October 12, 2018

India: Delhi High Court Orders Sardarbuksh to Stop Infringing Starbucks trademarks and copyrights

 

Source: www.delhihighcourt.nic.in


The Honorable court entered a judgment in favor of the purveyor of premium coffee against the chain that opened as Sardarbuksh. Starbucks Corporation filed a suit before the Hon’ble Delhi High Court in July 2018 alleging that the Sardarbuksh name and logo infringed Starbucks trademarks and copyrights. The Sardarbuksh logo shared with the Starbucks logo a design consisting of concentric circles, the similar words “Sardarbuksh” and “Starbucks” at the top of the outer circle, a figure surrounded by wavy lines in the middle, and a black, black, and white color scheme.

In the final order recorded by the Hon’ble Delhi High Court on September 27, 2018, SardarBuksh will have to change its name to SARDAR – JI – BAKHSH and to stop using the logo within two months. Under the order, Sardarbuksh will also refrain from using any green color in their logo or as a principal color in their marketing materials.

Further, SardarBuksh will not use, register, or seek to register any mark containing the term “Sardar” in connection with the components “Buksh”, “Bakhsh”, “Baksh”, “Star”, “Buck”, or “Bucks”, other than “SARDAR - JI – BAKHSH” or “SARDAR - JI - BAKHSH COFFEE & CO.”

During the final proceedings, SardarBuksh submitted to the Court that they should have the liberty to initiate infringement actions against any third party that uses a mark that is deceptively similar to 'Bakhsh'. However, the Court was of the view that they cannot file an infringement action, but could take action against a third party for passing off. The Hon’ble Court therefore ordered that if any third party uses the mark ‘BAKHSH’, Sardarbuksh has the right to file a suit against the said violator.

SardarBuksh will also withdraw their pending four applications for registration of trade marks containing the name SARDARBUKSH or any other application for registration containing the term “Sardar” in connection with the components “Buksh”, “Bakhsh”, “Baksh”, “Star”, “Buck”, or “Bucks”, other than “SARDAR- JI -BAKHSH” or “SARDAR - JI - BAKHSH COFFEE & CO.”.

Sardarbuksh has undertaken to comply with all settlement terms within two months from the Court's Order dated September 27, 2018.

Talking about the dispute, a Starbucks spokesperson told the Economic Times, a daily newspaper, that ‘We always prefer to resolve trademark disputes informally and amicably whenever possible, and to prevent confusion among customers.[1]

DISCLOSURE: The Firm S.S. Rana & Co. was the Legal Counsels on behalf of the Plaintiff, Starbucks Corporation in the above case.

ORDER: http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=221541&yr=2018 

For more information please write to us at : info@ssrana.com

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[1] https://economictimes.indiatimes.com/industry/cons-products/food/storm-in-a-coffee-mug-starbucks-vs-sardarbuksh/articleshow/65586606.cms

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