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.”