Ms Hasmik Nersesyan filed an EU trade mark application for the figurative mark (above left) in Class 43. The application was opposed by Starbucks Corp on the basis of 11 earlier figurative marks in the same class. The Board of Appeal (and the General Court) considered it appropriate to base its decision on just two of these earlier marks (above right) given the similarities between the 11 earlier marks.

The Opposition Division rejected the opposition in its entirety. The Opponent’s appeal was dismissed by the Fourth Board of Appeal. In reaching its decision it held that the marks were visually, phonetically and conceptually dissimilar. As such, it concluded that there was not a likelihood of confusion. Starbucks appealed.

The General Court began by refusing to accept the Board of Appeal’s view that there is not even a low degree of similarity between the signs at issue. It proceeded to conduct its own visual, phonetic and conceptual comparison, consequently holding that a likelihood of confusion existed due to the various similarities between the marks.

Visual Comparison

The Court stated that there were three sets of visual similarities between the signs at issue:

  1. Taken as a whole, the signs had the same general appearance. The figurative element in the centre surrounded by a broad band which is marked off on the inside and outside by a white circle was present in all the marks. Moreover, the word elements in the marks had the same structure, one being placed at the top and one on the bottom.
  2. The similarity in the general appearance of the marks was strengthened by the use of the same colours, black and white, which highlighted the central elements. The same font was also used on the marks.
  3. Both marks contained the word ‘coffee’ in the central band.

As a result, despite noting some of the differences between the marks, the Court found that the Board of Appeal erred in finding that the marks were “dissimilar from a visual point of view”.

Phonetic Comparison

The Court found that even though there are differences in the way in which the words STARBUCKS COFFEE and COFFEE ROCKS are pronounced, the Board of Appeal was wrong to suggest that the marks were not phonetically similar. Indeed, the ending ROCKS may be regarded as phonetically similar to the ending BUCKS due to the prononciation of the letters ‘o’ and ‘u’ by English speakers.

Conceptual Comparison

The Court agreed with the Opponent’s submissions that due to the general appearance of the marks at issue and the presence of the word COFFEE in both marks, the relevant public will associate the earlier marks and the mark applied for with the concept of a ‘coffee house’. As such, the Board of Appeal were wrong to suggest the marks were conceptually dissimilar.

As a result, the Court found that the Board of Appeal, having erred in ruling out any similarity, even a low degree of similarity between the marks, were wrong to not carry out an overall assessment of the likelihood of confusion. The Court therefore annulled the contested decision in that regard.

The Court reiterated that the condition that the signs at issue must be identical or similar is common to both likelihood of confusion and taking unfair advantage of the reputation of a trade mark (Article 8(5)). As a result, because the Court found that there was indeed a similarity between the marks, it held that the Board of Appeal were wrong to refuse to assess the grounds of Article 8(5). Therefore, the decision of the Board of Appeal was annulled in that regard.

Case Ref: T-398/16