Coffee giant Starbucks fires double shot against Coffee Rocks

A recent trademark dispute decision of the EU General Court highlights the potential pitfalls of adopting brands which mimic the “look and feel” of famous brands without using the same word mark or primary device feature.

Trademark Dispute

By way of background, the case involved Belgium coffee lover, Hasmik Nersesyan, who filed an EU trade mark (EUTM) application for the above figurative mark featuring the words COFFEE ROCKS within a black and white circular disk device with a musical note, the end of which is shaped as a coffee bean. That coffee bean shape also appears in a much smaller size on either side within the circular disk. The EUTM application sought protection for coffee services.

When the EUTM application was published by the EU Intellectual Property Office (EUIPO), it was opposed by Starbucks on the basis of a number of its earlier EU and UK trade mark registrations, including its well-known STARBUCKS COFFEE device mark (shown above). Starbucks’ earlier registered marks are protected for identical coffee/café services.

The EUIPO opposition division rejected the opposition on the basis that the marks of both sides were dissimilar. This decision was upheld on appeal by the EUIPO Board of Appeal when it concluded that the elements in common – the word “COFFEE”, the circular device shape and the similar font – was insufficient to make them similar. It took the view that the overall impression given by both marks was dissimilar because the main elements (the words – STARBUCKS COFFEE/COFFEE ROCKS and figurative devices – a mermaid/musical note) were different.

Starbucks Appeal

However, Starbucks appealed to the EU General Court and it succeeded in overturning the decision that the marks were dissimilar. Somehow dissimilar marks were now similar!

The General Court agreed with Starbucks that despite the fact that the word marks (STARBUCKS COFFEE v COFFEE ROCKS) and figurative elements (mermaid v musical note) were different, there were nevertheless some similarities between the trade marks. Those similarities given were: the overall general appearance (based on the same colour and shape), the fact that the word “COFFEE” was in common, and even the fact that there was some phonetic similarity between the word elements “BUCKS” and “ROCKS” (which might seem a little far-fetched for English speakers).

As a result, the General Court decided that the EUIPO Board of Appeal was incorrect to have ruled out even a low degree of similarity between the trade marks. It therefore has sent the case back to the EUIPO to consider Starbucks’ claims of confusion and unfair advantage in light of its finding that there was at least some similarity between the marks. It will be interesting to see what the EUIPO decides following the findings of the EU General Court.

Comment

Although this legal ruling does not break new ground, it is a warning to businesses that might be tempted to mimic a famous brand as part of their own branding. What, to the average consumer, might be regarded as dissimilar will not necessarily be the same in a trademark dispute before the courts or registry.

The take-home point here is clear: before you use or apply to register a trademark which arguably mimics a well-known or famous brand, even only as to background or general features, you should seek professional advice as to whether your brand might lead to a conflict or dispute with the earlier mimicked brand.

Here at Tidman Legal, we have the expertise to advise you on all aspects of your brands, from clearance and protection to licensing and enforcement. For further information or advice, please contact us.

Tidman Legal is a firm of specialist intellectual property lawyers based in Edinburgh. 

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