• Contributor: Mohan Dewan, R K Dewan & Co., Mumbai, India

INTA Bulletins Law and Practice  —  Asia-Pacific Subcommittee

Verifier: Sushant Singh, Advocate, Supreme Court of India and Delhi High Court, New Delhi, Delhi, India

In Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., CS (COMM) 1007/2018, on August 1, 2018, the High Court of Delhi granted interim relief in favor of Starbucks, directing the defendants to use the name “Sardarji-Bakhsh” for their 20 new, upcoming outlets until the final hearing of the suit on September 27, 2018. Following the hearing, it was agreed that the defendant would change the name of all of its outlets to “Sardarji-Bakhsh Coffee & Co.”

The plaintiff registered the word mark STARBUCKS and the logo depicting a “crowned maiden with long hair” in India in 2001. The defendants commenced their business in 2015 naming their venture “Sardarbuksh Coffee & Co”—“Sardar” the Hindi word meaning “Commander” and “Buksh” the Hindi word meaning “Pardon.” In May, 2018, the defendants incorporated a private limited company with the name “Sardar Buksh Private Limited” and have been carrying on operations under that name since that date. The goods and services provided by both the plaintiff and the defendants are identical. The defendants used a logo consisting of a circular black band with the words “SARDARBUKSH COFFEE & CO.” and a device of a turbaned Commander with wavy lines extending from the sides in addition to reversing the use of the color scheme as compared to the Starbucks logo.

 

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After receiving a letter of demand from Starbucks Corporation in 2017, the defendants modified their logo and changed their color scheme to black and yellow and commenced trading under the new logo shown below.

 

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Nevertheless, Starbucks Corporation filed a case against the defendants for using the trade name “Sardarbuksh.” On August 1, 2018, the High Court of Delhi ordered the defendants to modify their store name from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.” for 20 stores that have not yet opened; however, the court permitted the use of the existing name “Sardarbakhsh Coffee & Co.” for their two operating stores.

On September 27, 2018, the parties exchanged terms and conditions, and they were put on record with the High Court of Delhi. Further, it was agreed that the defendant would change the name of all its outlets to “Sardarji-Bakhsh Coffee & Co.” Additionally, it was clarified and agreed upon that, if a third party uses the term “Bakhsh,” the defendant will have a right to file a suit against such a violator. The suit was finalized on the said terms.

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