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16 January 2018Trademarks

Starbucks gets refreshing TM decision from EU court

The EU General Court has annulled a European Union Intellectual Property Office decision, which had rejected an objection filed by Starbucks against a coffee-related trademark.

The court handed down its judgment today, January 16.

Coffee chain Starbucks, which operates nearly 30,000 branches worldwide, filed a notice of opposition against Belgian woman Hasmik Nersesyan’s application to register the mark 'Coffee rocks' in 2014.

Nersesyan filed to register her figurative mark in 2013 as an EU trademark, under number 11,881,943 for class 43, which includes coffee houses. The circular mark is black and white, and features the words 'Coffee rocks' around a smaller circle featuring an image of a musical note.

'Coffee rocks' is visually, figuratively, and conceptually similar to marks owned by Starbucks, according to the coffee chain.

Starbucks listed 11 trademarks in its opposition to the applied-for mark, including its green, white, and black mermaid logo, EU trademark number 689,786, as well as earlier black and white versions of the same mark.

Starbucks alleged that the 'Coffee rocks' mark was so similar to its own mark that there was a likelihood of consumer confusion, and that the confusion was made more likely by the identical services provided by the two parties.

In May 2016, the EUIPO’s Fourth Board of Appeal dismissed the opposition, concluding that the marks were “dissimilar from a visual point of view”.

The General Court considered that the circular marks share a central element, with similar word structures in the same font.

As the marks are partially identical, the EUIPO erred in declaring that the marks were dissimilar, said the General Court. The court added that the EUIPO had failed to carry out an overall assessment of the likelihood of confusion.

The judgment stated that “visually, the signs at issue have the same general appearance in common and are based on the use of the same structure and word in common ‘coffee’”, so the mark ‘Coffee rocks’ would “take unfair advantage” of Starbucks’ reputation.

In November 2017, the Intellectual Property Office of Singapore rejected Starbucks’ opposition to a mark applied for by a Japanese manufacturer of dairy products, according to WIPR.

The mark related to coffee and milk products and was circular in design, with black and white colouring and similarly positioned writing.

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