According to a recent decision of the General Court of the European Union (EGC), where an earlier mark has a reputation, it is possible for two otherwise different marks to be held to have a sufficient degree of similarity for there to be a “link” between them where the only similarity is the font used. This suggests that only the faintest degree of similarity could be needed in order for a well-known brand to be successful in proving that use of a mark would take unfair advantage of the repute of their earlier mark under Article 8(5) CTMR. The decision therefore demonstrates the importance of registering stylised versions of trade marks where an unusual font is used.

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In 2010, The Coca-Cola Company opposed an application by Modern Industrial & Trading Investment Co. Ltd (MITICO) for the above Master Mark, covering food and drink products in classes 29, 30 and 32, including non-alcoholic drinks. The opposition was filed on the basis that the Master Mark was confusingly similar to Coca-Cola’s earlier registrations under Article 8(1)(b) CTMR and on the basis that because of their reputation, use of the Master Mark would take unfair advantage of the distinctive character and repute of their earlier rights under Article 8(5).  

Coca-Cola’s main argument was that the Master Mark was particularly similar to their earlier marks from a visual perspective, although they conceded that the marks were dissimilar phonetically and conceptually. To support their argument, Coca-Cola focussed on the use of the same “Spenserian script” font in the Master Mark, pointing to the similarity between the letter “a” in the marks and the use of a “tail” on the first letter.  

OHIM dismissed the opposition and Coca-Cola appealed to the Board of Appeal who also dismissed the action on both grounds, determining that there was no similarity between the marks and so there could be no likelihood of confusion and also no link could be established between the marks, so there could be no unfair advantage taken of Coca-Cola’s reputation under Article 8(5). Coca-Cola then appealed further to the General Court of the EU. Coca-Cola asked the General Court to reconsider their case only on the basis of Article 8(5), arguing that the marks were sufficiently similar for a “link” to be established and that therefore the use of the Master Mark would take unfair advantage of their reputation and should be refused.  

The General Court reassessed the similarity of the marks and concluded that the Board of Appeal was wrong to hold that there was no degree of similarity between the marks. Although the text element of the marks is particularly different – COCA-COLA and MASTER – and the Master Mark contains additional Arabic wording, the marks do share some visual similarities which must be taken into account when assessing the similarity of the marks. In particular, the Court  felt that the marks were similar in that the first letter in the marks all contain a “tail”, and they considered the font used in the Master Mark to be very similar to Coca-Cola’s Spenserian script, “with its elegant flourishes and other embellishments”. The Court therefore determined that there was a certain degree of visual similarity between the marks because of “their shared use of a font which is not commonly used in contemporary business life”; although they said that the marks were only similar to a low degree.  

The EGC then went on to consider whether this low level of similarity was sufficient for the relevant public to make a connection between the marks. They concluded that although the degree of visual similarity between the marks is low, due to the text elements of the marks being markedly different, the existence of even a faint similarity between the marks is a relevant factor in determining whether there is a link between those signs.  

They also considered the way in which food and drink products would be sold, concluding that, because food and drink goods are commonly purchased in supermarkets or shops where the consumer selects the products themselves, rather than asking for them orally, the visual similarity between the marks is of greater importance than any aural or conceptual similarity and that this should be taken into consideration in determining whether a link is established.   

On the above basis, the EGC concluded that there was a risk that the public might establish a link between MITICO’s goods and those of Coca-Cola and that the Board of Appeal was wrong to conclude otherwise.  

Therefore the General Court has asked the Board of Appeal to re-examine the conditions for the application of Article 8(5), taking into account the General Court’s finding that there is a sufficient link between the marks and requesting that they consider whether MITICO’s use of the Master Mark would take unfair advantage of Coca-Cola’s reputation. We expect the Board of Appeal to issue their decision later this year.  

This case is interesting as it suggests that there is a particularly low threshold under Article 8(5) for the owner of a trade mark with a reputation to meet in order to demonstrate that there is a sufficient link between their earlier right and a third party mark and so there can be unfair advantage. Previous case law has suggested that the threshold is not a high one, but the fact that the General Court has come to the conclusion that use of a similar font alone can be sufficient for a link to be established, seems to increase the scope of protection for well-known marks.  

Although it is advisable to register trade marks in a plain word format, this decision demonstrates the importance of registering a trade mark in its stylised form as well. Whereas plain word marks, such as COCA COLA, will provide protection against third parties using an identical or confusingly similar text element in their marks, if your mark is used in a particularly distinctive font, it can be beneficial to additionally register the mark in its stylised format.  

As the General Court has held that there is the necessary “link” between Coca-Cola and Master Mark, it will now be for the Board of Appeal to determine whether the use of the Master Mark would take unfair advantage of Coca-Cola’s rights considering the reputation of Coca-Cola’s marks and the link (however faint).  

As a final point, it is surprising how determined Coca-Cola was to take action against MITICO’s mark, considering the large differences between the marks. However, this could be explained by the evidence Coca-Cola presented of the way that the Master Mark is currently being used by MITICO (see below).  The packaging of the Master Cola product appears highly reminiscent of the well-known Coca-Cola drink.

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The General Court held that this evidence of use was a useful indicator that the intention of MITICO in using their Master Mark was to take unfair advantage of Coca-Cola’s reputation and so it will be interesting to see how much weight the Board of Appeal puts on this evidence and whether they will decide in Coca-Cola’s favour.