A cupful of confusion: how similar do trade marks need to be?
The General Court has overturned both the Opposition Division and the Board of Appeal and sided with Starbucks, holding that the coffee company's logo is confusingly similar to a "COFFEE ROCKS" roundel mark.
The law
Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR) states that a trade mark application should be refused if it is similar to an earlier mark, is applying for identical or similar goods/services and there exists a likelihood of confusion by the public. Article 8(5) EUTMR provides that a trade mark application can be refused if an earlier mark enjoys a reputation where it is registered, and where, if used, the trade mark applied for would be detrimental to, or take unfair advantage of, the distinctive character or repute of the earlier right.
The facts
In 2013 an EU trade mark application was filed to register the figurative sign ‘COFFEE ROCKS’ for services in class 43, including "providing drinks".
Starbucks opposed the application, relying on four earlier rights and the law pursuant to Articles 8(1) (b) and 8(5) of the EUTMR.
The EUIPO Opposition Division rejected Starbucks' opposition and the Board of Appeal agreed with this decision. The case was then appealed further to the General Court. The General Court overturned the finding that the signs were not similar.
The decision
There was no dispute that the services were identical in so far as they overlapped. Therefore the focus was on the similarity of the signs.
Whilst there were elements which differed, the elements which were similar could not be taken as negligible. As set out in Matratzen Concord (T‑526/14), two marks are similar when, for the relevant public, they are at least partially identical as regards one or more relevant aspects. The General Court took the accepted approach when comparing the sign and considered the signs' visual, phonetic and conceptual similarities in turn.
- Visually, it was held that the signs had the same general appearance in common. Generally, word elements carry more weight than figurative parts. However, in this opposition, this was not held to be the case. Interestingly, the use of "coffee" in both the marks was taken into account as an identical element and important as forming the overall impression given by the marks, even though "coffee" was a descriptive term for the relevant goods/services.
- The phonetic comparison resulted in the conclusion that, even though there were differences in the pronunciation of the relevant phrases ("starbucks coffee" vs. "coffee rocks"), the "-bucks" and "rocks" were phonetically similar.
- Finally, the similarity of the general appearance of the marks and the use of the word "coffee" resulted in some conceptual similarity.
In conclusion, the Board of Appeal had erred in ruling out any similarity and not conducting any assessment of a likelihood of confusion between the marks, as well as refusing to assess the grounds set out in Article 8(5) of EUTMR on the basis that the Board considered the mark to be dissimilar. The General Court therefore annulled the Board of Appeal's decision.
Comment
This is an interesting decision which appears to attempt to evolve a number of established principles. We look forward to sitting down to read the Board of Appeal's second attempt at considering this case with a large cup of coffee to hand…