Free-riding doesn’t pay: Coca-Cola successfully appeals trade mark case
Friday 27th February 2015
A recent European trade mark decision between Coca-Cola Company (Coca-Cola) and Modern Industrial & Trading Investment Co Ltd (Mitico) has highlighted the importance of trade mark protection for the stylised elements of a trade mark, not simply the words.
This case involved Mitico filing a trade mark application in Europe for a stylised logo including the word “Master” with an Arabic word above it, as follows:
Mitico filed this application in a number of classes for a range of food and beverage products. Coca-Cola, who owns a number of trade mark registrations in Europe including various stylised representations of their logo, and a stylised UK trade registration, opposed the registration of Mitico’s trade mark on the basis of these marks:
The opposition was initially rejected due to the lack of similarity between Coca-Cola’s trade marks and Mitico’s trade mark application. Coca-Cola appealed the decision to the Second Board of Appeal and again it was found there was no likelihood of confusion arising between the signs. Coca-Cola again appealed the decision, this time to the General Court where the complaint was upheld.
While the lower Courts considered the marks to be dissimilar, and therefore there was no likelihood of confusion arising between the trade marks, the General Court took into account:
- Similarity of the marks;
- Reputation of the earlier Coca-Cola trade marks; and
- Whether use of Mitico’s trade mark would “take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier [Coca-Cola] mark”.
The Court considered the similarity in the stylistic elements (or logos) for food and beverage products to play an equally, if not more important role than the word elements. Consumers of food and beverage products are considered to be persuaded more by the impression created from a product through packaging or labels than the words themselves. This increased the significance of the “tail” of the “M” and “C”, and the use of the identical fonts (which was considered an uncommon font in a business context). Both played an important role to the overall similarity of the marks.
Coca-Cola, having satisfied the Court of their reputation, was then able to provide the Court with evidence of the Mitico’s intended use of the trade mark:
These screenshots taken from Mitico’s website provided highly persuade evidence of their intentions to free-ride on Coca-Cola’s reputation through use of the similar get-up and stylistic elements of the brand.
The similarity in certain stylistic elements, together with evidence of an intention to free-ride on Coca-Cola’s reputation ultimately led the General Court to refuse the registration of Mitico’s trade mark.
What this means for you….
Trade mark protection is the best way to protect your brand and act as a deterrent for third parties against using or seeking to register a confusingly similar brand. While plain word trade marks protect use of a trade mark in any format, and future proofs the marks against changes to the logo, this case highlights the added importance of protecting the distinctive, memorable visual elements of a trade mark separately.
In general, it is much easier to prevent a product reaching the market than to stop it once use has commenced, provided you have adequate trade mark protection in place.
We recommend carefully considering the unique and memorable components of your brand – these are the elements which create an impression and immediate brand recognition in a consumers mind, and the ones that may be targeted by those seeking to free-ride on the success of your brand.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice.
For further information, please contact Sophie Thoreau.