Author- Preethika Vijaykumar
In the matter at hand, Plaintiff, Starbucks Corporation (“Starbucks”), has initiated legal action against Defendant, Sardarbuksh Coffee, and Co. (“Sardarbuksh”), for trademark infringement. Starbucks is a renowned coffee establishment with a global presence and numerous franchises across various countries. Sardarbuksh is a coffee house that originated in Delhi in 2015 and operates several outlets.
Starbucks has a registered trademark consisting of its name and logo, which enjoys widespread recognition worldwide. The logo of Starbucks depicts a crowned maiden with long hair in green color. Conversely, Sardarbuksh’s logo consists of a turbaned man with wavy lines extending from the sides. Notably, the logos of Starbucks and Sardarbuksh share numerous similarities, such as their round shape and the use of the same color or the crowned maiden in Starbucks’ logo and the turbaned man in Sardarbuksh’s logo. Additionally, both establishments’ names bear a striking resemblance to one another.
It is crucial to highlight that both Starbucks and Sardarbuksh provide identical goods and services, further exacerbating the potential for confusion among consumers. In light of these facts, Starbucks has instituted legal proceedings to seek relief from Sardarbuksh’s infringement of its registered trademark.
Facts of the case
Starbucks Corporation, a globally recognized coffee company, holds registered trademarks for its logo and name in India and worldwide and engages in the provision of coffee and coffee-related products. The Starbucks brand is associated with significant goodwill.
In 2015, Sardarbuksh, a coffee joint with multiple outlets in Delhi, opened for business with a name and logo that closely resembled those of Starbucks.
In 2017, Starbucks issued a letter of demand to Sardarbuksh citing trademark infringement. In response, Sardarbuksh made modifications to its logo but continued to operate under the same name.
In 2018, Starbucks filed a trademark infringement lawsuit against Sardarbuksh in the Delhi High Court, arguing that the use of the name “Sardarbuksh” was deceptively similar to their trademarked name. Sardarbuksh countered that their name had a distinct meaning and was not deceptively similar to the Starbucks trademark.
Contention
Starbucks claimed that the name “Sadar Buksh” was too similar to their trademarked name, “Starbucks,” and that it would confuse consumers. They argued that the use of the word “Buksh” in the name of the coffee shop would lead customers to believe that the shop was associated with Starbucks and that it would dilute the value of the Starbucks brand.
In response, Sadar Buksh argued that their name was a play on the Punjabi word “Sardar,” which means “leader,” and the name “Buksh,” which is a common surname in Pakistan. They claimed that their name had nothing to do with Starbucks and that there was no possibility of confusion between the two brands.
Decision
The Delhi High Court, in reaching its conclusion, referred to established legal principles and precedents relating to the deceptive similarity between marks. Notably, the Court relied on the case of National Sewing Thread Co. Ltd vs James Chadwick & Bros Ltd, which established a test for determining deceptive similarity between marks.
According to the test, one must consider the perspective of an ordinary customer when assessing whether two marks are deceptively similar. The question to be answered is whether a person of average intelligence would be likely to confuse the two marks or assume that they are related to each other.
Applying this test to the present case, the Delhi High Court found that an ordinary customer could reasonably confuse the marks of Starbucks and Sardarbuksh. Consequently, the Court ordered Sardarbuksh to change its name to Sardarji-Bakhsh.
Conclusion
In the matter of Starbucks vs Sardarbuksh, the Court emphasized the importance of a trademark as a carrier of a company’s goodwill and reputation. A company’s name and logo are critical assets that define its identity and are essential for brand recognition. Therefore, it is crucial to take measures to protect them. One of the most effective ways to safeguard a trademark is to register it.
Registering a trademark not only creates a brand and builds goodwill, but it also provides legal protection against third-party infringement. It enables trademark owners to utilize their brand name for commercial purposes and take action against any infringers. In the Starbucks vs Sardarbuksh case, the fact that Starbucks had already registered its trademark in India years before Sardarbuksh’s inception was a significant advantage.
Therefore, businesses should consider registering their trademarks to safeguard their brand and commercial interests.
