Coca-Cola has had a recent victory in the General Court (GC) in its long running dispute with Modern Industrial & Trading Investment Co. Ltd (Mitico), a Syrian company.
In 2010 Mitico filed an EUTM application for the Master Logo (as pictured above) for a range of goods in the food and beverage classes notably cola in class 32. Coca-Cola opposed the application on the basis of a number of earlier EUTMs for the well-known cursive script stylisation of COCA COLA, as well as variations of that image such as a cursive letter “C” mark. Coca-Cola argued confusing similarity with (Article 8(1)(b)), and taking unfair advantage of (Article 8(5)), its registered marks. In support of the unfair advantage ground Coca-Cola submitted evidence it had obtained of commercial use of the MASTER mark by Mitico in Syria and the Middle East (where that use was in conjunction with packaging for cola drinks very similar to Coca-Cola’s get-up). The opposition was unsuccessful on both grounds and an appeal to the Boards of Appeal was also unsuccessful.
In 2012 Coca-Cola brought a successful action under Article 8(5) before the GC to annul the Office’s decision. Notable was the fact that the GC concluded that there was a degree of similarity between the marks and that the Office had erred in not taking into account the evidence of commercial use of MASTER by Mitico, i.e. the similar get up to Coca-Cola’s packaging. However, the case was referred back to the Office, which again in 2015 decided against Coca-Cola dismissing the evidence of Mitico’s commercial use on the basis that it did not come from the EU, but came from Syria and the Middle East.
Coca-Cola brought a second action before the GC. This was successful and the Office’s decision annulled. The following points from the judgment are worthy of particular mention:
- To be successful under Article 8(5) it is not necessary to demonstrate actual or present harm. If it is foreseeable that such harm will result from use which the owner of the later mark may make, the owner of an earlier mark cannot be required to wait for that harm to actually occur. That said, the owner of the earlier mark must put forward evidence making it possible to conclude that there is a serious risk that infringement will occur.
- Commercial use outside the EU can be relevant as a basis for a logical inference relating to the likely commercial use of the mark applied for in the EU in order to establish the existence of a risk that unfair advantage will take place in the EU.
- It is possible to conclude that there is a risk of free-riding on the basis of logical inferences, provided they are more than mere supposition, having analysed the probabilities and taking into account the practices in the relevant commercial sector and all other circumstances.