Is a circular logo for coffee confusingly similar to the Starbucks’ one? Yes, says the General Court

Not confused

Travelling on your way to work in the morning can sometimes be a real struggle and, to enlighten the travel experience, spoiling oneself by purchasing a cup of coffee is not a bad idea.

But can a wannabe coffee drinker look at coffee shops’ logos, and be confused and think that a circular figurative sign which depicts a musical note and contains the words ‘COFFEE ROCKS’ is similar or associated with the logo of Starbucks?

This is substantially the issue that the EU General Court had to address in Starbucks Corp v EUIPO & Nersesyan, T-398/16.

This recent decision concerns what is now Article 8(1) (b) of the EU Trade Mark Regulation (EUTMR). This provides that a mark should be refused on relative grounds if it is similar to the goods/services of an earlier mark, and there exists a likelihood of confusion on part of the public in the territory which the earlier mark is protected. Article 8(5) EUTMR adds that a trade mark can be refused registration if the earlier mark enjoys a reputation where it is registered, and where use of the sign for which registration is sought would be detrimental/take unfair advantage of the distinctive character or repute of the earlier mark.

Background

In 2013 Ms Nersesyan filed an application to register the figurative sign ‘COFFEE ROCKS’ as an EU trade mark (EUTM) for services for providing drinks (class 43) of the Nice classification:

The application was published in November 2013 and notice of opposition was (unsurprisingly) filed by Starbucks claiming that registration should be refused pursuant to Articles 8(1) (b) and 8(5) of the EUTMR. Starbucks had a number of earlier EU and national marks registered, inter alia, in Class 43 of the Nice classification. These, among other things, included:

The EUIPO Opposition Division rejected the opposition in its entirety, and this outcome was confirmed by the Fourth Board of Appeal.

By comparing the features to that of the ones in the sought application, the Board of Appeal found infact that the marks were visually, phonetically and conceptually dissimilar. Because the features were found dissimilar the Board of Appeal disregarded any assessment as of the likelihood of confusion between the marks.

Starbucks appealed the decision to the General Court.

The General Court’s judgment

In its decision a few days ago the General Court sided with Starbucks, noting that indeed a global assessment of the likelihood of confusion must be carried out as soon as there are some similarities between the signs at issue.

The global assessment entails an evaluation of the visual, phonetic and conceptual similarities of the signs at issue, based on the overall impression given by the signs bearing in mind their distinctive and dominant elements. The perception of the marks by the average consumer plays a decisive role in the assessment.

According to the General Court, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Settled case-law (eg Matratzen Concord, T‑526/14) has indicated that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. Accordingly, even if the dominant elements (the word ‘STARBUCKS’ compared to 'COFFEE ROCKS') completely differ, it cannot be found that other elements are negligible in the overall impression provided by those marks.

Furthermore, both marks include the word 'COFFEE' among their dominant elements. This element has to be taken into consideration despite the descriptive character of the goods/services concerned. Although descriptive elements of a trade mark are not generally regarded by the relevant public as being dominant in the overall impression conveyed by that sign, that does not mean that the descriptive elements are not necessarily negligible in the overall impression. It is necessary to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (TRIDENT PURE, T‑491/13).

Turning to likelihood of confusion, the General Court stressed that global assessment implies some interdependence between the similarity of the trade marks and that of the goods or services covered by them. Accordingly, a low degree of similarity between goods or services may be offset by a high degree of similarity between the marks, and vice versa. 

The interdependence of those factors is expressly referred to in Recital 8 in the preamble to the 2009 EU Trade Mark Regulation as amended by Regulation 2015/2424 (now Regulation 2017/1001), according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion. The assessment depends on numerous elements, in particular: the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified.

Finally, the General Court held that even though the word elements in a trade mark are, in principle, more distinctive than its figurative elements – the average consumer will in the present confuse the two marks because of: the signs general appearance as a whole, the phonetical similarity of the dominant elements ‘STARBUCKS’ and 'COFFEE ROCKS', and on the account of the word ‘coffee’ in both marks which relevant public will confuse with the concept of a ‘coffee shop’.

Thus, the Board of Appeal of the EUIPO had erred in ruling out any similarity between the signs and in particular, and in not carrying out an overall assessment of the likelihood of confusion.