Tom Ekeberg (Zacco) published an interesting story for Lexology regarding a trademark dispute between Coca Cola and the Norwegian beverage producer OM, which tried to use the trademark JALLASPRITE. Coca Cola complained about such use and as a result, OM replaced its mark with JallaXXXXXX.
However, even with that outcome, Coca Cola initiated a lawsuit claiming that with XXXXXX part of the mark OM was trying to take advantages of SPRITE trademark well-known status amongst the consumers. The reason for this is the fact that according to the US company most of the consumers will understand that XXXXX is a replacement of SPRITE bearing in mind the dispute between the companies.
According to the Court’s decision, when it comes to JALLASPRITE there is no need for a temporary injunction due to the fact that OM took all necessary steps to discontinue the use of the sign at hand.
With regard to JallaXXXXXX, however, the court supports the Coca Cola’s position because OM did their best to communicate amongst Norwegian consumers that XXXXXX is a replacement of SPRITE as a consequence of the US company’s legal proceeding against them. In that way, OM tried to take unfair marketing advantages of the situation. This creates a clear connection between SPRITE and JallaXXXXXX as brands.
The General Court of the EU has ruled in case T‑61/16 Coca Cola v EUIPO which concerns an attempt by Syrian company to register the following EU trademark for drinks:
Coca Cola filed an opposition against this application based on several earlier marks among which the following:
The company claimed that the later mark tries to gain unfair advantages from the reputation of its famous trademarks imitating their font.
Initially, EUIPO dismissed the opposition considering both signs dissimilar. This decision was appealed and the Court invalidated it. In the followed re-examination the EUIPO dismissed the opposition again as groundless.
Now the General court upheld its initial position on the case concluding that the EUIPO had erred in its assessment of the evidence relating to the commercial use of the sign outside of the EU by disregarding inferences and probability analyses of the risk of free-riding within the EU.
It added that the manner in which the ‘Master’ sign is currently used is likely to lead to a “non-hypothetical” future risk of unfair advantage in the EU.
Coca-Cola successfully defended its trademark for smoothies and foods in New Zeland. The case at hand concerns a New Zeland company under the name of Innocent Foods that offers different smoothies in its cafes using the same name.
Coca-Cola accused that company of trademark infringement of its earlier registered mark “Innocent” for juice and food.
The New Zeland company agreed to change its name although they consider the US company as a greedy.
The main problem in such situations, however, is the lack of searching for prior rights which can identify all previously registered trademarks and will save money and time for rebranding.