Coffee giant, Starbucks Corporation (“Starbucks”), prevailed over local business Café de Manila Corporation (“Café de Manila”) successfully preventing registration of the mark “THE FRAP BAR, EVERYONE DESERVES FRAP AND DESIGN.”
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Starbucks is the world’s premier roaster and purveyor of specialty coffees and coffee-based beverages from its first retail store founded at Seattle, Washington USA in 1971. Its business is said to have expanded to more than 17,000 retail stores in 55 countries. In the Philippines, it has 195 stores being operated under the “STARBUCKS” servicemark. FRAPPUCCINO is a mark used in connection with Starbucks’ top selling blended beverage.
On the other hand, Café de Manila filed an application for its mark THE FRAP BAR, EVERYONE DESERVES FRAP AND DESIGN for use in connection with “Coffee” in Class 30. The mark was published in the eGazette and a timely opposition was filed with the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines. While a Notice to Answer was served upon Café de Manila Corporation, no Answer was filed. Thus, Café de Manila Corporation was declared in default and the Hearing Officer had to resolve the opposition based on the evidence on file.
The sole issue to be resolved was whether or not the competing marks were identical or so closely resembling each other that confusion or mistake was likely to occur. The BLA ruled in the affirmative.
In its decision, the BLA recognized that FRAPPUCCINO is a coined term, which has no dictionary meaning.
Further, the contending marks were found to be similar as they shared the common prefix FRAP. The BLA took cognizance that customers normally and habitually uttered the word FRAP when ordering or purchasing FRAPPUCCINO beverages. This custom of ordering FRAPUCCINO by uttering the word FRAP was attested to by several baristas of Starbucks retail stores: “A great number of buyers of Starbucks FRAPPUCCINO blended beverages customarily use the word ‘FRAP’ WHEN ORDERING Frappuccino. For example when ordering MOCHA FRAPPUCCINO blended beverages, a customer use the word ‘MOCHA FRAP’ and when ordering strawberry flavored FRAPPUCCINO blended beverages, customers use ‘STRAWBERRY FRAP.’”
In view of the above, the BLA ruled that Café de Manila may not appropriate the word FRAP which constitutes a prefix or dominant part of the opposer’s FRAPPUCCINO as there is a likelihood of confusion and deception amongst the purchasing public.