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Starbucks wins back right to block rival trade mark … by Tania Clark, Withers & Rogers

by on January 19, 2018 in Lead Article, News you can use, Nuggets

Starbucks has won back the right to block a trade mark application, filed by a competitor, on the grounds it is confusingly similar to its own.

In a judgment this week (Tuesday 16th January 2018), the EU General Court annulled an earlier decision of the Board of Appeal at the EU Intellectual Property Office (EUIPO), which had dismissed Starbuck’s opposition to an EU trade mark application in 2014 by a Belgian woman, Hasmik Nersesyan.

By Tania Clark, partner and trade mark attorney at intellectual property firm, Withers & Rogers.

Ms Nersesyan’s brand is circular and shown in black and white, with the words ‘Coffee Rocks’ around a smaller, inner circle containing a musical note. The trade mark application sought protection for “services for providing drinks”.

The EU General Court found that the trade marks owned by Starbucks and Ms Nersesyan have the ‘same general appearance’. Both are ‘circular devices consisting of two parts’ and they feature a common word, ‘coffee’. It was also noted that the wording used on the marks – ‘Starbucks Coffee’ and ‘Coffee Rocks’ – appeared in the same font.

The marks are startlingly similar in terms of their overall appearance and it is difficult to imagine how the Board of Appeal could have reached a different decision.

In view of their similarities, the General Court had no choice but to annul the Board of Appeal’s decision, which means Starbucks has successfully blocked the ‘Coffee Rocks’ registration.

There is an important lesson here for brand owners to ensure the logos and corporate identities under development are not confusingly similar to any pre-owned registrations.

If the proper searches are not conducted, the brand may not be free for use and disruption to marketing strategies could follow, which could even require a change of brand name. Proactivity in assessing brand availability is essential to any marketing strategy.

By Tania Clark, partner and trade mark attorney at intellectual property firm, Withers & Rogers.

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