(CN) - The European General Court revived claims by Starbucks Tuesday against a coffeehouse whose musical-note signage is accused of infringing the iconic mermaid logo.
Starbucks filed the underlying notice of opposition four years ago with the European Union Intellectual Property Office after Hasmik Nersesyan, of Belgium, applied to register a circular emblem that has the words “Coffee Rocks.”
Like the Starbucks logo, the text in Nersesyan’s application appears in bold capital letters surrounding an image. Nersesyan’s application did not include a mermaid, however, but a musical note fashioned out of a coffee bean. Two smaller versions of the image sit on either side of the note, in the same position where stars appear on the Starbucks logo.
Tuesday’s ruling by the European General Court includes several variations of the mermaid logo that Starbucks has been using in Europe dating back to 1999.
Seattle-based Starbucks took its case to the European General Court after its claim was rejected by the EU’s trademark office and an appeals board for that body.
Siding with Starbucks on Tuesday, the European General Court took issue with the Board of Appeal’s finding that Nersesyan’s sign did not have “even a low degree of similarity” with the Starbucks log.
In fact, the ruling says, “there are three sets of visual similarities between the signs at issue.”
Beginning with their same general appearance, the court noted that both mark consist of circular devices involving two parts.
“The similarity linked to the general appearance of the signs at issue is strengthened, first, by the use of the same colors, black and white, which highlight the central element, the band which surrounds it and the elements reproduced in that band, and, secondly, by the use of the same font for the word elements ‘starbucks coffee’ and ‘coffee rocks,’” the ruling continues. “That equivalence, which is also shown by the positioning of the various above-mentioned elements, contributes towards giving the impression that the marks at issue are based on the same structure.”
Nersesyan did not mention a color in her application, but the General Court said this means that she could ultimately try to use the same colors in the Starbucks logo: green, black and white.
The third overlap highlighted in the ruling is the common word coffee.
As for the phonetic comparison of the signs, the court said “the similar ending of the words ‘rocks’ and ‘starbucks’” adds to the similarity.
“Even though there are differences in the way in which the words ‘starbucks coffee’ and ‘coffee rocks’ are pronounced, the two above-mentioned similarities are, as such, factors which are likely to be taken into consideration in comparing the signs phonetically,” the ruling states. “In any event, those factors serve to rule out the possibility that, with regard to the phonetic comparison, there is not the slightest similarity between those signs. Furthermore, as the applicant submits and in contrast to EUIPO’s assessment, the ending ‘rocks’ may be regarded as phonetically similar to the ending ‘bucks’ on account of the relevant English-speaking public’s pronunciation of the letters ‘o’ and ‘u.’”
The ruling also dissects the differences between the mermaid and the musical note, among other details.
“It is true that, as is stated in the contested decision, there are a number of differences between the signs at issue,” the ruling states.
This is not enough, however, to terminate Starbucks’ opposition, according to the ruling.
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