MUKTA GUPTA, J. (ORAL)
1. Summons in the present suit were issued vide order dated 26th September 2019.The right of the defendants to file written statement has already been closed. None has been appearing on behalf of the defendants from last many dates despite service. Defendant Nos. 1 and 2 are thus proceeded ex-parte.
2. By the present suit the plaintiff, inter alia, prays for a decree of permanent injunction restraining the defendants, their partners, proprietors, agents, servants, licensees, franchisee, sub-franchisee, representatives and employees or any one claiming under them, directly or indirectly infringing the plaintiffs registered trademark FRAPPUCCINO or any other similar trademark that is Style Carmel Coffee or Jail Hazelnut Coffee under the head FRAPPUCCINO, rendition of accounts, delivery up of impugned goods, menu cards, stationery to the plaintiff for destruction and damages.
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3. It is the case of the plaintiff that it is a company organized and existing under the laws of State of Washington and was incorporated as STARBUCKS CORPORATION in the year 1985. At present, the plaintiff has at least 30,626 retail stores in 80 countries and territories around the world. Over 510,000 individuals are employed in plaintiff company and its affiliates.
4. The mark FRAPPUCCINO was used in year 1994 in respect of cold beverages which are widely popular all around the world as the Plaintiffs handcrafted blended cold beverages. Plaintiff also sells bottled FRAPPUCCINO beverages in many countries in various flavors. Some of the varities of FRAPPUCCINO beverages available in the world include Coffee Frappuccino, Crème Frappucciono and Light Frappucciono. The mark FRAPPUCCINO is registered in over 185 countries and territories around the world in different classes in relation to various goods and services.
5. On 28thOctober 1997, the domain name frappuccino.com was obtained by the plaintiff which is redirected to the plaintiff's parent website http://www.starbucks.com/menu/drinks/Frappuccino-blended-beverages. Plaintiff has also obtained other domain names, wherein FRAPPUCCINO is the prominent part.
6. Net revenue of the plaintiff in respect of its various products sold under the FRAPPUCCINO marks has increased from US $ 13,276.8 million in FY2012 to US$ 24,719.5 million in FY 2018. The plaintiff has also spent US$ 260.3 million in FY 2018.
7. The plaintiff has consistently top-level brand rankings from various brand evaluation agencies such as Interbrand, a leading international
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branding consultancy company that has ranked Starbucks amongst top "100 Brands" in the world. Starbucks is also listed in America's Greatest Brands which was published in 2005. It was also named amongst worlds most admired companies in Fortune Magazine from the year 2001-2005 and 2011-2019. Plaintiff and its trademarks including the FRAPPUCCINO mark have been advertised and feature in print and electronic version of various International and Indian magazines and newspapers.
8. Plaintiff signed a pact with India's Tata Coffee Ltd. in January 2011 to open retail stores in India by way of equity joint venture and Tata Starbucks Private Limited was incorporated on 30thSeptember 2011. The Plaintiff entered the Indian market in October 2012 by opening its first store in the historic Elphinstone Building in the Horninman Circle, Mumbai. Thereafter, the plaintiff has expanded its presence all over India with at least
145 Starbucks Stores. Plaintiff is also the registered proprietor of the Trademark FRAPPUCCINO in India under various classes.
9. Plaintiff is extensively and continuously using the registered trademark for more than twenty-four years. The Plaintiff's trademark FRAPPUCCINO has become well-known and famous within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999. Plaintiff has also received many positive court decisions in various jurisdiction around the world wherein the respective courts have held FRAPPUCCINO mark as a well- known and famous mark. Plaintiff has taken successful action under the World Intellectual property Organization Uniform Dispute Resolution Policy (UDRP) in respect of the domain names www.frappuccino.com and www.starbuckscoffee.com against Duncan P. Freeman whereby the panel
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vide order dated 9thJuly 2003 directed that the disputed domain name to be transferred to the Plaintiff.
10. It is the case of the Plaintiff that in the third week of November 2018, it came to its notice that Defendant No. 2 was operating Defendant No. 1 café under the name Jail Café and was selling/serving number of cold beverages under the category FRAPPUCCINO without the authorization of the plaintiff. The defendants beverages under the category head FRAPPUCCINO that is "Style Caramel Coffee" and "Jail Hazelnut Coffee"
are confusingly, deceptively and conceptually similar to Plaintiffs hand- crafted beverage items sold under its registered trademark FRAPPUCCINIO that is "Caramel Frappuccino Blended Coffee" and "Hazelnut Frappuccino Blended Coffee". The defendants are selling their FRAPPUCCINO drinks secretly without mentioning the same on their receipts/invoices. The defendants are also misusing well-known trademark of a third party i.e.
"Theobroma shake" wherein "Theobroma" is being prominently used.
11. The reference to the beverage name of "FRAPPUCCINO" are also made on the electronic menu card of the defendant which is uploaded on third party listing portal www.zomato.com.
12. Plaintiff sent a notice dated 30thNovember 2018 by registered post A.D. requesting the defendants to adopt a different name for their cold beverages rather than FRAPPUCCINO mark, pursuant to which defendant no. 2 made a phone call to the plaintiff's advocate seeking clarification of the same. Defendant no. 2 on being apprised of plaintiff's right in the trademark FRAPPUCCINO gave assurance to the plaintiff to cease the use of same in respect of their menu category for cold beverages. However, on investigation it came to the notice of the plaintiff that the defendant
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continued to list the trade name/mark FRAPPUCCINO on its printed as well as electronic menu card. Plaintiff's advocate again telephonically contacted defendant no. 2 and he reassured that the marks would be removed.
13. On 22ndDecember 2018, defendant no. 2 contacted the plaintiff's advocate via Whatsapp to assure that he had amended their printed menu cards and has removed the infringing references to beverage heading FRAPPUCCINO and also provided the photographs of the same. However, later the plaintiff learnt that electronic reference to impugned beverage heading FRAPPUCCINO were featuring on defendant's Facebook account and on third party listing website.
14. Plaintiff sent a reminder letter dated 28thDecember 2018 requesting the defendants to cease the use of the mark FRAPPUCCINO in respect of beverages offered for sale and served at their café and to take immediate steps to update their printed as well as electronic menu cards. The said letter was returned undelivered. Again, a letter dated 23rdJanuary 2019 was sent vide courier enclosing the undelivered reminder letter dated 28thDecember 2018 which was served.
15. On 19thFebruary 2019 plaintiff's advocate received a call from defendant no. 2 wherein he again stated that he had removed all references to FRAPPUCCINO from their menu cards and service offerings. He further assured that he would remove the impugned online listing available on Zomato. However, the efforts of plaintiff went in vain and the same is evident from invoice no. 10845 dated 21stFebruary 2019 issued by defendant.
16. Plaintiff again sent a reminder letter dated 1stMarch 2019 referring to the telephonic conversation held on 19thFebruary 2019 and the same was
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served upon defendant no. 2. However, no reply was received. On 25th March 2019, the plaintiff's advocate again contacted defendant no. 2 where defendant no. 2 informed plaintiff's advocate that it would take a month's time for the amended printed menu cards to enter circulation. On 25thApril 2019, the plaintiff's advocate made an enquiry telephonic call regarding the status of the amended menu cards whereby defendant no. 2 requested an additional two to three weeks to replace the same. On 18thJune 2019, when plaintiff's advocate again contacted defendant no. 2, he confirmed that he had received prints of the updated menu cards without reference to FRAPPUCCINO. However, he had not finalized them for introduction in defendant no.1 café and same were scheduled to be introduced after 20th June 2019. The photograph of the same was sent through Whatsapp. He also mentioned that he had contacted Zomato to update the redundant menu entries available at his café which were not carried out by them. Plaintiff sent a takedown notice to www.zomato.com referring to cease and desist letter dated 30thNovember 2018. The plaintiff also attached the relevant snapshots of revised printed menu cards as supplied by defendant no. 2 to www.zomato.zom. However, the same listing under the mark FRAPPUCCINO is featuring on www.zomato.com.
17. Defendants have thus continued to use the mark FRAPPUCCINO in respect of their cold beverages even after repeated assurances given by them to cease the use of same. The plaintiff to settle the matter amicably, again sent a reminder letter dated 24h July 2019 referring to the telephonic conversation dated 18thJune 2019. The said letter was duly served upon the defendants but no response was received therefrom. Thereafter, discrete enquires through the investigator were conducted by the plaintiff who
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contacted defendant no. 2 who informed that he was looking for a franchise partner and suitable location in Delhi to expand operation of defendant no. 1 café. Therefore, the defendants are infringing plaintiffs registered FRAPPUCCINO mark.
18. From the pleadings of the plaintiff in the plaint as also the documents along with necessary certificates enclosed with the plaint, the plaintiff has clearly made out a case for grant of injunction in terms of prayer (a) and (b) as the defendant is violating the rights of the plaintiff in its trademark as well as copyright.
19. Learned counsel for the plaintiff does not press the prayers (c), (d), (e), (f) and (g). Hence no decree in terms of prayer (c), (d), (e), (f) and (g) can be passed.
20. As regards cost in terms of prayer (h), the plaintiff has filed the advocate's fee certificate indicating the cost incurred by the plaintiff including the fees of lawyers which amounts to total sum of ₹7,75,150/-.
21. Suit is accordingly decreed in terms of prayer (a) and (b) of para 50 of the plaint in favour of the plaintiff and against the defendant. Cost of ₹7,75,150/- is awarded in favour of the plaintiffs and against the Defendants.
I.A. 13058/2019 (u/O XXXIX R 1&2 CPC by P)
Disposed of as infructuous.
(MUKTA GUPTA)
JUDGE
DECEMBER 23, 2019
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