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Coca Cola has enjoyed a recent victory in the European General Court to prevent a European Trade Mark (EUTM) being registered which it says gives an ‘unfair advantage’ to the applicant.
Mitico, a food and drinks company based in Syria, filed the EUTM application for the ‘Master’ logo (below) in 2010 in several classes, including cola in class 32.
Coca Cola considered the script used was confusingly similar to the Coca Cola logo, for which Coca Cola has several EUTMs already registered. It also opposed on the basis that Mitico’s EUTM would take unfair advantage of Coca Cola’s EUTM.
The EUIPO refused Coca Cola’s opposition due to a lack of similarity between the EUTMs.
In 2012, Coca Cola applied to the European General Court to annul the EUIPO’s decision on the basis that Mitico’s proposed EUTM would take unfair advantage.
The General Court agreed the EUTMs were similar and that commercial use of Mitico should have been taken into account. The case was referred back to the EUIPO, who dismissed evidence of commercial use as it had occurred in Syria and the Middle East, not within the EU.
Coca Cola again applied to the General Court on the basis that the evidence should be considered. Finally, in December 2017, the General Court agreed. It considered that the actual use of the Master logo outside of the EU was relevant as, in the absence of any evidence to the contrary, it led to a logical inference that there would be a serious risk that the Master logo would be used in the same way in the EU. Given that Mitico had applied for an EUTM, use in the EU was clearly anticipated by Mitico. The General Court held there was a real intent of ‘commercial free-riding’.
The case indicated that where there is clear evidence of a proposed EUTM taking unfair advantage of an earlier EUTM outside of the EU, this will be taken into consideration by the Court even where the ‘free-riding’ has not yet occurred in the EU. The owner of the earlier EUTM is not expected to wait for harm to occur in the EU.
This approach will no doubt be welcomed by long-standing international brands looking to enforce their rights and prevent copycats as far as possible.
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