The trademark “MASTER” & Design (as depicted above) was filed in the European Union in relation to beverage products (among others).  Coca Cola Company filed opposition, arguing risk of confusion and unfair advantage of its famous brand. The OHIM (European agency in charge for the administration of EU Trademarks, located in Alicante, Spain) dismissed the opposition, considering that the marks were not sufficiently similar. Actually, if we look at the opposed trademark, the words “COCA COLA” were not even mentioned in the application.

Coca Cola Company, disappointed by the outcome of the decision, filed appeal before the European Court of Justice.

The ECJ, after analyizing the case and the evidence brought by Coca Cola during the proceedings in Alicante, decided that the OHIM was wrong in refusing the opposition and allowing the “MASTER & Design” application. According to the ECJ, although it was clear that the level of similarity between the compared marks was pretty low to generate a genuine risk of confusion in the beverage market, it cannot be excluded that the “MASTER” & Design mark, due to its stylized figurative element (the “tail” flowing from the first letter “M”), may directly or indirectly evoke the well known Coca Cola’s “tail” (flowing from the letter “C”). Thus, there is a risk that, even in absence of likelihood of confusion, the consumers may establish a “link” between the marks, and that the MASTER cola mark may “free-ride” (“take advantage of…”) , without permission or royatlies paid, the enormous reputation of Coca Cola’s brand.

The ECJ’s decision is also interesting as it confirms that, beyond the mere analysis of the trademark application’s elements (“registry” circumstances), in order to ascertain the risk of “free-riding”, it is also relevant to analyze the evidence of the use made by the applicant of the new mark, for example, the use of packaging similar to that of the proprietor of the earlier mark (in the present case, Coca Cola Company). This evidence may come in support of the analysis of the probabilities as regards the intentions of the applicant. In this particular case, MASTER Cola was already using packaging and bottles, including the element “COLA”, almost identical the the Coca Cola’s original trade dress.

Disclaimer: This post is written in a non-technical style, so that it should be understood by everyone and not only IP & Trademark attorneys.

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