Starbucks's invalidation actions against local coffee house fail

South Korea

The Korean Supreme Court has rejected Starbucks Corporation's appeal against a decision of the Patent Court to reject Starbucks's application to invalidate a registration for the device mark STARPREYA (Case 2005Hue926, January 11 2007).

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. However, the Patent Court dismissed Starbucks's application (see STARBUCKS fails in STARPREYA cancellation claim).

The Supreme Court has now upheld the Patent Court's decision. Like the Patent Court, the Supreme Court held that in order to be invalidated (i) Elpreya's mark would have to be similar enough to the STARBUCKS mark to cause confusion among consumers, or (ii) the STARBUCKS mark would need to be well known. The Supreme Court found that round logos, the English word 'coffee' and star shapes are commonly used in relation to the goods and services at issue, and therefore the device element of each mark could not be the dominant part used to compare the degree of similarity between the marks. Instead, the court held that the names Starbucks and Starpreya were the dominant parts of the marks. However, the court found that the word 'star' could not be separated from the rest of the name in each instance because it is a common word with little distinctive character. Accordingly, the court reasoned, consumers would refer to the respective marks by the full names Starbucks and Starpreya respectively.

The court also affirmed the Patent Court's finding that the STARBUCKS device mark was not so famous in Korea at the time of filing of the STARPREYA mark that it could warrant protection against similar marks.

The Supreme Court has also dismissed Starbucks's appeal relating to the application to invalidate the STARPREYA word mark. (Case 2006Hue3069, January 11 2007). The court held that it could not find serious reasons to proceed to trial.

Yoon Bae Kim, Kims and Lees, Seoul

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