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Starbucks v Morinaga Milk: The fight over Seattle in Singapore

06-12-2017

Singapore’s IP Office (IPOS) recently ruled that the Morinaga Milk logo, used for (milk) coffee products, was not confusingly similar to the well-known Starbucks logo, approving its trademark application and dismissing Starbuck’s opposition to the new mark. This is unlikely to be the end of the matter, argues Novagraaf’s Theo Visser

Morinaga Milk Industry Co, Ltd filed an application in Singapore in 2013 to protect its logo for a line of milk coffees and lattes (pictured below, right). The logo consists of a black and white circular logo with a silhouette of Mt Rainier – a mountain located just south of Seattle in the US. 

Starbucks opposed the application on the grounds that the logo was confusingly similar with its own circular green and white mermaid logo (pictured below, right). In particular, it argued that the use of the circle was central to its brand recognition, and noted that the Morinaga Milk logo made a direct reference to the city of Seattle; a city known for its cafe culture and as the birthplace of Starbucks.

IPOS ruled, however, that the concentric circles used in the Starbucks logo were not specifically distinctive, and that it was the brand name ‘Starbucks’ and the mermaid image that were the distinguishing parts of the mark. It contrasted that with the Morinaga Milk logo, which includes the text 'Mt Rainier', the wording ‘The Mountain of Seattle' and the image of the mountain range.

The IPOS examiner also disagreed with Starbucks’ argument that the use of Mt Rainier was meant to mislead the public into thinking that the coffee products came from Seattle, and Starbuck’s opposition was duly rejected.

The ruling in practice
If you ignore the circular shape, you may perhaps agree that the two logos look distinct when compared side by side. Place two branded coffee cups next to each other however (see picture, below), and it is clear that there is a chance that the less observant coffee drinker may get confused. It is entirely possible, therefore, that Starbucks will bring an infringement case on the basis of likelihood of confusion in actual use. This is a different action to the (administrative) procedure of bringing an opposition to a trademark application, and can be a good backup option for brands with solid grounds to argue that a competitor’s mark is infringing their trademark rights – even if previous opposition proceedings have failed. 

Please get in touch with your Novagraaf attorney, or contact us, if you would like specific advice on bring opposition or infringement proceedings.

Theo Visser is a consultant and partner in the Amsterdam offices of Novagraaf