Published article on International IP Legal Updates – ABA Section of Intellectual Property Law – International Action Group

In re T-480/12 Coca-cola OHIM/Mitico (decision of December 11, 2014)the General Court orders the review of the OHIM’s decisions which had rejected in their entirety Coca-Cola’s claims.

On May 10, 2010, Modern Industrial & Trading Investment Co. (hereinafter “Mitico”) files Community trademark application for the following stylized trademark , among the others, in class 32.

The above-identified trademark has been used in commerce as depicted below

After publication, the Coca Cola Company (hereinafter “Coca-Cola”) files opposition pursuant to art 41 of Regulation No. 207/2009
based on the following earlier stylized trademarks, covering, among the others, class 32.

Community Registrations:

UK Registration:

Thereafter, the OHIM Opposition Division and the Board of Appeal reject the opposition and dismiss the appeal in its entirety.

The Board of Appeal Stated that although Mitico was free-riding, namely, it “deliberately adopted the same get-up, imagery, styli-zation and font and packaging’ as Coca-Cola […] it could not do so in the context of the specific provision of Article 8(5) [of Regula-tion No 207/2009], which must only take into account [Mitico]’s mark for which registration is sought”.
The main issue for the General Court to be solved is how to determine likelihood of confusion taking into account that there is no textual overlap between the word elements while such elements are all in “Spencer” script.
Thus, the Court states that “quite apart from the particular distinctive character of the Spenserian script, with its elegant flourishes and other embellishments, the fact remains that the use, by the signs at issue, of the same font — which, moreover, is not com-monly used in contemporary business life — is a relevant factor in determining whether there is a visual similarity between them.”

In particular, it is believed that – applying the likelihood of confusion standards through the overall impression assessment – the two different word elements nevertheless had a certain degree of visual similarity when perceived as a whole. At the same time, the Court maintains that it is wrong – as the Board of Appeal did – to isolate the Spenserian script from the word “coca-cola” and “master”.
Notwithstanding, the General Court narrows its focus on the global assessment under art 8.5 of CTM Regulation. In fact, what real-ly matters is “to determine whether the relevant public makes a link between the marks at issue, leads to the conclusion that, giv-en the degree of similarity, however faint, between those marks, there is a risk that the relevant public might establish such a link. Although the signs at issue are only slightly similar, it is not altogether inconceivable that the relevant public could make a link be-tween them and, even if there is no likelihood of confusion, be led to transfer the image and the values of the earlier marks to the goods bearing the mark applied for (see, to that effect, judgment in BEATLE, paragraph 25 above, EU:T:2012:177, paragraph 71). Thus, contrary to the Board of Appeal’s conclusion in paragraph 33 of the contested decision, there is a sufficient degree of similari-ty between the signs at issue, for the purposes of the case-law cited in paragraph 32 above, for the relevant public to make a con-nection between the mark applied for and the earlier Community trademarks, that is to say, to establish a link between them for the purposes of that provision. “ (paragraph 74).

As a result, the General Court annuls the decision of the Second Board of Appeal (Case R 2156/2011-2) stating that it will be for the same Board – when examining the condition for applying 8(5) of CTM Regulation – to take into consideration the evidence relating to commercial use of the mark applied for.

In summation, the General Court admits that Coca Cola is not allowed to claim monopoly over the Spenserian script while, in this particular case, we are all led us to think that such a monopoly really exists beyond the “overall impression’s face”.