Lakshay
Can two trademarks be deceptively similar phonetically or visually? [Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors, CS (COMM) 1007/2018]
Lakshay Parmar 21 Feb 2020

Can two trademarks be deceptively similar phonetically or visually? [Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors, CS (COMM) 1007/2018]

The essence of a trademark is that, it can be uniquely identified by a purchaser in the market. Also, a trademark carries a whole lot of attributes, most important being the goodwill it has earned over a period of time. When can it be said that a trademark is deceptively similar to another and what effect does it has on the party whose trademark is violated.

                                                     

Issue: Whether the Sardarbuksh trademark is deceptively similar to the Starbucks trademark phonetically or visually.

 

A Suit was brought in by Starbucks alleging Sardarbuksh of copying their company name as well as their logo, which is too close to their famous 2-tailed mermaid, and for illegal use in the promotion of their product.

 

Sardarbuksh has opened five coffee shops in Delhi, offering a wide menu of coffee, shakes and snacks. They were accused of copying a similar name as well as a very similar logo to that of the US global Starbucks coffee chain.

 

Background: Starbucks registered their trademark which consisted of a word mark i.e. STARBUCKS and a logo depicting “crowned maiden with long hair” in India in 2001. The defendants began their business in 2015 by calling their enterprise "Sardarbuksh Coffee & Co" where "Sardar" is a Hindi word meaning "Commander" and "Buksh" is a Hindi word meaning "Pardon." In May 2018, the defendants formed a private limited company with the name "Sardar Buksh Private Limited" and have been operating under that name since. The goods and services rendered by both the plaintiff and the defendant are the same. The defendants used a logo consisting of a circular black band with the words 'SARDARBUKSH COFFEE & CO.' and a turban Commander along with wavy lines extending from the edges.

 

In 2017, Starbucks asked the defendants to change their logo by way of a letter of demand. Further, it was modified to a color scheme of black and yellow and operations were commenced with the newly modified logo.

 

Eventually, Starbucks filed a suit against Sardarbuksh in the Hon’ble Delhi High Court (hereinafter referred to as “the Court”). The legal perspective was the deceptively similar analogy which is derived from Section 2(1)(h) read in Section 11 of The Trademarks Act, 1999 that states that, when two marks are put next to each other, if they cause confusion or mislead the viewers, they would be deceptively similar and therefore cannot be registered.

 

Observations: According to previous judgments there were various tests that were determined by courts to prove the deceptively similar analogy, such as test of likelihood and confusion, goodwill etc.  In the case of National Sewing Thread Co. Ltd. vs. James Chadwick and Bros AIR 1953 SC 357 it was held that “the controversy of deceptively similar can only be decided by stepping in the shoes of purchaser, who is considered to be a man with ordinary intelligence. If the identification of two brands causes confusion to the purchaser then it would be right to say they are deceptively similar”.

 

Further, the fact that both the parties are dealing in same kind of trade and offering same services to its customers, also plays an important role. In the case of M/s Nandhini Delux v. M/s Karnataka Co-operative Milk Producers Federation Ltd. CIVIL APPEAL NO. 2943-2944 OF 2018  it was held that, due to difference in the variety of products traded and difference in visuals of both companies the trademarks ‘NANDINI and NANDHINI’  will be considered to be non-infringing.

 

Besides the legal aspect of the present case, the marks being deceptively similar would also have certain economic complications on the plaintiff. Starbucks is a global brand having goodwill that has been amassed over a long period of time. Here, it can be said that the defendant had the knowledge of the global reputation that Starbucks has and further wanted to exploit that image to get market attention rapidly.

 

On 1st August, 2018 the decision was given by the Court in favor of Starbucks and further it ordered the defendants to modify their store name from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.”. The order for modification was given to the 20 stores that have not yet opened. The court also permitted to use the name “Sardarbuksh Coffee & Co.” for the previously operating two stores.

 

On 27th September 2018, it was also agreed that the defendant would change the name of all its outlets to "Sardarji-Bakhsh Coffee & Co." In addition, it was explained and decided that, if a third party uses the term "Bakhsh", then the defendant would have the right to bring an action against such a violator. The suit was settled on those terms.

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