Authored By: NEERAJA SANTHOSH
REVA University
1. Case Title and Citation
Starbucks Corporation v. SardarBuksh Coffee & Co. & Ors., CS(COMM) 1007/2018
2. Court and Bench
Delhi High Court (Commercial Court), presided over by Hon’ble Justice Manmohan.
3. Date of Final Judgment
The interim order was passed on 1 August 2018. The matter was ultimately settled by consent on 27 September 2018.
4. Parties Involved
- Plaintiff: Starbucks Corporation (US-based coffee chain)
- Defendants: SardarBuksh Coffee & Co. Pvt. Ltd. and associated entities (later joined by Karo Foods India LLP and SardarBuksh Coffee Pvt. Ltd.)
5. Facts of the Case
Starbucks had registered the word mark “STARBUCKS” and its logo in India in 2001. In 2015, the defendants — a Delhi-based coffee startup — began operating under the name “SardarBuksh Coffee & Co.” with a circular green and black logo depicting a turbaned man.
In 2017, following a letter of demand from Starbucks, SardarBuksh altered the logo’s colour scheme to black and yellow but continued to use the same name. In May 2018, the defendants resumed business under the same name. These events prompted Starbucks to institute proceedings before the Delhi High Court, alleging that the defendants’ mark — both the name and the logo — was deceptively similar to its own. Both businesses sold similar coffee and related products.
6. Issues Raised
- Whether the defendants’ mark “SardarBuksh Coffee & Co.” (word and device mark) is deceptively similar to the plaintiff’s registered trademark “STARBUCKS.”
- Whether the use of the mark “SardarBuksh Coffee & Co.” by the defendants is likely to cause confusion or deception among consumers of average intelligence and imperfect recollection.
- Whether the defendants’ adoption and use of the impugned mark amounts to trademark infringement under Section 29 of the Trade Marks Act, 1999.
- Whether the impugned mark satisfies the statutory test of deceptive similarity under Section 2(1)(h) of the Trade Marks Act, 1999.
- Whether the plaintiff is entitled to a decree of permanent injunction restraining the defendants from using the impugned mark.
7. Arguments of the Parties
Arguments of the Plaintiff (Starbucks Corporation)
The plaintiff contended that the defendants’ mark “SardarBuksh Coffee & Co.” was phonetically and visually similar to its registered trademark “STARBUCKS.” The plaintiff argued that the similarity in pronunciation, coupled with the use of a circular logo design and comparable colour schemes, was likely to mislead and confuse an ordinary consumer of average intelligence and imperfect recollection.
Starbucks relied upon Section 2(1)(h) of the Trade Marks Act, 1999 to establish deceptive similarity and invoked Section 29 to argue trademark infringement. The plaintiff further relied on the principle laid down in National Sewing Thread Co. Ltd. v. James Chadwick & Bros., AIR 1953 SC 357, which established the test of consumer confusion — commonly referred to as the “Chadwick test.”
Arguments of the Defendants (SardarBuksh Coffee & Co. & Ors.)
The defendants’ detailed arguments were not extensively reported in the available sources. However, it is noted that upon receiving objections from the plaintiff, the defendants altered their logo’s colour scheme in an attempt to differentiate their mark while continuing to use the name “SardarBuksh.”
Subsequently, during the proceedings, the defendants agreed to rebrand their outlets as “Sardarji-Bakhsh Coffee & Co.” pursuant to the settlement recorded by the Delhi High Court. This implicitly acknowledged the likelihood of confusion between the competing marks.
8. Judgment
The Delhi High Court ruled in favour of the plaintiff, Starbucks Corporation.
Interim Order (1 August 2018)
In its interim order dated 1 August 2018, the Court permitted the defendants to continue business in certain outlets but imposed restrictions on expansion. The Court clarified:
“In the meantime, it is clarified that the defendants are permitted to carry on business in their twenty additional outlets under the trademark Sardarji-Bakhsh.”
The Court further clarified:
“However, it is clarified that the present arrangement is without prejudice to the rights and contentions of either of the parties.”
Thus, while temporary relief was granted, the Court ensured that the defendants could not continue expanding under the impugned mark without modification.
Final Order and Settlement (27 September 2018)
On 27 September 2018, the parties placed the settlement terms before the Court.
The Court recorded:
“Today learned counsel for the parties have handed over the settlement terms duly signed by the parties as well as by their counsel. The said settlement terms are taken on record and both the parties are held bound by the same.”
The Court then decreed the suit in terms of the settlement, stating:
“Accordingly, the present suit is decreed in accordance with the settlement terms. Registry is directed to prepare a decree sheet in terms thereof.”
Additionally, the Court clarified:
“With consent of the parties, it is clarified that if the mark ‘BAKHSH’ is used by a third party, then the defendants shall also have the right to file a suit against the said violator.”
Pursuant to the settlement, all outlets of the defendants were permanently rebranded as “Sardarji-Bakhsh Coffee & Co.” The plaintiff effectively obtained injunctive relief against the continued use of the mark “SardarBuksh,” and the matter was disposed of by consent decree.
9. Legal Reasoning and Observations
The Delhi High Court applied the test of deceptive similarity under Sections 2(1)(h) and 29(2)(b) of the Trade Marks Act, 1999. Relying on the principle laid down in National Sewing Thread Co. Ltd. v. James Chadwick & Bros., AIR 1953 SC 357, the Court assessed the marks from the perspective of a consumer of average intelligence and imperfect recollection.
The Court found that “SardarBuksh” and “Starbucks” were similar in sound, structure, and overall commercial impression. It further observed that the logos shared a similar circular device format, comparable central imagery — a crowned or turbaned figure — and similar colour schemes, thereby increasing the likelihood of consumer confusion.
Considering Starbucks’ established goodwill, the Court held that an ordinary consumer could reasonably be misled, and accordingly concluded that the defendants’ mark was deceptively similar and infringed the plaintiff’s registered trademark.
Commentators have noted that the decision reinforces the protection of trademark distinctiveness and goodwill, emphasising that even minor similarities in name or trade dress cannot be overlooked in the case of well-known marks. The ruling affirms the availability of strong injunctive relief against deceptively similar imitations.
10. Conclusion
The decision in Starbucks Corporation v. SardarBuksh Coffee & Co. & Ors., CS(COMM) 1007/2018, reaffirms the strong protection accorded to registered trademarks under the Trade Marks Act, 1999. The Delhi High Court concluded that cumulative phonetic, visual, and structural similarities between the marks created a real likelihood of consumer confusion, and therefore amounted to infringement.
Applying the “Chadwick test” from National Sewing Thread Co. Ltd. v. James Chadwick & Bros., AIR 1953 SC 357, the Court assessed the competing marks from the perspective of a consumer of average intelligence and imperfect recollection, rather than undertaking a microscopic comparison of minute differences. It found that “SardarBuksh” and “Starbucks” were phonetically similar, shared a comparable rhythm and structural composition, and created a similar overall commercial impression. The Court further noted that the defendants’ device mark adopted a circular trade dress and a central figurative element closely resembling the plaintiff’s logo, along with a similar stylistic presentation and colour scheme. When these elements were considered cumulatively rather than in isolation, the Court concluded that an ordinary consumer was likely to be confused or misled into believing there was an association between the two businesses.
On this basis, the mark was held to be deceptively similar, justifying the grant of injunctive relief and the direction for rebranding as recorded in the settlement decree. Practically, the ruling underscores two key points:
- Registered marks and their associated goodwill receive robust protection against deceptively similar imitations.
- Minor alterations in name or trade dress will not avoid liability where the overall impression remains confusing.
The judgment thus serves as a significant precedent in Indian trademark law, strengthening the enforcement framework for registered marks. It also demonstrates that settlement-based consent decrees, once recorded by the Court, provide an efficient and legally binding mechanism for the final resolution of intellectual property disputes.
