To what extent can brand owners enforce their registered rights against signs which "draw inspiration" from earlier trade marks? This was, in essence, the question posed by Starbucks Coffee and answered by the General Court in a decision earlier in the new year.

A Belgian national filed an application to register the COFFEE ROCKS logo as an EU trade mark covering services providing drinks, in 2013. The application was opposed by Starbucks on the basis of numerous earlier registrations for its iconic logo.

Some of Starbucks' earlier rights covered services identical to those of the later application. That was not in dispute; the case turned on the question of similarity of the respective signs, with both the opposition division and Board of Appeal concluding they were dissimilar.

The Court disagreed. In fact, it stated, there are three sets of similarities:

  1. The signs have "the same general appearance", insofar as they are circular devices consisting of two parts, figurative central elements with banding and word elements with similar placing;
  2. They both use black and white and the same font and word placement; and
  3. They share the common word element COFFEE.

The Board of Appeal was incorrect to find that the word COFFEE could, by virtue of being descriptive, be discounted or considered negligible in the overall assessment: "In the light of the fact that the signs at issue are partially identical as regards one or more of their relevant aspects, the Board of Appeal erred in finding that the marks '[were] dissimilar from a visual point of view', thus ruling out any possibility of similarity, even a low degree of similarity". The same applied to a phonetic comparison.

It follows from the above, the Court concluded, that, in accordance with the long established interdependence principle, the Board of Appeal erred in not carrying out an overall assessment of a likelihood of confusion.

The decision suggests that any similarities between two signs being compared must lead to a finding of some similarity, and hence an assessment of whether there is a likelihood of consumer confusion must be carried out. Any differences cannot outweigh the similarities to the extent that the marks are overall similar.

While the line of reasoning is sound, the scope of protection which this decision potentially implies will be afforded to Starbucks' sign may be considered surprising. As well as stressing that elements of trade marks cannot be ignored when making an overall comparison, even where they are devoid of distinctiveness, this case also emphasises the value of persistence.

Starbucks received the "wrong" decision at first instance and on appeal. The annulling of those decisions by the General Court shows that maintaining your position when you have an arguable case can pay dividends for brand owners.

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