Present suit has been filed by the Plaintiff seeking decree of permanent injunction restraining the Defendants, their partners, etc from infringing Plaintiff’s registered trademark “FRAPPUCCINO” either alone or with any prefix or suffix or any other confusing and deceptively similar trademark in relation to their goods, services and business.
It is averred by the Plaintiff that they have been using the trademark FRAPPUCCINO and variations thereof for its widely popular hand-crafted blended cold beverages throughout the world in various flavours. Plaintiff spends substantial amount on advertisement and sales promotion. Plaintiff contended that due to extensive use, world-wide sales and marketing and premium quality of the goods sold under the said marks, Plaintiff has earned formidable goodwill and reputation. Plaintiff is a registered proprietor of the trademark FRAPPUCCINO in India in various classes and the registrations are valid and subsisting, giving the Plaintiff an exclusive statutory right to use the trademark in India. Further, it was contended that the Plaintiff has been using the registered trademark FRAPPUCCINO continuously and extensively all over the world for more than 24 years and the trademark is recognised by the public at large. They also pleaded that FRAPPUCCINO is a well-known trademark under section 2(1)(zg) of the Trade Marks Act, 1999.
Plaintiff has averred that the defendants were selling/serving beverages under the name ‘BUTTER SCOTCH FRAPPUCCINO’ and ‘HAZEL NUT FRAPPUCCINO’, without Plaintiff’s permission, authorization or license. The marks used by the Defendants are phonetically and visually identical to the Plaintiff’s FRAPPUCCINO mark.
Compelled by the circumstances, it is averred, Plaintiff sent a cease and desist notice to the Defendants. However, despite receipt of the notice as well as reminders and negotiation talks telephonically, Defendants continued to sell the impugned products. Having no option, the present suit was filed.
It was observed by the court that the defendants are clearly infringing the trademarks as well as passing off their goods as those of the Plaintiff’s by use of identical mark FRAPPUCCINO in respect of identical goods. The adoption and continued use of the impugned trademarks by the Defendants is dishonest, without due cause and in bad faith. There is no bona fide explanation for its adoption and Defendants have deliberately chosen to keep away from the proceedings, as they know fully well that they have no defence. The intent was clearly to trade upon the immense goodwill and reputation of the Plaintiff and the usage of the trademarks having detrimental impact on the distinctive character of the trademark. Defendants have used identical marks with respect to similar goods and the trade channels and the customer base are also common. Therefore, the triple identity test is satisfied. The Court held that the defendants were guilty of infringement. Decree of damages is passed in favour of the Plaintiff and against the Defendants.