Coffee giant Starbucks has succeeded in its latest appeal to preserve its well-known figurative logo. Ms Hasmik Nersesyan, from Belgium, applied to register her sign ‘COFFEE ROCKS’ as an EU trademark for services for providing drinks in November 2013. In February 2014, Starbucks filed a notice of opposition and claimed that the application should be refused because of EU Trade Mark Regulations. The Regulations state that a trademark can’t be granted if it’s ‘identity’ or ‘similarity’ to another trademark could cause a ‘likelihood of confusion on the part of the public’, including of ‘association’.
The European Union Intellectual Property Office and Fourth Board of Appeal found the marks were visually, phonetically, and conceptually dissimilar – and rejected the objection.
This January, the EU General Court overruled this. It said that Starbucks’ opposition was based on its figurative, well-known circular marks. Nersesyan’s mark was a figurative circular mark with the words ‘Coffee Rocks’ around the outside, and a musical note in the middle.
The General Court’s judgment sided with Starbucks. It ruled that Nersesyan’s mark had ‘three sets of visual similarities’ to the Starbucks marks:
- the use of black and white
- the use of the same font and same positioning of wording for STARBUCKS COFFEE and COFFEE ROCKS
- the use of the common word ‘coffee’.
The Court confirmed that the phonetic similarity of the ending of the words ‘Starbucks’ and ‘Rocks’ added to the overall similarity and ruled that the EUIPO ruling must be annulled. The application was rejected and the use of the logo by Coffee Rocks, ground to a halt.
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