29 November 2017Trademarks

Starbucks trademark opposition rejected in Singapore

The Intellectual Property Office of Singapore (IPOS) has rejected an opposition from Starbucks to a trademark application from a Japanese manufacturer of dairy products.

Morinaga Nyugyo Kabushiki Kaisha (also trading as Morinaga Milk Industry) applied in 2013 to register a trademark in classes 29 and 30 relating to coffee and milk products.

The trademark included a black circular logo with ‘McRainier’ written inside at the top and ‘Espresso & Milk’ underneath. In between the two phrases was a white-lined circle with mountain tops in the centre.

The application was published in March 2015 for opposition.

A year later, Starbucks claimed that this was too similar to its logo which features a green outer circle incorporating the words ‘Starbucks’ and ‘Coffee’ and an inner circle featuring a mermaid.

However, on November 22, IP adjudicator Lorraine Tay found that the two parties’ respective marks were dissimilar.

She rejected Starbucks’ arguments that the green-black-white colour scheme and the layout of the marks within a concentric circle device rendered the marks similar.

“The colour scheme or concentric circles were not in themselves distinctive identifiers of the opponent’s goods as well. The distinctiveness of the opponent’s marks resided in the depiction of the marks as a whole, in which the textual element (ie, ‘Starbucks’) and/or the mermaid icon played a huge role.”

She added: “The absence of mark-similarity means that one of the critical elements necessary for a confusing connection to be established is lacking; and if there is no confusing connection, there cannot logically be a likelihood of damage.”

The decision comes after Starbucks filed a  with the Trademark Trial and Appeal Board earlier this month.

Starbucks’  mark, an outline of its white cup with a green circle in the middle, was applied for in July 2015. The mark covers class 30 (coffee, tea and hot chocolate) and class 43 (coffee bar and tea house).

However, it was refused registration in class 30 because the mark differed in the drawing and specimen, and was rejected in class 43 because the specimen was illegible.

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16 January 2018   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.