The Buck(s) Stops Here: EU General Court Halts COFFEE ROCKS Trademark Bid

In Starbucks Corp v EUIPO & Nersesyan, the EU General Court overturned a decision from the European Union Intellectual Property Office (EUIPO) allowing the figurative mark application for COFFEE ROCKS & Design, thus rejecting Starbucks’ opposition to the application.

In 2016, the EUIPO determined that COFFEE ROCKS & Design was visually dissimilar to the existing STARBUCKS & Design mark. The EUIPO held that, given the lack of similarity, no overall assessment of likelihood of confusion was necessary.

Starbucks appealed to the EU General Court (the “Court”).  The Court determined that a global assessment of likelihood of confusion was necessary and proceeded to evaluate the visual, phonetic and conceptual similarities of the signs from the perspective of the average consumer.

Visually, the Court found that the positioning of the various elements left an impression that the marks were based on the same structure.

The Court went on to find that the phonetic similarity of the ending of the words “Starbucks” and “Rocks” added to the overall similarity.

Conceptually, the Court found that general appearance of the marks and the presence of the word ‘coffee’ in both marks, created a likelihood that the relevant public would associate the earlier marks and the mark applied for with the concept of a ‘coffee house’.

The Court concluded that in a global assessment, the marks carried too many similarities to operate in a close market without the existence of a likelihood of confusion among coffee drinkers.

Summary by: Jennifer Davidson