A little rienergy can't save Coke-alike trade mark application, says General Court

Only the other day, this Kat discovered that the Benelux-based firm of IP enthusiasts Hoyng Monegier had an office in Spain too, and it is from that very office that Laura Alonso, a partner in the firm's Madrid office, has written to share with the Kats and their readers the news of a very gratifying decision for Coca-Cola before the General Court of the European Union.  This makes today a particularly happy one for the multinational soft-drink megacorp, since this morning one of its privately-owned subsidiaries, Energy Brands, Inc., also had spot of success before the same court when an appeal against its successful revocation proceedings against a SMART WATER Community trade mark (CTM) was dismissed [on which see earlier Katpost here. Presumably when they open a bottle of bubbly to celebrate anything, it's a non-alcoholic cola carbonated beverage flavoured with vegetable extract ...]. Anyway, this is Laura's tale:

Coca-Cola will be glad about the outcome of Case T-384/13 Intermark srl v OHIM, The Coca-Cola Company, which represents an important victory in the company's efforts to protect its famous chromatic combination and script. Romanian company Intermark had applied to register the figurative mark on the left for various drinks in Class 32 and "advertising; Business management; Business administration; Office functions" in Class 35.  The question which the Office for Harmonisation in the Internal Market (OHIM) and ultimately the General Court had to decide was whether that mark was confusingly similar to The Coca-Cola Company's earlier figurative CTM (below, right) covering non-alcoholic drinks in Class 32 and its CTM for the word mark COCA-COLA for, inter alia, “advertising, business management; business administration; office functions” in Class 35.  

The court, dismissing Intermark's appeal against the OHIM Board of Appeal's affirmation of the Opposition Division's decision, found that the word element ‘cola’ was the dominant element in Intermark’s sign and agreed that, in assessing likelihood of confusion with the earlier trade mark in respect of goods in Class 32, the evidenced reputation of the earlier mark was relevance, as was the fact that the common word element (COLA) was depicted in the sign applied for in Coca‑Cola’s ‘classic white cursive script on a red background’.  

As regards the assessment of likelihood of confusion with the earlier word mark COCA-COLA to cover goods in Class 35, the court noted the dominant character of the term ‘cola’ in the mark applied for and acknowledged that it was a distinctive element in the earlier mark to cover services in Class 35. Added the court, the fantasy word ‘rienergy’, despite having distinctive character in respect of the goods and services at issue, played a subsidiary role in the mark applied for, even though it could not be categorised as totally negligible in the overall impression created by that mark; the same considerations applied to the figurative element situated above the word ‘rienergy’ [oh dear, at first glance this Kat didn't even notice that bit of Intermark's sign at all, his gaze being magnetically drawn to the script and the word 'Cola']. None of these elements were considered capable of preventing a likelihood of confusion, in the court’s view.  

This decision comes in a particularly good  timing, a few days after the trialling in Spain of a major redesign of Coca-Cola’s brand image under a ‘master brand’ strategy, which for the Spanish market translates into presenting the iconic red corporate colour prominently displayed across all varieties of its products.

There's nothing startling about this decision in legal terms, says this Kat: the court's ruling was fairly routine. What is interesting, though, is the fact that so many Community trade mark applicants are still routinely attracted to signs that one immediately senses are going to be opposed by well-resourced competitors who are not averse to litigation. In commercial and strategic marketing terms, even if Intermark were to get the mark on to the CTM register, prospects for developing it in other markets, not to mention opportunities for brand extension, are always going to be limited by the reputation of an earlier better known mark which will always be similar if not confusingly similar, owned by a company that does not easily acquiesce in adverse rulings.