Starbucks lost a trademark dispute against Bull Pulu in Japan

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.

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Grumpy Cat won a lawsuit in the US

WIPR reports about an interesting lawsuit in the US which concerns the well-known Grumpy Cat which has become an internet sensation in the recent years.

The owners of this cat, trying to use its commercial power, gave in 2013 a license regarding copyrights and trademarks over the cat’s image to the coffee company Grenade Beverage. The license specified that the company has the right to use this intellectual property only for one specific beverage called “Grumppuccino”. However, Grenade Beverage started to use Grumpy Cat for other products too.

As a consequence, the cat’s owners filed a lawsuit for copyright and trademark infringement.

According to the court, there is such intellectual property infringement, because of which a damage in the amount of 710 000 dollars was ordered.

This case is interesting and indicative of the fact that every IP license should be draft very carefully in order to cover all aspects of the IP exploitation and what’s more it has to be executed precisely after that.

Starbucks won a lawsuit against “Coffee rocks” trademark

Starbucks won a lawsuit T‑398/16 against an application for a European trademark  Coffee rocks applied for Class 43. Starbucks based its opposition on a family of earlier marks Starbucks for the same class.

Initially, EUIPO dismissed the opposition, considering that there is no sufficient similarity between the respected signs.

The General Court, however, has annulled this decision, stating that EUIPO erred in its conclusion about the similarity of the signs.

According to the court:

“However, even if it could be held, as the Board of Appeal found in the contested decision, that ‘[the] marks completely differ in their distinctive and dominant elements, namely the word “rocks” and the devices of coffee bean-shaped musical notes on the one hand and the word “starbucks” and the figurative element of a mermaid on the other hand’, that would not, however, mean, in the light of the case-law cited in paragraph 46 above, that the assessment as to whether there is any similarity between the marks at issue could be confined to taking into account only those components. In the present case, it cannot be held that all the other components of the earlier marks and the mark applied for, and, in particular, those referred to in paragraphs 51 to 55 above, are negligible in the overall impression which those marks make on the relevant public.

A mere reference to that principle cannot be sufficient to establish that the similarities referred to in paragraphs 51 to 55 above may be regarded as negligible when assessing whether there is any similarity between the marks at issue, since those similarities serve to show in the present case that, visually, the signs at issue have the same general appearance in common and are based on the use of the same structure and word in common ‘coffee’.

Consequently, 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.

As regards the phonetic comparison of the signs, it must also be stated that the Court cannot accept the Board of Appeal’s view that the presence of the word ‘coffee’ in the marks at issue and the similar ending of the words ‘rocks’ and ‘starbucks’ are not capable of making the marks similar.

Even though there are differences in the way in which the words ‘starbucks coffee’ and ‘coffee rocks’ are pronounced, the two abovementioned similarities are, as such, factors which are likely to be taken into consideration in comparing the signs phonetically. In any event, those factors serve to rule out the possibility that, with regard to the phonetic comparison, there is not the slightest similarity between those signs. Furthermore, as the applicant submits and in contrast to EUIPO’s assessment, the ending ‘rocks’ may be regarded as phonetically similar to the ending ‘bucks’ on account of the relevant English-speaking public’s pronunciation of the letters ‘o’ and ‘u’.

Consequently, 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.”