STARBUCKS fails in STARPREYA cancellation claim

South Korea

The Patent Court has refused Starbucks Corporation's application to invalidate a registration for the device mark STARPREYA (Case 2006 Heo 5072, September 20 2006).

Starbucks filed the suit against local coffee house Elpreya on the grounds that the mark was confusingly similar to the STARBUCKS device mark used in conjunction with its own coffee houses in Korea.

The Patent Court dismissed the action, ruling that the STARPREYA mark was not similar to the STARBUCKS mark in terms of meaning, appearance or sound. First, the court ruled that the double circle designs in both marks have no distinctive power as such designs are regularly used by third parties in their trademarks. Thus, the dominant elements of each mark were the word elements 'STARPREYA' and 'STARBUCKS', respectively.

Next, the court stated that the word 'STAR' in each mark was so commonly used as to be of no distinctive value. It also pointed out that the remaining 'PREYA' and 'BUCK' elements would have no real meaning to Korean consumers. Based on these two conclusions, the court reasoned that consumer would not refer to each parties' coffee houses by these constituent parts; rather, they would use only the full names STARPREYA and STARBUCKS.

Turning to the analysis of a likelihood of confusion, the court stated that the relevant consumers were a specific group of people who regularly frequent cafés and not general consumers since the price of coffee in both Starbucks and Starpreya outlets is relatively expensive compared to coffee prices in other countries. Thus, the patent court ruled that the target consumers were unlikely to be confused as to the origin of the STARPREYA mark.

The court also refused to accept that the STARBUCKS mark had become well known in Korea at the time of the application to register the STARPREYA mark (June 27 2001), noting that there were only six outlets, all of which were in Seoul, in existence at that time. Moreover, there had been only limited press coverage of Starbucks before and during 2001.

Mi Seong Kim, Kims and Lees, Seoul

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