The General Court of the European Union (the “General Court”) recently ruled in favour of Starbucks, stating that the European Union Intellectual Property Office (EUIPO) must do a global assessment of similarity between the Starbucks and Coffee Rocks logos.
The famous Starbucks logo is two concentric circles with a black and white image of a mermaid in the first circle and the words “Starbucks Coffee” written around this in white on a green background, with two stars separating the words. The Coffee Rocks Logo also consists of two concentric circles with the inner circle containing an image of a minim formed with a coffee bean at the bottom of the stem, the words “Coffee Rocks” are written around this with two smaller versions of the minim in between the words.
Previously the EUIPO had ruled that the marks were “dissimilar from a visual view point” and completely differed in their distinctive and dominant elements – the image of a mermaid in contrast to the image of a coffee bean quaver. Therefore it was not necessary to assess the likelihood of confusion between the marks. Annulling this decision, the General Court ruled that the marks general appearance was similar, as they are both circular and consisted of a central image within a second circle surrounded by writing. The General Court went on to highlight “three sets of visual similarities”:
- The use of black and white colouring for a central image.
- The use of the same font for “STARBUCKS” and “COFFEE ROCKS”.
- Both marks contain the word ‘coffee’.
Furthermore the General Court noted the phonetic similarity between ‘rocks’ and ‘Starbucks’.
Although the General Court did accept that “there are a number of differences between the signs”, notably the use of a mermaid in contrast to a musical note, these differences do not mean that the previously mentioned similarities are negligible. Therefore, the EUIPO “having erred in ruling out any similarity – even a low degree of similarity – between the marks, erred in not carrying out an overall assessment of the likelihood of confusion”.
It is important to note that the General Court was not ruling that the “COFFEE ROCKS” mark was too similar to be registered. Rather, the focus was on the procedure to be followed by the EUIPO and it may still be ruled that there is no likelihood of confusion between the marks. The initial test done by the EUIPO focused on the several differences between the marks and stated that due to these differences there was no likelihood of confusion. This case clarifies further that in assessing the similarity of marks, one must focus on the similarities between marks as a whole and carry out a global assessment of the likelihood of confusion.
Contributed by: Leo Moore
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