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On September 12, 2013, Ms. Hasmik Nersesyan applied for the registration of a trademark at the European Union Intellectual Property Office (EUIPO). The services for which registration was sought fall within Class 43 of the Nice Agreement, which includes the description “services for providing beverages.” The application for registration was published on November 26, 2013, in the trademark bulletin and was opposed by Starbucks Corp. on February 25, 2014. The Opposition Division (OD) rejected Starbucks Corp.’s opposition in its entirety. The decision of the OD was appealed to the EUIPO, but the Board of Appeal (BoA) dismissed the appeal filed by Starbucks Corp.

The matter was sent to the European Court of Justice (ECJ), where Starbucks Corp. sought the annulment of the decision of the EUIPO.

The assessment of the CJEU

Global assessment of potential for confusion that may arise from the registration of a similar trademark in the direction of visual, phonetic or conceptual similarity, must is based on the general impression of the signs, by bearing in mind their distinctive and dominant elements. The perception of the signs by the average consumer for the goods and services in question plays a key role in the overall assessment of the likelihood of confusion. Thus, the average consumer typically perceives the sign as a whole, without dwelling on the analysis of details.

From the public’s perspective, two trademarks are considered similar when they are at least partially identical in one or more aspects. Even if the dominant elements (the word STARBUCKS compared to COFFEE ROCKS) are entirely different, it cannot be said that the other elements are insignificant in the general impression created by these marks. Furthermore, both marks use the word “COFFEE” as one of the dominant elements. This element should be taken into consideration regardless of the descriptive nature of the goods/services in question. Although the descriptive elements of a trademark are not usually considered dominant by the public, this does not mean that the descriptive elements are insignificant in the overall impression. Therefore, it is necessary to examine whether other elements of the mark may, in themselves, dominate in the relevant public’s memory for that mark.

Additionally, the assessment of similarities between trademarks does not require comparing only one component of a trademark with another. In fact, the comparison must be made by examining both marks/each one in its entirety. Only if all other elements of the mark are insignificant, then the assessment of similarity can be based on the dominant element

The CJEU emphasized that the overall assessment of the likelihood of confusion implies a certain interdependence between the similarity of the trademarks and the goods or services covered by them. Therefore, a low degree of similarity between the goods or services may be compensated by a high degree of similarity between the marks, and vice versa.

The interdependence of these factors is expressly mentioned in Recital 8 of the preamble to the EU Regulation on the Trademark of 2009, as amended, according to which the concept of similarity should be interpreted in relation to the likelihood of confusion. The assessment depends on various elements, in particular: the recognition of the trademark in the market, the association that can be made with the sign used or registered, and the degree of similarity between the trademark and the sign sought to be registered and between the identified goods or services.

Recently, the CJEU stated that even though the verbal elements in a mark are, in principle, more distinctive than its figurative elements – the average consumer will still confuse these two marks due to the overall appearance of the signs as a whole, the phonetic similarity of the dominant elements ‘STARBUCKS’ and ‘COFFEE ROCKS’, and due to the word ‘COFFEE’ in both signs, which the relevant public will associate with the concept of a coffee shop.

Thus, the EUIPO Board of Appeal had erred in excluding any similarity between the signs and in particular, and in failing to carry out an overall assessment of the likelihood of confusion. Therefore, the decision of the Board of Appeal was annulled.

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