Case Analysis: Starbucks Corp v. European Union Intellectual Property Office (EUIPO)
Authored by - Thejuswini
Keywords - Logo, Starbucks, trademark & Regulation No. 207/2009.
The dispute is between Starbucks Corporation and European Union Intellectual Property Office. In this case, the logo which was to be registered by the European Union turned out to be similar to the logo which was previously used by Starbucks Corporation. Hence, Starbucks Corporation sued Coffee Rocks for using their trademark. The judgment was eventually made in favor of Starbucks Corporation for the herein mentioned reasons.
The trademark logos help the consumers to find out about their respective products. Suppose a situation arises, where you get confused with two logos as they have the same designs and words. You enter the company or shop, which contained that trademark, different from the one which you just thought of. In other words, it is very likely that you will be confused about the different trademark and this could possibly hinder your decision and on what basis were you were going to buy the product. This same situation could be seen in the case of Starbucks Corporation v. European Union Intellectual Property Office as Coffee Rocks of EUIPO applied for the registration of a logo that looked similar to that of the logos which were used by Starbucks in the past. This article exclusively deals with the facts, issues and judgment along with the reasoning of the same.
Facts of the Case
12 September 2013 - An application for the registration of an EU trademark was filed by one Ms. Hasnik Nersesyan. The mark which was given for registration purpose resembled the mark of the Starbucks corporation.
23 November 2013 - The application for the registration of the mark by the European Union was published in the Community Trademarks Bulletin No. 225/2013.
25 February 2014 - The Starbucks corporation opposed the application of registration of the Coffee rocks by the European Union and sued them in the court on the following grounds:
The trademark used by the European Union trademark is similar to earlier marks used by Starbucks.
There will be confusion formed in the minds of the consumers due to the usage of similar marks by both the brands.
It will result in the enjoyment of unfair advantage by coffee rocks as they are using the logo which was used by Starbucks corporation earlier.
In short, Starbucks Corporation wanted the Court to reject the registration of the marks as per Article 8 (1)(b) and 8 (5) of European Union Trademark Regulations.
19 February 2015 - Though Starbucks wanted the Court to reject the registration of the mark applied by Coffee Rocks, the verdict of the Opposition Division was not in the favor of Starbucks Corporation. According to the Divisional Bench, there were no similarities between the logo or mark used by Coffee Rocks with that of the logo or mark used by Starbucks. Therefore, the Court rejected the entire opposition put forth by Starbucks Corporation.
17 March 2015 - Starbucks Corporation appealed to the Fourth Board of Appeal of the European Union of Intellectual Property Office.
24 May 2016 - The appeal was dismissed by the Fourth Board of Appeal of the European Union of Intellectual Property Office stating that the logos used were dissimilar. It was also stated that there were no similarities in the figurative representations of both the logos.
Furthermore, it was also mentioned that there were no similarities between the logos except for the word 'Coffee'. Hence, it was declared by the Court that there will be no confusion in the minds of the public as far as the logos are concerned. In addition, it was also decided that there were no unfair advantages gained by Coffee Rocks.
As the decision was not in favor of Starbucks Corporation, they further appealed to the General Court.
1. Can there be a confusion formed in the minds of the people as provided under Section 8 (1)(b) of Regulation No. 207/2009?
2. Is Coffee Rocks taking unfair advantage of a trademark belonging to Starbucks?
The General Court by referring to the judgment namely Martratzen Concord GmbH v. Office for Harmonisation in The Internal Market (Trademark and Designs)stated that the consumer shall not give their special attention to the minute changes seen in the logo. Instead, they will observe the mark as a whole. As there are two expressions that are similar (i.e. the circles and the word coffee) in their logos, there are chances that the consumers can get confused.
In addition to this the court also referred to the precedent Perfetti Van Melle Benelux BV v. Office for Harmonisation in the Internal Market (Trademark and Designs) and opined that even though the descriptive element (i.e. the word coffee) will not be taken into consideration by the general public, that does not mean that the descriptive element can be wholly neglected. Taking such descriptive elements into consideration is very vital to understand whether these descriptions have a probability of being dominated by its own in the public.
Thus, by referring to the precedents, the General Court came to the conclusion that the general appearance of the signs and phonetic similarly of both the trademarks of Starbucks as well as coffee rocks shall create confusion in the minds of the people regarding the concept of a coffee shop.
As far as the second issue is concerned the General Court held that there was an unfair advantage of the reputation of the trademark enjoyed by coffee rocks. For this, the General Court referred to the three conditions provided under Article 8 (5) of Regulation No. 207/2009.
According to the General Court, the decision taken by the Fourth Board of Appeal of European Union Intellectual Property Office is incorrect as it presumed that the logos were dissimilar [as per Article 8(5) while making the judgment.
The General Court also opined that the linking of the logos is itself enough to establish that the logos are similar to each other.
Therefore, the General Court annulled the decision passed by the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) passed on 24 May 2016.
It also ordered Coffee Rocks/ The European Union Intellectual Property Office to make payments to the applicant as per Article 134(1) of Rules of Procedure of the General Court.
Trademark Law is a fundamental field of law that ought to be given importance because of its relevance in establishing the originality and acknowledging the creativity of companies. Fraudulent companies aiming to capture this creativity should be punished by the Courts. It is essential to understand that the similarity and differences between names and logos differ on a case to case basis. The judgment is determined on a circumstantial basis and there is no specific test to check whether there has been a replication of the existing logo.
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