Proving that persistence is key if at first you don’t succeed, Starbucks Corp (Starbucks) has finally obtained a decision in its favour following a longstanding battle to prevent the registration of another trade mark in respect of the device shown below for 'Coffee Rocks'. This claim related to a dispute between Starbucks and the European Union Intellectual Property Office (EUIPO) concerning in particular the earlier finding of the Fourth Board of Appeal of EUIPO (the Board of Appeal) that the below devices were dissimilar.
The judgment is especially of interest because the EU General Court considered how similarity and the likelihood of confusion should be assessed for devices of this kind, and emphasised the importance of a global assessment of the likelihood of confusion, recognising that consumers perceive marks as a whole without engaging in an analysis of the various component parts.
Starbucks claimed that the ‘Coffee Rocks’ device infringed Articles 8(1)(b) and 8(5)of Regulation No 207/2009 (the Regulation).
In a nutshell, Article 8(1)(b) of the Regulation provides that an application to register a trade mark should not be granted when a proprietor of an already registered trade mark opposes the registration because there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is registered. A likelihood of confusion includes the likelihood of association with the earlier trade mark.
The EU General Court held that the assessment of the likelihood of confusion between the two devices, so far as the visual, phonetic or conceptual similarities are concerned, should be based on the overall impression given by the device, bearing in mind distinctive and dominant elements. The average consumer’s normal perception of a device was to see it as a whole, without engaging in an analysis of its various details. The EU General Court also indicated that it should be taken into account that the relevant consumer rarely has the chance to directly compare devices, and must therefore rely on imperfect recollection of them.
Starbucks pointed to the following similarities in support of its argument that, taken as a whole, the devices had the same general appearance:
a) a figurative element placed in the centre;
b) a band around the central element marked off on the inside by a white circle and on the outside a white circle with a black border; and
c) the same structure of wording in the band (ie one word at the top and one word at the bottom with symbols separating the two);
Having accepted the above similarities, the EU General Court found that the Board of Appeal had been wrong to find that the devices were ’dissimilar’ and consequently had also been wrong not to carry out an assessment of the likelihood of confusion. It held that an assessment of the likelihood of confusion should have been carried out, and observed that trade marks with a highly distinctive character (either per se or because of their recognition in the market) enjoy broader protection than trade marks with less distinctive character.
In essence, Article 8(5) of the Regulation provides trade mark owners with the right to oppose applications to register new trade marks where the use of the mark applied for would take unfair advantage of the reputation of the earlier trade mark, and would be detrimental to its distinctive character. There are three cumulative elements:
In the ‘Coffee Rocks’ case, on the basis that the Board of Appeal found that the two devices were dissimilar, it ruled out the application of Article 8(5) as it considered the first requirement not to have been met. However, as the EU General Court found that the Board of Appeal was wrong to conclude that the devices were dissimilar, it found that the Board of Appeal was also wrong in refusing to assess the grounds for infringement under Article 8(5).
Accordingly, the EU General Court annulled the Board of Appeal’s decision.
This decision provides useful guidance on how similarity and the likelihood of confusion should be assessed for devices of this kind. The decision also serves as useful reminder of the importance of carrying out a global assessment of the likelihood of confusion and recognising that consumers perceive marks as a whole without engaging in an analysis of the various component parts. On that basis, although when carrying out a side by side comparison there were a number of obvious differences (such as the central figure and the surrounding wording), when assessed globally, those differences were not deemed to outweigh the visual similarities.