Damrong Maslae and his brother Damras are two independent Thai coffee vendors who have recently become caught up in what has been labelled a ‘David vs Goliath’ battle after their company Starbung was sued by Starbucks for trademark infringement. While the case has now been settled, it highlights the difficulties facing trademark counsel who are concerned that certain enforcement actions could lead to negative publicity.

Starbucks delivered a cease-and-desist letter to the brothers late last year, calling for Starbung to stop using its logo and name. The US company subsequently filed a trademark infringement complaint and sought 300,000 baht ($9,600) in damages plus an additional 7.5% annual interest and monthly instalments of 30,000 baht until the pair drop the Starbung logo. But having obtained an injunction against the coffee vendors, Starbucks then filed a petition with Thailand’s Central Intellectual Property and International Trade (IP&IT) Court, calling for the arrest of the vendors for failing to comply with the injunction and continuing their use of the Starbung logo. Starbuck’s petition was rejected at a court hearing last week. The IP&IT Court urged the two sides to settle their dispute before the next hearing and since then Starbung has agreed to change its name to ‘Stylebung Coffee-Tea’.

For Stylebung, the battle with one of the world’s top 100 brands could prove to be a boon. The brothers have garnered a year’s-worth of publicity, and it is probably safe to say that they are the only street coffee vendor in Thailand with such a level of international brand recognition. Starbucks on the other hand has had attracted negative headlines for its action - appearing to some as a multinational trademark bully.

As previously reported by WTR, for every case such as Jack Daniels’ - which was praised in the media for ‘the politest cease and desist letter ever’- there are many more instances in which negative headlines focus on alleged aggression, rather than the legitimate exercise of rights. Bullying tactics for some will always be fair enforcement for others; unfortunately the latter is far from certain to result in positive media exposure. While Starbucks ramped up its pressure on the cofee vendors only after the latter had failed to comply with a legitimately obtained injunction, the headlines generated illustrate the difficulty facing brands in obtaining a victory in the court of public opinion as well as the court of law.

Comments

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RE: Starbucks falls prey to accusations of bullying in trademark dispute

Eric,

Thanks for the comment. As noted in the blog, Starbucks ramped up its enforcement efforts after previous attempts failed to obtain a response, and after the injunction was ignored. I think this has been missed in subsequent media coverage which has taken the 'big v small' hook and run with the bully narrative. For us it illustrates the problem facing trademark counsel as legitimate enforcement actions are easily painted as bullying when this is not necessarily the case.

Trevor Little, Globe Business Media Group on 15 Nov 2013 @ 14:20

RE: Starbucks falls prey to accusations of bullying in trademark dispute

Trademark rights are hard-earned assets and when someone blatantly rips them off, what else is the brand owner to do but pounce on them? I haven't seen the evidence in this case but it Starbung was using the Starbuck's logo, or something similar to it, one would think the brothers knew what they were doing was wrong. I don't think it's bullying to protect something valuable to you, especially if you've already gone to the time and expense of obtaining an injunction and the the defendants in the case are not complying with it.

Eric T Fingerhut, Dykema Gossett PLLC on 15 Nov 2013 @ 14:11

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