Starbucks fails to register trademark for coffee products

Denmark

In a recent decision of the Danish Board of Appeal for Patents and Trademarks (Case No AN 2013 00004, August 21 2013), Starbucks Coffee Company Inc’s trademark READY BREW has been put under close scrutiny.

In 2011 Starbucks, the world’s largest coffee company, applied for registration of the word mark READY BREW in Denmark for:

  • ground and whole coffee beans; and
  • non-alcoholic coffee-based beverages.

The Danish Patent and Trademark Office (PTO) accepted registration of the mark as far as ground coffee and whole coffee beans were concerned, but did not allow registration for “non-alcoholic coffee-based beverages”. The PTO took the position that the mark READY BREW did not possess the necessary distinctive character for these goods, as it could indicate that the goods were ready-brewed drinks.

Starbucks presented two lines of arguments to the PTO:

  • the mark had acquired distinctive character through extensive use; and
  • the mark was inherently distinctive.

Both arguments were unsuccessful. Acquired distinctiveness could not be proven, and the PTO held that the word 'ready' means 'finished' or 'done', while 'brew' is synonymous with 'coffee' in expressions such as 'morning brew' or 'a cup of brew'. The words 'ready' and 'brew' in combination were found not to have sufficient distinctive character in respect of “non-alcoholic coffee-based beverages”.

Starbucks brought the matter before the Board of Appeal with regard to the issue of inherent distinctiveness. Starbucks argued that the mark READY BREW was a suggestive reference to 'instant coffee' or 'soluble coffee', and that it could be seen as a rephrasing of 'ready go'. Furthermore, it argued that consumers would need to use their imagination to understand the mark as being a reference to instant coffee or an invitation to start brewing some coffee. Starbucks referred to the fact that OHIM had accepted the mark, which is registered as a Community trademark (Registration No 8135601) for the goods in question.

The Board of Appeal was not convinced and confirmed the decision by the PTO. It remains to be seen whether Starbucks will bring the matter before the courts.

This decision is yet another example that the assessment of distinctive character can still vary between the trademark offices of the European Union despite the harmonisation efforts, and that the question of distinctive character should be decided separately for each individual type of goods and services. Arguably, due to the unpredictability of this subject, there will always be scope for an argument on the issue of distinctiveness.

Lisbet Andersen, Bech-Bruun, Copenhagen

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