Judgment of the General Court, 16 January 2018 in case T-398/16, Starbucks Corp. vs EUIPO*

In 2014, Starbucks opposed the below EUTM application seeking protection for “services for providing drinks“, services for which Starbucks is famous throughout the EU.

Starbucks relied both on the existence of a likelihood of confusion (Article 8(1)(b) EUTMR) and the fact that use of the sign applied for would take unfair advantage of, or be detrimental to, the distinctive character and the reputation of the famous Starbucks Logo (Article 8(5)EUTMR) shown below.

The opposition having been rejected both by the EUIPO’s Opposition Division and Fourth Board of Appeal, Starbucks appealed to the General Court in Luxembourg.

On 16 January 2018, the General Court annulled the Board of Appeal’s decision, agreeing with Starbucks that the Board of Appeal’s analysis was not in line with the relevant case law.

The Board of Appeal had held that the signs were wholly dissimilar, such that neither confusion nor dilution could apply. The General Court disagreed, finding that the signs had the “same general appearance” and similar aspects, and that the word COFFEE in identical font could not be completely disregarded even for services related to coffee.

Moreover, the General Court confirmed that it cannot be ruled out that the relevant public will associate the marks with the concept of a “coffee house“.

The General Court also noted that the sign applied for did not seek protection for any particular colour scheme, which meant that it could be used in any colour, including in a shade which might be identical or highly similar to Starbucks’ well-known shade of green. The General Court clearly held that “the protection of a trade mark which does not refer to any colour in particular is extended to all colour combinations as from the time when the mark is registered“. While this is not a new statement, it had not been confirmed in such a clear way for a long time.

The General Court concluded that the Board of Appeal “having erred in ruling out any similarity – even a low degree of similarity – between the marks, erred in not carrying out an overall assessment of the likelihood of confusion“.

Finally, the General Court confirmed that the Board of Appeal should not have refused to assess the grounds set out in Article 8(5) EUTMR on the mere basis of the lack of similarity between the signs.

Takeaway: this case is good news for brand owners seeking to enforce their logos against lookalikes. It confirms that mere tweaks to figurative elements cannot serve to move copycats sufficiently far away from famous logos to exclude confusion or dilution.

* Hogan Lovells acted for Starbucks in this case