Citation:
CS (COMM) 1007/2018
Bench:
Justice Manmohan
Court:
Delhi High Court
Laws:
Section 2 ( 1 )( h ) of Section 11 of the Trademarks Act of 1999.
Introduction:
Starbucks Corporation registered a trademark in India in 2001 that included the renowned name "Starbucks" as well as a logo of a "crowned maiden with long hair."
Sardarbuksh, on the other hand, commenced operations in 2015. A private limited company called "Sardar Buksh Private Limited" was formed, and Sardarbuksh Coffee Co. was run via it.
It is important to note that both parties provided the same goods and services, and Sardarbuksh's logo featured a man in a turban with a beard, wavy lines towards the logo's edges behind him, and the company name embedded on the upper side of the circular logo (similar to Starbucks' logo).
Facts:
Starbucks filed their word mark 'STARBUCKS' and associated logo as a trademark in India in 2001. The Defendants established their firm in 2015 under the name 'Sardarbuksh Coffee & Co'. Sardarbuksh's logo was a turban commander's face with wavy lines on the sides encircled by a circular black ring. Through a letter of demand, the Plaintiff requested that the Defendants replace the logo in 2017. In response, the Defendant simply altered the colour scheme to black and yellow and resumed operations. The Defendant began operating under the same name in May 2018. The Defendant and Plaintiff supply comparable goods and services. The plaintiff filed a claim against Sardarbuksh in the Hon'ble High Court of Delhi as a result of the above incidents. The plaintiffs sued the defendants for trademark infringement by using a deceptively similar mark.
The Defendant had already built five coffee shops in Delhi, each with a diverse menu of coffee, shakes, and snacks. It is worth noting that the Petitioner has already established itself in the Indian market, having collaborated with Tata Group in 2012 and presently has 125 shops across the country.
The legal basis for filing this trademark infringement lawsuit was the "deceptively similar" analogy, as stated in Section 2 ( 1 )( h ): "A mark shall be deemed to be deceptively similar to another mark if it so closely resembles that other mark as to be likely to deceive or cause confusion." Section 11 ( 1 )( b ) states that if there is a similarity with an existing trademark, as well as a similarity of goods and services, and there is confusion among the general public with an earlier trademark, it becomes a ground for refusal of trademark registration.
Issues:
Whether the Defendant's mark is remarkably comparable to the Plaintiff's?
Previous judgments:
In the case of M/S. Lakme Ltd. vs. M/S. Subhash Trading And Others, 1996, as we all know, the plaintiff distributes cosmetic items under the Lakme name, whereas the defendant utilised the LikeMe brand for the same class of products. It was believed that the two terms had a significant resemblance and were also phonetically related. As a result, an injunction was issued because "in the mind of the buyer, there is every possibility of deception and confusion to be caused."
In the case of Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahendra Ltd. (2001), the Hon'ble Supreme Court ruled that, based on phonetic similarity, the name "Mahendra & Mahendra" infringed the early trade name "Mahindra," which had already been in use for around five decades and had thus acquired a distinctive and secondary meaning, demonstrating the test of goodwill being affected of a prior/original.
Analysis:
After referring to previous decisions, the Court established numerous measures for proving misleading likeness, such as the test of probability and confusion, goodwill, and so on. They relied on the decision of National Sewing Thread Co. Ltd. vs. James Chadwick and Bros AIR 1953 SC 357, which ruled that misleading likeness could only be assessed by putting oneself in the shoes of the buyer and assuming he is a man of average intellect. If the buyer has difficulty distinguishing between the two brands, they may be considered deceptively similar.
The Court decided in favour of the plaintiff. The defendants were ordered to modify the name of their company from "Sardarbuksh Coffee & Co." to "Sardarji-Bakhsh Coffee & Co." The injunction was imposed on a total of twenty of the defendant's businesses, all of which had not yet opened. The Court did, however, allow the use of the name "Sardarbuksh Coffee & Co." for two existing businesses.
On September 27, 2018, the defendant agreed and renamed all of its locations "Sardarji-Bakhsh Coffee & Co." It was also decided that if a third party used the term "Bakhsh," the defendant would have the right to sue for infringement. As a result, the case was resolved.
Conclusion:
The knowledge and substance of a trademark was restated in this case, that it is a unique feature of identification and distinguishment to a customer and the business in issue. The most important feature of a trademark is the goodwill it accumulates over time. 'Starbucks Coffee v. Sardarbuksh Coffee' established important standards for when one trademark might be argued to be deceptively similar to another and the impact this can have on the firm whose trademark has been infringed.