Businesses usually register their trademarks in order to protect their brands and to prevent third parties from taking advantage of the goodwill and reputation they have built in the economy. They register their trademarks all over the world and proactively seek to prevent any infringement by taking quick legal action against infringers. There are some landmark cases with respect to trademark infringement in India which clearly show how registration protects the company and prevents loss.
- Starbucks Corporation v. Sardar Buksh Coffee & Co
Starbucks is an American multinational chain of coffeehouses, established in 1971. It is headquartered in Seattle and is currently the largest chain of coffeehouses in the world.
In India, Starbucks is known as Tata Starbucks Private Limited and branded as Starbucks “A Tata Alliance”. It is a 50:50 joint venture between Starbucks Corporation and Tata Consumer Products. In 2001, Starbucks registered their trademark- the name STARBUCKS along with their world-famous logo of the long-haired crowned maiden.
In 2015, a small local vendor started small coffee chain in Delhi with the name SardarBuksh Coffee & Co. Using this name, the business grew in size and popularity and soon was converted into a private limited under the name SardarBuksh Private Limited. Not only did their name sound similar to that of Starbucks but their logo also resembled the coffee giant’s.
Starbucks sued the chain in the Delhi High Court under the grounds of “Duplicitous word mark and logo” and deceptively similar analogy (derived from Section 2(1)(h) read in Section 11 of Trademarks Act 1999) . The court took into account that the products offered by the two companies are similar. In the event that the offerings are different, then having a similar or near identical name does not constitute an infringement.
The Defendant agreed to change their name within 2 months and their new name is Sardardji Bakhsh Coffee & Co. They added the condition that no other business can use the word Bakhsh and they reserve the right to sue if used. The logo has not been changed.
This is not the first time Starbucks has filed suits for the infringement of their trademark. Restaurants and coffee shops in Texas, Oregon and even in Canada have been at the receiving end of notices and suits for infringement from the multinational giant.
A small café in Pakistan known as Sattar Buksh also received notice of IP violations. Fortunately they were not taken to court as they contested that their name has been in existence for over 500 years. Unlike Sardarji Bakhsh, they did change their logo to avoid yet another potential legal battle.
- The Coca-Cola company v. Bisleri International Pvt Ltd
The Coca- Cola company is an American multinational beverage corporation established
In 1892. It is headquartered in Atlanta and is famous for the sugary drink Coca-Cola. The Coca-Cola company is engaged in the manufacture, production, retail and marketing of alcoholic as well as non-alcoholic beverages, syrups and concentrates. It is the largest
Coca Cola purchased and acquired the intellectual property and formulation rights as the goodwill of Maaza from the Indian beverage company Bisleri International Private Limited. The two companies signed a deed containing the following chief clauses:
- Goodwill acquisition
- IPR transfer
- No-use, no-compete clause
- Relinquishment and compensation of the rights to franchise
In 2008 Bisleri filed an application to register the trademark Maaza in Turkey and subsequently began export under the same trademark. They were under the impression that the agreement signed was related only for any transactions or use in India and was not to be considered in case of any exports. Coca-Cola soon filed a suit for trademark infringement in the Delhi High court once they became aware of the situation.
Three issues were raised in the court:
- Is there any infringement of the Trademark or passing off?
- Does Delhi High Court have jurisdiction over the matter?
- Does the Plaintiff is entitled to get a permanent injunction?
The Plaintiffs argued the trademark Maaza was assigned to Coca-Cola. Thus, any manufacture, whether within India or for export using the trademark will account to infringement. The Defendants argued that the product was sold in Turkey and not in India and thus there is no infringement of rights. They further added that the trademark was registered by them worldwide and they could use and sell the product using the trademark anywhere in the world except India.
On considering the facts and issues in the case, the court was of the opinion that any delivery of goods from one’s own country to another (exports) will constitute a transfer by sale within the country of origin of the goods exported itself. If any trademark is infringed in the process, it will be considered as infringement. The court ordered an interim injunction against the Defendant that would prevent them from using the trademark Maaza in India or abroad. It also answered the issue with regard to jurisdiction: since the Defendant is a manufacturer from India, the Delhi High court can entertain this case.
- Yahoo! Inc. v. Akash Arora & Anr
Yahoo! Inc is an American web service provider and search engine. It was established in 1994 and provides a range of services such as Yahoo mail, news, sports, finance and even an advertising platform. The Defendant in this case, Akash Arora, started providing his own web-based services which were similar to Yahoo!’s while also using a trademark that phonetically resembled theirs. This case is considered as a landmark case of cybersquatting in India.
The Plaintiff, Yahoo! Inc, has registered the trademarks Yahoo as well as Yahoo.com since 1995 and have an established reputation and goodwill associated with the same. The trademark was registered in 69 countries but was not registered in India. The Defendant offered services under the name Yahoo India and also applied for registration of this trademark which was approved.
Yahoo! Inc sued Akash Arora for deceptively employing a trademark that was almost identical to their own as well as offering nearly identical services as theirs. They sought a permanent injunction against the Defendant.
The issue of the case being:
- Whether a website or domain name is eligible for protection under the ambit of intellectual property rights
- Where the Defendant’s act of carrying out near identical services and registering the domain Yahoo India can be considered as an infringement of the trademark of the Plaintiff.
While the Defendant put forth very logical and reasonable arguments, the Delhi High court felt that Akash Arora was trying to take advantage of the high reputation and goodwill of Yahoo! Inc by making use of an identical name and providing the same services. The court was of the opinion that using near identical domain names might fool the users into believing that both are the same source. Akash Arora was held responsible for passing off and an injunction was passed restraining from further and future use of any such deceptive and similar marks.
- Zara Fashion v. Zara Food
Zara is a Spanish apparel retailer established in 1975 in Spain. It specialises in fast fashion and is famous globally. Zara is currently part of the Inditex group (the largest apparel retailer in the world).
In 2013, the global retailer (Plaintiff) sued a Chennai based restaurant (Defendant) for infringing their trademark. The restaurant was named Zara Tapas Bar.
The Plaintiffs argued that ZARA was a trademark which was registered by them in more than 85 countries and was a very well established and reputed brand. They have had a presence in India since 1986 (when it started its assembling operations) even though their first store opened only in 2010. In 2003, the Defendant opened their restaurant with the name Zara Tapas Bar. Two years later, the Plaintiff became aware of the Defendant’s intention to register the mark Zara Tapas Bar and sought to contradict the application. The Defendant’s hope for a co-existence agreement was refused and dismissed by the Plaintiff.
The Defendants argued that they were using the mark Zara Tapas Bar and not just Zara but this was contradicted by evidence. On social networking site, the name Zara was more often used. They added that they had been using the same for more than 10 years and that Zara was a common dictionary word and typical name in several countries. They also said that the mark had become public property (Publici Juris) and that several marks had the name Zara in them as well. On further investigation, it was discovered that it was after an outing to Paris that the Defendant decided to adopt the name where there are over 40 stores of Zara.
The court found out that the word Zara is not a dictionary word nor is it non-exclusive and this showed that the Defendant was using the name to take advantage of the apparel brand’s success and reputation. Thus, the Delhi High court ruled in favour of the Plaintiff and ordered the restaurant to change its name. Even the Defendant’s arguments that the services offered were vastly different and thus there would not be confusion among consumer were dismissed by the court. The court also ruled that with respect to the argument on Publici Juris, the Plaintiff had the right to decide whether to sue or take legal action against other infringers if they wish.
Author: Smriti Subramanian, Student of Christ (Deemed to be University)
References:
- https://www.sbs.com.au/language/english/starbucks-sues-india-s-sardarbuksh-for-copycat-brand-name-and-logo
- https://lawcirca.com/the-coca-cola-company-vs-bisleri-international-pvt-ltd-20-october-2009/
- https://blog.ipleaders.in/5-landmark-cases-for-trademark-infringement-in-india/
- https://www.legalwiz.in/blog/5-famous-trademark-cases-for-businesses-to-learn-from
- https://online.yu.edu/cardozo/blog/famous-intellectual-property-cases
- https://lawcutor.com/2020/06/06/yahoo-inc-vs-akash-arora-anr/
- https://www.sonisvision.in/blogs/post/case-study-on-zara-fashion-or-food
- https://www.dotnice.com/zara-vs-zara-a-trademark-tale/
Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)
Subscribe to YouTube Channel HERE
Join LinkedIn Group: Innovation & IPR
WhatsApp: +91 74838 06607
