A Starbucks Corp. business partner is suing the coffee chain for selling a nearly identical product that allegedly infringes its design and violates their exclusive seller agreement.
Bodum USA Inc. and Pi-Design AG—both named plaintiffs—say Starbucks is offering for sale an opaque French Press coffeemaker with a locking lid nearly identical to its patent called “Plunger-Filter Beverage-Making Machine with a Closable Pouring Opening.”
The accused product infringes at least four claims of US Patent No. 8,695,486 B2 through Starbucks’ production, use, sale, import, and production of the French press at issue, according to the complaint filed Tuesday in the US District Court for the Northern District of Illinois.
Bodum discovered in 2022 that Starbucks offered for sale the nearly identical French Press coffeemaker. Pi-Design—a subsidiary of Bodum—specializes in the design, development, and licensing of specialty housewares and is the owner of the ‘486 Patent, according to the complaint.
In its complaint, Bodum says it invested substantial time, money, and effort to establish goodwill in the marketplace for its modern Chambord design. The Chambord design originated in France in the 1930s, and Bodum designed and began selling a version of it in the 1970s, followed by various iterations of the design and acquisitions, according to the complaint and Bodum’s website.
Bodum also says Starbucks is violating the terms of a 2008 confidential settlement agreement from a separate infringement suit by selling the French press at issue. Under the agreement, Bodum is the exclusive supplier of French presses to Starbucks and says it has the right of first refusal, according to the complaint.
Bodum has been the exclusive seller of French press coffeemakers to Starbucks, and the two companies have worked together on various product lines for three decades, the company says.
Bodum in 2013 designed and manufactured a co-branded “BODUM + Starbucks” custom opaque French press with a locking lid after Starbucks requested it for sale to its consumers, the complaint says.
Bodum asserts Starbucks’ conduct has decreased its market share, damaged its brand, and caused it to lose profits.
Starbucks’ actions are willful because in February Bodum says it put the company on notice of the alleged violations. Bodum also says its counsel sent a notice for breach of contract and demanded Starbucks remove the product, but Starbucks refused to stop selling it in response to Bodum’s letter, the complaint says.
“We are aware of the claims made by Bodum and believe they are without merit,” Starbucks said in a statement to Bloomberg Law. “And we are prepared to defend our case in court.”
Bodum and Pi-Design are seeking injunctive relief, damages, pre- and post-judgment interest, attorneys’ fees, and costs.
Ziliak Law LLC represents Bodum and Pi-Design.
The case is Bodum USA Inc. and Pi-Design AG v. Starbucks Corp., N.D. Ill., No. 1:24-cv-05319, 6/25/24.