Coca Cola’s long-running fight to oppose an EU trade mark application that allegedly mimics its renowned ‘Spensarian script’ will continue after the General Court allowed the multinational’s opposition application to proceed.
In a decision handed down today the court upheld Coca-Cola’s action and annulled a previous decision by the EU Intellectual Property Office (EUIPO).
The application, by Syrian company Mitico, is for the word ‘Master’ in Arabic script and would be applied to the company’s ‘Master Cola’ drink. Coca-Cola alleged that the font on the word ‘Master’ is too similar to its own ‘Coca-Cola’ mark.
Visual similarities noted include the ‘tail’ flowing from the respective first letters ‘C’ and ‘M’ in a ‘signature flourish’ and the shared use of Spenserian script which is ‘not commonly used in contemporary business life’.
In Syria and the Middle East, Mitico markets the drink in white font on a red background, similar to Coca-Cola's branding.
According to today’s judgment, the manner in which the sign is applied outside the EU could lead to a ‘non-hypothetical future risk of unfair advantage in the EU’. The judgment added that Mitico did not reveal whether its commercial intentions in the EU would be different from those in the Middle East.
Should the application eventually be granted it would, as it stands, create a similar right in the UK. However that could change after Brexit if a way of converting EU-wide trade marks into national UK marks is not found.
The dispute began in 2010 when Mitico applied to the EUIPO to register the mark for beverages and food products. Coca Cola opposed the mark but the EUIPO rejected the opposition on the grounds that there was no likelihood of confusion.
Coca-Cola challenged the decision prompting the General Court to annul it in 2014. The court found that the marks had a degree of similarity, sufficient enough for the relevant public to make a connection between the two, and sent it back to the opposition division.
However, the following year the EUIPO again rejected Coca-Cola’s opposition as Coca-Cola failed to establish the existence of a risk of commercial free-riding.
Coca-Cola, represented by magic circle firm Allen & Overy, once again brought an action before the General Court seeking an annulment of that decision.
In today’s judgment, the General Court again annulled the decision.
The IPO will now be called upon to carry out a full re-examination of the merits of the opposition, in both law and fact.