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Frappuccino: Made By Starbucks and Used ONLY By Starbucks

Khurana and Khurana, Advocates and IP Attorneys India


Introduction

Who doesn’t like to indulge in the sweet, creamy and chilled Starbucks FRAPPUCCINO from time to time? This Starbucks drink is popular around the globe and counts for one of its highest selling drink’s around the year. However, not a lot of its consumers will be aware of the legal protections accorded to this drink name, across the world.

[Picture Credit: Startbucks]

The Starbucks trade mark FRAPPUCCINO is a registered trademark and hence finds protection in over 185 countries and territories, under different classes in relation to various goods and services catered by Starbucks. It is only natural for Starbucks to be hyper-protective of its best-selling drink across the world, especially when it keeps falling prey to trademark infringement and passing off, despite of Courts around the world upholding Starbucks exclusive ownership of the trademark FRAPPUCCINO. The recent judgement delivered by the Delhi High Court[i], once again brings to light the legal safeguards shielding the popular drink name, and the heavy penalty it comes with infringing its name.

Background

The Plaintiff claimed that they had been using the impugned trademark FRAPPUCCINO continuously and extensively across the world for over 24 years and is hence popularly associated with the Plaintiff’s brand. The Plaintiff, Starbucks, has been using the impugned trademark since the beginning of its operation in India i.e., 2012 and has gained similar popularity as enjoyed abroad. The Plaintiff contested that the impugned mark i.e., FRAPPUCCINO, constituted an invaluable property of Starbucks and that it was highly active and vigilant in protection of its IP rights through enforcement actions, ranging from opposing trademark applications to legal actions in Courts, the latter part being consistently decided in favour of the Plaintiff.

What triggered the Plaintiff to file the present suit was when it discovered, back in 2018, that the Defendants were operating a café/restaurant in which they had been selling/serving coffee beverages under the name of ‘BUTTER SCOTCH FRAPPUCCINO’ and ‘HAZEL NUT FRAPPUCCINO’, which were highly confusing and conceptually similar to the Plaintiff’s own beverages sold as ‘SMOKED BUTTERSCOTCH FRAPPUCCINO’ and ‘HAZELNUT FRAPPUCCINO BLENDED COFFEE’, without the Plaintiff’s permission, authorization or license. The Plaintiff’s widely popular impugned trademark was used unfairly by the Defendants as they had repeatedly used ‘FRAPPUCCINO’ in their restaurant menu and their menus available online.

Judgement

Although the decision was granted in favour of Starbucks and found the Defendants guilty of trademark infringement and passing off, the Delhi High Court was quick to identify how the Plaintiff’s reliance upon the judgements in claims for damages[ii] [iii] did nothing to establish its claim towards damages. However, the court granted notional damages worth Rs. 2, 00, 000/- to the Plaintiff, in terms of the judgement in Indian Performing Right Society v. Debashis Patnaik[iv] in addition to Rs. 9, 60, 100/- resulting from the fee of the lawyer and court fee, claimed by the Plaintiff.

The High Court, in the instant case, while deciding in matters pertaining to trademark infringement, held that, the Plaintiff’s trademark ‘FRAPPUCCINO’ had satisfied the criteria’s for a well-known trademark, i.e., extensive use and global presence, trans-border reputation and goodwill, and registration of trademark in India, as well as, foreign jurisdictions. While deciding in the matter of passing off, the High Court held that, the Defendants adoption and continued use of the impugned trademark, despite of a cease and desist notice by the Plaintiff, was in bad faith and deliberate, since the Defendants use of identical marks with respect to similar goods and the trade channels and the customer base, were all similar, the Defendants clearly intended its own products to pass off as the products sold by the Plaintiff.

The trademark infringement and passing off in the instant case was blatant and obvious to identify. The instant case also progresses the cause for Starbucks to register its popular drink name FRAPPUCCINO as a well-known trademark, as it qualifies all of the conditions stipulated under the TM Act[v], and now that this judgement has rendered some weight to this cause and the drink’s name has been a frequent target of infringement and passing off, the registrar shall surely identify the reputation and goodwill associated with the drink name FRAPPUCCINO, therefore shielding it with a more robust IP protection.

Author: Bedotroyi Gupta a student of MMM’s Shankarrao Chavan Law College, Pune, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References:

 

[i] Starbucks Corporation. v. Teaquila A Fashion Café (2022).

[ii] Cartier International AG & Ors v. Gaurav Bhatia & Ors (2016).

[iii] Hindustan Unilever Ltd v. Reckitt Beckinser India Ltd (2014).

[iv] 2007(34) PTC 201 Del.

[v] The Trade Marks Act, 1999, Section 2(1)(zg).

Khurana and Khurana, Advocates and IP Attorneys



About the Firm

Khurana and Khurana, Advocates and IP Attorneys

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Tel91-120-313 2513, 91-120-350 5740
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Contact PersonTarun Khurana
Emailinfo@khuranaandkhurana.com
Linkwww.khuranaandkhurana.com


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