The ruling out of Luxembourg marks the second time that the European General Court has annulled a decision against Coca-Cola by EU trademark officials.
Coca-Cola initiated the challenge over trademark registration attempted in 2010 by the Syrian company Modern Industrial & Trading Investment Co., abbreviated in court records as Mitico.
The logo that Mitico sought to register has the word Master in script, accompanied by Arabic text. Though Mitico’s registration application had the logo in black and white, Coca-Cola showed screenshots from the website mastercola.com in its challenge before the European Union Intellectual Property Office.
These images showed soda bottles in the Coca-Cola style, with white lettering on a red background.
Still the trademark office rejected Coca-Cola’s opposition in 2011, and tossed its appeal a year later.
This decision was annulled by the European General Court nearly three years ago to the day, Dec. 11, 2014. Finding that the logos indisputably similar, the General Court both highlighted the “tails” flowing from the initial capitalized letters of Master Cola and the use of Spenserian script, a font that today’s ruling notes “is not commonly used in contemporary business life.”
On remand, the court directed the trademark office’s appellate body to conduct further inquiry: specifically the risk that Mitico's use of the trademark would harm Coca-Cola’s trademarks.
After the trademark board again sided with Mitico, finding that the risk of free-riding was low since Master Cola’s website lacked any indication that the goods being advertised could be ordered online and sent to the European Union.
The trademark board said Coca-Cola needed proof that Mitico intended to market its goods for EU customers in the same way as it did in Syria and the Middle East.
A three-judge panel with the European General Court scoffed at this logic on Thursday, annulling the trademark office’s decision for the second time and upholding Coca-Cola’s action.
To begin with, the panel unraveled the supposition that Mitico was not using the red-and-white presentation of its soda in the EU.
“Admittedly, it should be noted that the website ‘www.mastercola.com’, in its present state, does not primarily target EU consumers, in the light both of the lack of any reference on that website to the European Union and of its being written mainly in Arabic,” the ruling states. “This is true despite the presence of its ‘.com’ element highlighted by the applicant, as well as that of the English page it contains at the following address: http://www.mastercola.com/companyprofile-en.htm.
“However, that observation does not make the excerpts from that website irrelevant,” the ruling continues. “They may serve as a basis for a logical inference on the likely commercial use of the mark applied for in the European Union, in order to establish the existence of a risk that unfair advantage will be taken in the union.”
Mitico moreover presented no evidence about how it would market its goods in the EU, the court noted.
“In the absence of any specific information as to the intervener’s commercial intentions in the union,” the ruling states, “it is appropriate to consider that the excerpts from the website ‘www.mastercola.com’ produced by the applicant and relating to the actual use of the trade mark applied for by the intervener outside the union are likely to lead prima facie to the conclusion that there is a non-hypothetical future risk of unfair advantage in the union.”
Without any evidence to the contrary, the ruling says Coca-Cola was right to conclude that Mitico will use its mark “in the same way within the European Union as in third countries, all the more so since the intervener has expressly requested the registration of the mark applied for for use in the European Union.”