Coca-Cola fails to prevent registration of red and white mark

Switzerland

The Swiss Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had dismissed an opposition by The Coca-Cola Company against the registration of the device mark CAFFE COSI on the grounds that it was not similar to the COCA-COLA mark (Case B-1995/2011, August 16 2011).

Coca-Cola opposed the registration of a device mark consisting of the words 'Caffe Cosi' in white curvy script against a red background, with the first letter 'C' underlining the other characters:

 
The opposition was based on the well-known COCA-COLA mark, which also includes a curvy script with the letter 'C' underlining the element 'Coca':



The IGE found that there was no a likelihood of confusion due to the dissimilarity of the marks. The Administrative Federal Court agreed.

In particular, the court held that there were significant differences between the graphic elements of the marks. For example, the letter 'C' in the opposed trademark underlined both verbal elements, while in Coca-Cola’s trademark, it underlined only the first word. Further, the 'C' in the opposed trademark ended in a coffee bean. The latter also contained graphic elements - namely, a coffee cup and a white frame around the mark itself.

The court concluded that, although there was a certain degree of similarity between the scripts used in the marks, the differences outweighed the similarities due to the length of the verbal elements and the appearance of the first words, 'Caffe' and 'Coca'. The court also found that there was no conceptual or aural similarity.

Finally, the court recognised that COCA-COLA is a well-known trademark. However, the fact that a trademark creates an association with another trademark does not automatically lead to a likelihood of confusion. Moreover, special circumstances (eg, bad faith) can be considered only in civil proceedings before the ordinary courts.

The decision shows once more that, even if there is a certain degree of similarity between two complex marks, the verbal elements will usually be given greated weight. Even if the trademarks at issue had been found to be similar, it would have been questionable whether the goods in question (goods in Classes 7 and 30 of the Nice Classification on the one hand, and goods in Class 32 on the other) were similar.

Marco Bundi, Meisser & Partners, Switzerland

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