Pepsi fails to stop Coca-Cola's use of ÍPSEI

Netherlands

Despite two separate summary proceedings, Pepsico Inc has been unsuccessful (so far) in preventing the use of the mark ÍPSEI by its arch-rival Coca-Cola Company.

In the first case before the president of the District Court of The Hague, Pepsico asserted that Coca-Cola Company was infringing Pepsico's famous trademark PEPSI by using the trademark ÍPSEI for a soft drink (Case 252225 (KG 05/1311), December 6 2005). A consumer survey conducted by Pepsico demonstrated that 73% of the respondents linked ÍPSEI with PEPSI. Coca-Cola rebutted this consumer survey on the grounds that Pepsi had displayed the word 'ÍPSEI' in capital letters next to its PEPSI mark and had not shown the respondent consumers the ÍPSEI mark in the way it was actually used. Coca-Cola commissioned its own survey showing consumers its ÍPSEI mark printed on its red bottle. Only 2% of respondents to Coca-Cola's survey linked ÍPSEI to PEPSI.

The president of the District Court of The Hague disregarded most of this survey evidence, stating that neither survey had applied the correct test. In the president's view, the marks, rather than simply the words, should have been compared but the ÍPSEI mark should have been displayed without the red bottle. Basing his decision on the correct comparison, the president held that there was neither a likelihood of dilution nor a likelihood of confusion since ÍPSEI was not similar to PEPSI. According to the president, there was no conceptual, visual or oral similarity. Thus, despite similarity of goods (soft drinks) and despite PEPSI being a famous trademark, Pepsico's claims were dismissed.

In the proceedings before the court in The Hague, Pepsico had based its action on its Community trademarks. Some three months later, this time before the president of the District Court of Utrecht, Pepsico brought another case, on this occasion relying on its Benelux trademarks (Case 207939 (KG ZA 06-129), March 16 2006). Again, Pepsico was unsuccessful, but for a different reason. According to the president, Pepsico was abusing its right to file suit by initiating two separate court proceedings on essentially the same subject matter. The president held that there was no justification for Pepsico not to have relied on its Benelux trademarks as well as its Community trademarks when initially addressing the The Hague District Court. In addition, a new consumer survey conducted by Pepsico showing that 37% of respondents linked ÍPSEI to PEPSI was not considered a justification for seeking a second opinion from another court. Pepsico will have to await the outcome of the appeal pending before the Appeal Court of The Hague.

Paul Reeskamp, Allen & Overy LLP, Amsterdam

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