Month: April 2021

The word “Coffee” is derived from “Kahwa” in Arabic. “Kahwa” means a warm traditional drink with sprinkling of chopped dry fruits. By the time it was introduced in the West, the words “Kaffee” in German and “Coffee” in English started to be used. The Western world added milk and coffee beans to it, letting go of the dry fruits, that is how the modern-day coffee got its aroma and strong taste.

Interestingly, intellectual property law finds its intersection with the global coffee industry. As per Nice Classification of trademarks, coffee lies in Class 30 as a commodity (beverages made up of coffee, coffee beans, ground coffee beans, cocoa, tea, etc.) and in Class 43 as services (coffee shops, outlets, etc.). Apart from serving hot or cold coffee, the beans are used a powdered-form in making biscuits, chocolates, cakes, liquor and ice creams.

The coffee brands like Starbucks, Dunkin’ Doughnuts, 5 Peet’s Coffee from the US, 3 Costa Coffee from the UK, Mc Café from Australia, Tim Hortons from Canada, Nescafe from Switzerland as well as Café Coffee Day, Barista and Bru Gold from India gained prominent positions in global coffee trade over the past decades.[i] In fact, many food industry experts have tried to analyze, why does Starbucks top the list of brands when there is nothing extraordinary in their coffee beans, and no special coffee or extra ingredients that produce addition aside from caffeine. After years of study, it was revealed by consumer psychologists that the credit for their success ascent can be given to their trademark protection and marketing. Trademark registration for their novel coffee names (brand names) has enabled them a three-fold benefit:

• deterring market entry to similar newcomer brands;
• product diversification and brand differentiation;
• building strategic business partnerships.

At Starbucks, one does not get just an ordinary cup of coffee, for the names “Pike Place blend venti” and “Grande Cappucino” are crafted with creativity and novelty. However, Starbucks Corporation had to file an infringement suit against the defendants, for using the trade name “Sardarbuksh.” In 2018, the Delhi High Court ordered the defendants to modify their store name from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.” for 20 stores that weren’t opened. However, the court permitted the use of the then existing name “Sardarbakhsh Coffee & Co.” for their two operating stores.[ii] Hence, keeping vigil over one’s brand name is of immense importance.

Another important aspect is highlighted by the founder of Starbucks, Mr. Howard Shultz, “Coffee Experience is more Important than Actual Coffee Quality.”[iii][iv] Once the consumers get familiar with the logo, they enjoy the coffee-purchasing experience at the coffee outlets with the slow soothing music in the background. They prefer to buy the same brand without switching to a new one. The actual magic is in both the caffeinated beverage on one hand and the way it is presented to the thirsty consumer on the other; trademark protection blends with its brand image and marketing like sugar in a cup of hot coffee.

BY

Adv. SHRADDHA PANDIT

B. A. LLB LLM

University of Mumbai

[i] Ten most popular coffee brands worldwide – https://www.tbsnews.net/feature/food/top-10-popular-coffee-brands-worldwide-145804

[ii] Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., CS (COMM) 1007/2018

[iii] Buyer Psychology and Customer Value: Why Do People Buy Starbucks Coffee?- https://www.business2community.com/customer-experience/buyer-psychology-customer-value-people-buy-starbucks-coffee-0995182

[iv] Strategic Analysis of Starbucks Corporation by Nithin Geereddy – https://scholar.harvard.edu/files/nithingeereddy/files/starbucks_case_analysis.pdf 

Shakespeare said, “What’s in a name? That which we call a rose by any other name would smell as sweet”[i] This may be true for other things, but not for trademarks. If one peruses the Trademark law, a ‘trademark’ carries with it a goodwill and reputation, which are extremely important for the restaurant’s overall brand positioning in the market. The name becomes synonymous with the identity of the restaurant.

Most food business owners are very good at expanding their business using varied advertising techniques, but are very negligent to protect their intellectual property. This is harmful, as they often end up in emptying their profits in long-drawn litigation. Hence, it is vital that the name of a restaurant or snack-joint must be registered as a trademark or a service mark under the Trademarks Act, 1999.

If the hotel, snack-joint, bakery or food company is providing packaged or ready-to-eat food it can apply for a TM registration under Classes 29,30,31 (for goods) and if it also provides for dine-in and home-delivery services, it can apply under Class 43 (for services). To cite some examples, the ‘Gajalee’ restaurant, world-renowned for its Maharashtrian and Goan seafood, ‘O Calcutta’, for tasty Bengali cuisine and the mouth-watering ice-creams of ‘Natural Ice Cream’ – have registered trademarks under multiple classes.

Sometimes, a newly-opened restaurant hurriedly applies for a TM registration, without being aware that the trademark has already been registered by some proprietor, who may be an established hotelier in some other part of the country. This invites legal action. If a prohibitory injunction is obtained by the hotelier, then the new-comer has to refrain from using the trademark till the matter is finally disposed of by the Court.

For example, the former ‘The Four Seasons space’ in New York City’s Seagram Building, is to be named “Landmark”, short for “Landmark Rooms”, though not even opened, it was already the subject of an infringement lawsuit brought by nearby Landmarc restaurant, (the case has since been settled).[ii]

Another famous example is the Ludhiana-based street vendor Ravinder Pal Singh Babbar, had to change the name of his burger-joint from ‘Mr. Singh Burger King’ to ‘Mr. Singh Food King’, after the Miami-based fast-food giant ‘Burger King’ filed a trademark infringement suit against him.[iii]

Trademark protection does not limit itself to only the names of restaurants or snack-joints. The names of important recipes or food preparations in the menu can also be registered as a TM. Examples are ‘Mcdonalds’ has registered its principal trademark along with ancillary ones like ‘BIG MAC’, ‘McALOO TIKKI BURGER’.

The vital tip is that before adopting a trademark and it printing it on the menus, handbills or making a website (domain name), conducting a public search for a restaurant is advisable. So, if you are to begin a venture, it is important to pay attention to minute detail to select a name for your food business or restaurant.

BY

Adv. SHRADDHA PANDIT

B. A. LLB LLM

University of Mumbai

[i] Quote from ‘Romeo And Juliet’ by William Shakespeare, c.a. 1600

[ii] Restaurants and Intellectual property: a Recipe for Success by Marc P. Misthal – https://grr.com/publications/restaurants-intellectual-property-recipe-success/

[iii] “Burger King vs. Mr. Singh Burger King” (2015)