituted straightforward trademark infringement under Section 29 of the Trade Marks Act, 1999. The Plaintiff urged that the Defendants’ wilful disregard of the cease and desist notices and their use of online delivery platforms to amplify the reach of the infringing mark aggravated the infringement and warranted a permanent injunction, delivery up of all infringing materials, and an award of costs.
Arguments on behalf of the Defendants:
The Defendants did not appear before the court and did not file any reply or defence to the Plaintiff’s claims. The matter therefore proceeded ex parte on the Plaintiff’s evidence and submissions.
5. Reasonings and Findings
The Delhi High Court decided the matter ex parte and granted all reliefs sought by the Plaintiff. The Court examined the documentary evidence placed on record and found that the Plaintiff had conclusively established its ownership of the “FRAPPUCCINO” trademark through valid Indian registrations and the official notification as a well-known trademark. The Court took judicial notice of the global reputation of the Starbucks brand and the extensive market presence of the “FRAPPUCCINO” beverage in India.
The Court found that the Defendants had been using the identical mark “FRAPPUCCINO” for selling cold blended beverages, which are the very goods for which the Plaintiff holds trademark registration. Under Section 29 of the Trade Marks Act, 1999, use of an identical mark for identical goods by a person who is not the registered owner constitutes infringement without any further requirement to prove likelihood of confusion, as identity of mark and identity of goods raises an absolute presumption of infringement. The Defendants had been put on notice through two cease and desist notices but had wilfully persisted in the infringing use, demonstrating a complete disregard for the Plaintiff’s intellectual property rights.
The Court further found that the Defendants’ listing of the infringing product on online food delivery platforms extended the reach of the infringement beyond their physical establishment and aggravated the potential harm to the Plaintiff’s brand and consumer trust.
6. Judgment and Conclusion
The Delhi High Court granted a permanent injunction restraining the Defendants from using the “FRAPPUCCINO” trademark, directed the delivery up and destruction of all infringing materials including signage, menu cards, and packaging, and awarded costs to the Plaintiff. The judgment provides an instructive example of the protection accorded to well-known registered trademarks in India, and confirms that identical use of an identical registered mark for identical goods constitutes per se infringement requiring no further proof of consumer confusion.
7. Frequently Asked Questions
Q1. What is a well-known trademark?
A well-known trademark is a mark that has become widely known to a substantial segment of the public that uses or is likely to use such goods or services. Under the Trade Marks Act, 1999, once a trademark is officially notified as well-known, it receives enhanced protection against registration or use of identical or deceptively similar marks even in respect of unrelated goods and services.
Q2. What constitutes infringement when identical marks are used for identical goods?
Under Section 29 of the Trade Marks Act, 1999, the use of a mark identical to a registered trademark in relation to identical goods or services constitutes infringement per se. The law raises an absolute presumption of confusion in such cases and the trademark owner does not need to separately prove a likelihood of confusion.
Q3. Does online listing of products bearing an infringing mark constitute infringement?
Yes. Listing products on online food delivery platforms or e-commerce websites under an infringing trademark constitutes trademark infringement as it amounts to use of the infringing mark in the course of trade. Such online use may also extend the geographic reach of the infringement beyond the physical location of the infringing establishment.
Q4. What remedies are available to a trademark owner in an infringement suit?
A trademark owner may seek a permanent or interim injunction restraining the infringer from further use, delivery up and destruction of infringing materials, an account of profits made by the infringer through use of the infringing mark, damages for loss suffered, and costs of the proceedings. Courts may also grant Anton Piller orders in appropriate cases.
Q5. What is the significance of a cease and desist notice in trademark disputes?
A cease and desist notice puts the infringer on formal notice of the trademark owner’s rights and demands cessation of the infringing use. Continued infringement after receipt of a cease and desist notice demonstrates wilful infringement, which courts take into account when assessing the appropriateness of relief and the quantum of costs to be awarded.
