From the bank: coffee someone?
Who would have thought that your first coffee of the day could be the subject of controversy and even legal proceedings? Well, everything these days seems to be.
The American giant Starbucks Corporation has opened proceedings in Malta against Strabuono Coffee International Limited. The former ascertained that he is the owner of the rights to the international coffee chain called STARBUCKS / STARBUCKS
COFFEE that has been in existence in most EU member states for about nine years, with the sale of various products under its trademark, including the sale in Malta of bearing coffee products its trademark, as of April 1, 2015, with all relevant trademarks (including figurative trademarks) enjoying a huge reputation and goodwill in connection with the coffee chain and its related products.
She claimed that the defendant, without her consent, had started the operation and operation of a coffeehouse in Malta, including the advertising of the same, using, in its business, various signs. – including figurative signs – consisting of the expressions ‘STRABUONO’ or ‘Strabuono’, and ‘STRABUONO COFFEE’ or ‘Strabuono Coffee’, alone and / or in combination with other elements, all of which were all too obviously inspired and copied from the trade marks its relevance.
She applied for unlawful competition, and ordered the defendant company to pay as a penalty not less than € 465.87, nor more than € 4,658.75, as prescribed by law for each infringement. It also requested that the defendant be permanently prohibited from engaging in any use in its business in connection with the operation of a coffeehouse or other similar establishment, of any kind of name, trade mark or distinctive sign in breach. of its rights.
The defendant argued that there was no similarity between the name, mark or distinctive sign used and those indicated by the plaintiff and, consequently, there was absolutely no abuse and / or prejudice to the plaintiff.
The Court, presided over by Chief Justice Mark Chetcuti, held that what it wanted to punish the law was the theft of customers through speculation on the confusion of competing products; the legislator wanted no trader to conduct his business in a manner that would induce customers to confuse his own goods, or his business, with the goods or business of others.
The Court also noted that whether the deception was fraudulent, or merely accidental, or due to error, made no difference. Malice, the court held, had only an influence on the determination of punishment. Traders’ rights in such matters were based on the general right to property. A trader, the court noted, has the right to use all legal means to defend himself against the usurpation of his property through a claim based on unfair competition.
The defendant’s conduct exceeded the limits of competition
In such cases, for the action to be successful, the trader must prove that he was the first in the open market to adopt such a distinctive name, sign or trade mark and that the similarity between the name, trade mark or A disputed sign is such that there is a likelihood of confusion on the market. It must also be shown that there is a similarity between the marks in question and that that similarity is such as to create a likelihood of confusion on the part of the public.
The court also noted that the likelihood of confusion must be assessed globally, taking into account all relevant factors; the matter must be judged by the eyes of the average consumer, of the goods or services in question, who are considered to be reasonably well-informed and reasonably well-informed and circumspect – but who the marks and must instead rely on their imperfect picture which he kept in mind (a concept known as imperfect remembrance).
The average consumer usually perceives a brand as a whole and does not proceed to analyze its various details. The visual, aural and conceptual similarity of the marks must, therefore, be assessed by reference to the overall impression created by the marks, having regard to their distinctive and dominant components.
A lesser degree of similarity between trade marks may be offset by a greater degree of similarity between goods or services, and vice versa, there is a greater likelihood of confusion where the earlier trade mark is highly distinctive, or per se or because of its use.
While noting that the main services and goods offered by the parties were practically identical from the consumer’s point of view, it was clear to the court that the marks used by the defendant were similar to those used by the parties. actor. There was indeed an imitation of the “look and feel” of the famous brand without using the same verbal mark or feature of the primary device.
In the court’s view, the defendant’s use of marks and names similar to those of the plaintiff created confusion and unfair competition; A consumer may indeed be confused and mistakenly assume that there is a broad economic link between the plaintiff and the defendant. The defendant’s conduct exceeded the limits of competition.
The Court, in its judgment of 12 January, decided the case by granting all the claims of the plaintiff and ordered the defendant to pay a penalty of € 2,000. It further ordered that within one month the defendant should destroy any material in its possession or under its control which contained a distinctive name, mark or sign with the words ‘Strabuono’ and ‘Strabuono Coffee’.
Do we discuss this over coffee?
Keith Borg is a partner at Azzopardi, Borg & Associates Advocates.
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