Facts

Morinaga Nyugyo Kabushiki Kaisha (the "Applicant") applied for registration of the trade mark (the "Application Mark") for goods in Classes 29 and 30, including, among others, milk, milk products, milk beverages, coffee, and coffee beverages.

The Applicant is a manufacturer of dairy products, and has been using this trade mark in Japan for coffee and coffee-based beverages for more than 20 years.

Being one of the largest roasters and retailers of specialty coffee, Starbucks Corporation (the "Opponent"), opposed the registration of the Application Mark under Section 8(2)(b), Section 8(4)(b)(i), Section 8(4)(b)(ii), Section 8(7)(a), Section 7(4)(b), and Section 7(6) of the TMA. The opposition was based on the

Opponent's earlier registered marks, including "

" and "

6 IP Newsletter December

" (the "Opponent's Marks").

Decision

The opposition failed where the IP Adjudicator found that the parties' respective marks were not similar.

In particular, the IP Adjudicator reaffirmed that the test for similarity under the Section 8(2)(b) limb (for non-well known marks), and the Section 8(4)(b) limb (for well-known marks) is the same. On applying the side-by-side comparison of the marks, the IP Adjudicator rejected the Opponent's arguments that the greenblack-white colour scheme and the layout of the marks within a concentric circle device rendered the Opponent's Marks and Application Mark similar.

The IP Adjudicator instead found that the dominant textual and figurative elements in the marks overcame any common denominator of the concentric circles, layout and colour scheme between the parties' respective marks.

The objection for passing off also failed. The IP Adjudicator disagreed that the concentric circle device and its colour scheme were distinctive identifiers of the Opponent's goods by themselves. Rather, she found the marks as a whole gave the Opponent's Marks its distinctiveness, which included the textual "STARBUCKS" element and/or the mermaid device. As these elements were very different from the Application Mark, which contained the words "Mt. Rainier" with a mountain device, there was no misrepresentation.

Further, the IP Adjudicator found that there was no deceptiveness inherent in the Application mark itself. This is because Mt. Rainier is not synonymous with Seattle, and that the public would make only a fanciful rather than literal association between the geographical reference and coffee products. Here, the reference to "Seattle" in the Application Mark was too oblique and indirect to result in any expectation that the goods originate from Seattle. Further, deceptiveness as an absolute ground of refusal under Section 7(4)(b) of the TMA is not concerned with the deceptiveness caused by the similarity of the mark to another, but the mark by itself. Therefore, whatever connection which the Opponent and / or its Starbucks brands had with Seattle was irrelevant.

Comments

Given the increased globalisation and free movement of goods, plenty of businesses would deal with global operations, and draw inspiration from foreign places. The fact that a mark contains a geographical reference does not necessarily give rise to a ground for objection, unless the consumer has perceived that geographical reference to mean that the goods originate from that geography.