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Thursday, 21 December 2017

Rainier days ahead for Starbucks as it loses trade mark opposition in Singapore

“Kat friend Gillian Tan of Infinitus Law reports on a recent decision in Singapore in which Starbucks failed in an opposition based on its composite mark and its colour scheme.”

Starbucks, arguably one of the most iconic coffee brands in the world, is widely recognised by its logo . However, stripped of the words “STARBUCKS COFFEE” and the mermaid device, would the remaining concentric , on its own, be recognisable as a distinctive trade mark?

This was one of the underlying issues that the IP Adjudicator at the Intellectual Property Office of Singapore (IPOS) had to consider in Starbucks Corporation vs Morinaga Nyugyo Kabushiki Kaisha [2017] SGIPOS 18, wherein Morinaga Nyugyo Kabushiki Kaisha, a Japanese dairy company, applied to register the mark , comprising the words “Mt. RAINIER”, “ESPRESSO & MILK”, “THE MOUNTAIN OF SEATTLE” and a mountain device. Starbucks mounted an opposition against application mark based on its marks, and variants thereof.

This case is not the first time that the IPOS had to consider the similarities between two composite marks having allegedly similar layouts. Where this case differs is that the IP Adjudicator had to consider an additional factor in the mark-similarity assessment: colour.

This is because, besides the alleged similarity in the layouts, Starbucks argued that Morinaga’s prospective use of the application mark in a green, white, and black colour combination would render the marks similar. Naturally, such arguments were primarily directed toward the visual aspect of the mark-similarity assessment.

With respect to colour, the IP Adjudicator found that it was not appropriate to consider the full range of colours to which the Morinaga may put its mark in use at the initial mark-similarity stage. Such consideration is extraneous to a “mark-for-mark” comparison, and should only be taken into account at the third and final stage of the assessment, that is, the confusion inquiry. An important distinction must be made between the case at hand – where one mark is filed in black and white, and the other in colour – versus a case where both competing marks are filed in colour. The IP Adjudicator found that where the application mark is filed in black and white, colour is not a factor which influences the mark-similarity assessment.

As for the layouts of the marks, Starbucks argued that the marks are similar by virtue of the following features and the arrangement thereof:
i) a concentric circles layout;

(ii) a pictorial device in the innermost circle;

(iii) the brand name in curved lettering at the top of the concentric circle;

(iv) a descriptive phrase in curved lettering at the bottom of the concentric circle; and

(v) the proportions of the textual elements and pictorial device in the marks are identical.
It was held that the marks are visually dissimilar precisely because of features (ii) and (iii), namely, the mountain device and the words “Mt. RAINIER” in the application mark, and the mermaid device and the word “STARBUCKS” in the Starbucks marks. Further, the simplicity and use of the concentric circles device as part of the background in the Starbucks marks lent weight to the IP Adjudicator’s finding that the concentric circles device, used on its own, had little significance in the overall impressions of the marks.

On the whole, the IP Adjudicator found that it was not the colour scheme per se or the conceptual layout comprising the concentric circles that would be retained in the minds of the consumer. Rather, it is the textual and figurative elements in the marks that play significant roles in the recollection of the marks. Because these elements are completely different from each other, the marks are not visually similar. As the marks were found to be dissimilar, Starbucks failed on its grounds of opposition based on its earlier marks.

Starbucks’ opposition based on the alleged deceptiveness of the application mark also failed. The IP Adjudicator disagreed with Starbucks' argument that reference to Mt. Rainier would mislead consumers into thinking that the applicant's goods originate from Seattle. There was no evidence demonstrating that the average Singaporean consumer would make a connection between Mt. Rainier and coffee.
One might question whether the depiction of the application mark as (which is how Morinaga actually uses its mark) would have affected the outcome of the decision. At first blush, it may seem that the decision could have turned in light of this fact. However, given that features such as colour and layout are typically perceived as “secondary” marks used alongside, and frequently, overshadowed by more prominent textual and figurative components, the ultimate result would have arguably been the same. This is particularly so if the other elements in the mark are as distinctive and fanciful as Starbucks’ mermaid device. Indeed, such is the intrinsic link between Starbucks and the mermaid device that, in 2011, the company rebranded its logo to, doing away with the word “Starbucks” (and the concentric circles) altogether.

Ultimately, whether or not the average consumer would appreciate the trade mark significance of secondary features, such as colour and layout, will depend largely on the evidence. Naturally, where the mark is never used on its own, like the concentric circles device in the present case, it would be much more difficult to prove that the mark can stand up on its own as a badge of origin.

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