An interesting case from Japan where Starbucks challenged a local company in a trademark dispute.
The Japanese beverage chain Bull Pulu Corporation filed the following trademark in classes 29, 30, 43:
Against this trademark an opposition was filed by the US coffee chain Starbucks based on the following earlier trademark in classes 18, 25, 30, 43:
The Patent Office dismissed the opposition finding both signs as not similar. The decision was appealed.
For Starbucks both marks were confusingly similar because the later mark uses the same green outer ring with latters in white color. The company submitted evidence to support its position including a consumer survey, according to which 80% of the respondents in Japan associated the green outer ring and words written in white with Starbucks as a company.
The Court dismissed the appeal in its entirety. According to the Court both signs were dissimilar and could not create a consumer confusion. The green outer ring has only decorative, design function. What matters for the similarity assessment of the marks is their word parts and in the case at hand they are completely different: Bull Pulu Tapioca v Starbucks Coffee.
The Court considered the consumer survey as misleading because the respondents were shown a blurred image of the Starbuck’s trademark in a way that they could discern the mark itself.
Source: Wisdom International Patent & Law Office for Lexology.