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

In this case, Hasmik Nersesyan, a business in Belgium, filed an EUTM application for the above figurative mark featuring the words COFFEE ROCKS within a black and white circular disk device in the centre of which is placed a musical note, the end of which has the shape of a coffee bean. That coffee bean shape also appears in a much smaller size on either aside of the ring within the disk. The EUTM application sought protection for coffee services in trade mark class 43.

When the EUTM application was published by the 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/cafe services.

Opposition Division of EUIPO

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. Now for a brief word on the legal nub of this dispute.

Under EU trade mark law, in order to win a case in which the claimant argues that there is a likelihood of confusion between two marks, the claimant must first show that the marks in question are either identical or similar. It doesn’t matter how famous the claimant’s mark or how similar the products or services may be unless you first show that the marks are identical or similar. If the marks are held to be dissimilar it is “game over”, so to speak, for the claimant. The same approach applies too for the separate legal claim that the defendant’s mark takes unfair advantage of or damages the reputation of the claimant’s famous mark: unless the marks at issue are identical or similar, the fame or unfairness of the defendant’s conduct is irrelevant.

As a consequence, in order to win trade mark cases in the EU, including involving EUTMs, it is vital to win the argument that the marks at issue are identical or similar. Let’s get back now to the decision in STARBUCKS/COFFEE ROCKS.

Board of Appeal of EUIPO

Perhaps not surprisingly, when the EUIPO Board of Appeal looked at the marks in question, it concluded that the elements in common – the word “COFFEE”, the circular device shape, and the similar font type – was not enough to make them similar. It took the view that the overall impression given by both marks was dissimilar. This is because it decided that the main elements of both marks were different: different as to the word elements STARBUCKS COFFEE/COFFEE ROCKS, and the figurative elements: a mermaid versus a musical note.

Starbucks Appeal to EU General Court

However, when Starbucks appealed to the EU General Court, they succeeded in overturning the decision that the marks were dissimilar. Suddenly, dissimilar marks were declared 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. These were: the overall general appearance (based on the 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 consequence, the General Court decided that the EUIPO Board of Appeal was wrong 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 of marks. We shall have to wait and see what the EUIPO Board of Appeal decides after it has taken in to account these findings of the EU General Court.

Point of interest

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. Although the defendant in this case –  Hasmik Nersesyan – might have assumed, perhaps reasonably, that by avoiding any reference to the word mark STARBUCKS or the mermaid device, and instead merely using elements such as general shape and font style which reflected the STARBUCKS registered marks, he would avoid a trade mark conflict with Starbucks, this decision of the EU General Court demonstrates that even just a low level of similarity between trade marks might be sufficient in law to lead to a finding that two trademarks are similar.

What, to the average consumer, might be regarded as dissimilar will not necessarily be the same in a trademark dispute before the courts or the trademark 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 Azrights, we have the expertise to advise you as to the clearance, protection, and enforcement of your brands.