On 10 May 2010, Modern Industrial & Trading Investment Co. Ltd (“Mitico”) filed a CTM application for the food and drink classes, 29, 30 and 32, which included “cola flavoured aerated waters”.

On 14 October, Coca-Cola Company (“Coca Cola”) filed an opposition against the application based on four of its earlier figurative CTMs;

The Opposition was also based on the earlier UK figurative mark, covering goods in Class 32, namely “aerated waters”.

The grounds relied on in support of the opposition were Article 8(1)(b) and Article 8(5) of Regulation No. 207/2009.

In summary, Coca-Cola submitted that;

• the signs were sufficiently similar to create a likelihood of confusion.
• that the similarity of signs should be perceived in respect of the distinctive way in which the words are depicted in “Spenserian script”.
• that “Mitico” was marketing soft drinks in such a way that the overall impression created was similar to a typical Coca-Cola product (the following evidence was submitted).

The Opposition Division rejected the opposition in its entirety and the decision was upheld by the Second Board of Appeal (in Case R 2156/2011-2).

In its decision on Article 8(1)(b), the Board of Appeal felt that the signs at issue were not at all similar, on the basis that the word elements of those signs (“Coca-Cola” and “Master”), which were more distinctive than their figurative elements, had practically nothing in common apart from a “tail” on the letters “c” and “m . It further held that whilst Coca-Cola was the proprietor of a range of highly famous and well-known trade marks commonly depicted in Spenserian script, it was not the proprietor of the script itself. Lastly, it dismissed Coca-Cola’s assertions that Mitico was supplying products bearing labels mimicking those found on Coca-Cola products.

OHIM did not examine the second basis for opposition, involving dilution of Coke’s reputed trademarks, holding that similarity is a precondition in the application of Article 8(5).

In its submission to the General Court (“GC”)(in T-480/12), Coca-Cola raised a single plea in law, alleging infringement of Article 8(5). Coca-Cola alleged;

• that OHIM conflated the assessment of the similarity of the marks at issues under Article 8(1)(b) with the assessment under 8(5).
• that OHIM had erred in concluding that there was no similarity between the signs as a whole despite acknowledging a certain degree of similarity between the letters “c” and “m” and the Spenserian script.
• that OHIM disregarded relevant evidence relating to the commercial use of the mark by Mitico which demonstrated the intention of an unfair advantage being taken.

The first submission was rejected by the GC, stating that “whilst it is true that the degree of similarity between the signs at issue is among the factors relevant to the overall assessment under Article 8(5) as to whether a link exists between those signs, the fact remains that the existence of a similarity between those signs, of whatever strength is a precondition for the application of that provision”.

In relation to the next submission, the GC took a different view than the Board of Appeal in its assessment of similarity between the marks.

Whilst the GC agreed that where a mark is composed of verbal and figurative elements, the former should be considered more distinctive than the latter, it pointed out that such a principle was subject to exceptions depending on the circumstances. The GC stated that food products were typically sold in supermarkets with products being selected by consumers directly as opposed to asking for them orally. Such an approach would often be without a full assessment of all of the information on the various products and consumers would allow themselves to be guided by the “overall visual impression” of the packaging. Accordingly, the figurative elements and the visual impression of the products possess more of a significant role when assessing the similarity of the marks.

The GC held that the Board of Appeal had failed to identify an element of visual similarity between the signs by incorrectly isolated the Spenserian script from the words “Coca-Cola” and “Master”  and had not considered the way in which the words are depicted as a whole.

The GC also accepted Coca-Cola’s submission in respect of the type face of the marks. The GC held that whilst an attempt to monopolise a particular font conflicts with the strict conditions of Article 8(1)(b) and Article 8(5), the shared typeface would be relevant for the purposes of assessing the visual similarity of the marks. The GC did not believe that Coca-Cola were attempting to obtain a monopoly in the Spenserian script (which it considered not to be commonly used in contemporary business) but considered the script to be a shared element of similarity between the signs in addition to the “tail” and the letters “c” and “m” which rendered the marks sufficiently visually similar overall despite the aural and conceptual differences.

Coca- Cola’s final submission in respect of OHIM disregarding relevant evidence pertaining to an unfair advantage being taken by Mitico was also upheld as well founded. The GC held that the Board of Appeals refusal to take into consideration Coca-Cola’s evidence departed from the case law on this area ((Nasdaq) T-47/06), which states that “a claim of free-riding under Art. 8(5) of the regulation may be based on logical deduction and consideration of the usual practices in the relevant commercial sector”. This analysis should be based on all the circumstances of the case, including the use of similar packaging.

The GC held that the evidence submitted by Coca-Cola relating to the commercial use of the mark by Mitico was relevant evidence for the purposes of establishing a risk of free-riding.

The findings of the GC highlight the important issue of assessing the similarity of marks as a whole, taking into account all shared elements, irrespective of whether those elements are present in the public domain. The case also provides a useful guidance point in establishing the risk of free-riding or tarnishment by including relevant and researched references to usual practices in a particular commercial sector.

Azhar Sadique 12 May 2015

This article first appeared in the May 2015 edition of the ITMA Review

* “Coke means Coca-Cola” was the 1945 Coke slogan