Arabic for “Coke”? Master Cola isn’t it


When examining the similarity of trademarks, the typeface in which verbal elements of the marks are written must be considered, the EU’s General Court ruled in a recent judgment on reputed trademarks.

The Coca-Cola Company v OHIM (Case T-480/12), judgment of the General Court of 11 December 2014

A Syrian company, Modern Industrial & Trading Investment Co. Ltd (Mitico), sought registration of the following figurative sign as a Community trademark for food items, including cola-flavoured carbonated soft drinks:

C.Master

The Coca-Cola Company filed an opposition based on earlier trademarks for some of the same classes of goods:

lototypycTrademark registered in the UK (no. 2428468)

In the dispute, Coke argued that Mitico’s commercial use of the mark was relevant. It was to be used for cola beverages, and the label, marking and packaging of Master Cola were similar to those of Coca-Cola:

c1

Evidence in the proceeding—screenshots from www.mastercola.com

The grounds for the opposition were Art. 8(1)(b) and 8(5) of the Community Trade Mark Regulation ((EC) 207/2009). Coca-Cola alleged that the marks were similar enough to cause a likelihood of confusion, and the Master mark does not deserve to be registered because its use would allow the proprietor to take unfair advantage of Coke’s trademarks and be detrimental to the repute of the earlier Coca-Cola trademarks.

The Office for Harmonisation in the Internal Market (OHIM) rejected Coke’s arguments through two instances, finding that the marks are not similar enough to cause a likelihood of confusion. Because it did not find similarity between the marks, OHIM did not examine the second basis for opposition, involving dilution of Coke’s reputed trademarks, holding that similarity is a precondition for applying Art. 8(5) of the regulation.

In its complaint with the General Court, Coca-Cola alleged violation of Art. 8(5) of the regulation. First, it alleged that OHIM erroneously held that similarity between the marks is a precondition for applying Art. 8(5). In Coke’s view, it is only one of the factors used in evaluating the connection between the marks for purposes of Art. 8(5). Second, Coca-Cola disputed OHIM’s finding that there was no similarity between the Master and Coca-Cola marks.

The court rejected the first of these arguments, holding that the types of injury referred to in Art. 8(5) “are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not necessarily confuse them.” Nonetheless, the court pointed out that the degree of similarity in the marks when it comes to dilution or tarnishment of the earlier mark may be much less than in the test for a likelihood of confusion. In this the court’s ruling was consistent with the established case law, e.g. in judgments concerning the trademarks for Calvin Klein (Case C-254/09 P), Botox (Cases T-345/08 and T-357/08) and Ferrero (Case C-552/09 P).

However, the General Court took an entirely different view than OHIM of the similarity between the marks. Generally the verbal elements of trademarks have stronger distinguishing power, but under the circumstances there was an exception to this rule. The court pointed out that the food items for which registration was sought are typically purchased at supermarkets, without close analysis of the labels and without asking for the brand by name. For this reason, the graphic elements and the visual impression will play a greater role in assessing the similarity of the marks. The court found that OHIM had not evaluated the overall similarity of the marks, but only made a selective analysis, finding that the “tail” under the C and M in the words Coca and Master were insufficient to find similarity. The court also found that the characteristic typeface used for Coca-Cola, known as Spenserian script, is uncommon in modern commerce and the fact that it was copied in the Master mark is relevant for assessment of the visual similarity. The court thus rejected the arguments by Mitico and OHIM that anyone is free to use any typeface of their choice in trademarks, and a finding of similarity based on use of the same typeface would effectively give Coca-Cola a monopoly on this typeface, which would be against the public interest. Thus the court held that the method of writing the verbal elements and copying of the “tail” under the letters made the marks similar in visual impression, which was sufficient in this case, even though the words and phonetics were not similar.

The other complaint of Coca-Cola was that OHIM has rejected evidence of the commercial use of the Master mark, which was relevant for determining the intent to take unfair advantage of the repute of the Coca-Cola marks. The court upheld this argument, following the established case law that a claim of free-riding under Art. 8(5) of the regulation may be based on logical deduction and consideration of the usual practices in the relevant commercial sector. This analysis should be based on all the circumstances of the case, including the use by the proprietor of the disputed mark of packaging similar to that of products of the proprietor of the earlier marks. OHIM erred in ignoring this evidence.

This judgment is yet another ruling involving the conflict between trademarks filed for registration and reputed trademarks. The essential issue raised by the case is that in assessing the similarity of marks, elements should be considered which might seem to belong to the public domain, such as a certain typeface. The judgment also follows the line of case law holding that a mark filed for registration must be at least to some degree similar to the earlier marks before registration can be opposed based on a claim of free-riding or tarnishment of a reputed trademark. The court also stressed again the rule that free-riding or tarnishment should be assessed on the basis of all available evidence and the circumstances of the case, including the practical, commercial use of the mark sought to be registered, and free-riding or tarnishment may be proved through logical deduction.

Dominika Kwiatkiewicz-Trzaskowska, Intellectual Property Practice, Wardyński & Partners