The soft drink producer Coca Cola filed an opposition against a European Union trademark application with the word element “Master” and reasoned the opposition by stating that there was a danger of confusion between the signs as the sign element “Master” was represented with the same typeface.

The European Union Intellectual Property Office initially rejected Coca Cola’s opposition as unfounded. However, the soft drink producer was then successful with its appeal.

The next instance, the Court of the European Union, judged that there was a sufficient degree of similarity between the signs “Coca-Cola” and the European Union trademark application “Master” due to the same typeface alone. Accordingly, the signs had more elements which were similar with respect to the perception of the typeface, i.e. the “tail” flowing from the first letters “C” and “M” in a signature flourish and the shared use of a font which is not commonly used in contemporary business life, namely the font “Spenserian”. This font was perceived by the relevant public as a whole.

Apart from that, the Court of the European Union decided that in order to determine the danger of a so-called “free rider” (the risk that an unfair advantage is taken from the distinctiveness or the reputation of the older Coca Cola trademarks), the jurisdiction can under no circumstances limit relevant evidence to the applied trademark, only, but must also allow evidence which facilitates analyzing likelihoods with respect to the intentions of the trademark applicant:

Coca Cola had filed photographs of a soft drink of the trademark applicant during the opposition proceeding in order to demonstrate to the first instance, namely the EU Trademark Office the use of the trademark application “Master” in trade. This evidence exclusively proved the use of the sign “Master” outside of the European Union, namely in Syria and the Middle East. Therefore, the EUIPO did not consider this evidence as it could only proof the use of the sign “Master” outside the EU. In the first instance’s view, this evidence was not sufficient for determining the danger whether the future use of the sign “Master” within the European Union exploited the appreciation of the four older trademarks of Coca Cola in an unfair way.

The Court of the European Union as second instance did not agree and emphasized that any evidence which proves the current commercial use of the applied trademark must be considered, among those also evidence of the commercial use of the sign outside the EU. In order to determine the danger of free-riding, a company must be able to submit such evidence in order to reason a logical conclusion to the probable commercial use within the area of the European Union for the case that the trademark is registered. That means that the Court considered the evidence allowable and sufficient – contrary to the opposition department and board of appeal of the European trademark office – for proving the danger of a commercial free-riding in the present case.

Decision by the European Court of Justice
dated December 7, 2017, file no. T-61/16
BBiotech(Hons) Vanessa Bockhorni (Patent Attorney)