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University College Leuven Limburg

COCA-COLA VS. OHIM MITICO


(General Court - Case #Number: T-480/12)
Paper on trademarks for the course of:
International Business Law
Lecturer: Nico Nijsten

Rafael Stroobants
Version 2.0 (final)
May 31th, 2016
Academic year: 2015 - 2016

COCA-COLA VS. OHIM MITICO

General Court - Case # T-480/12

Table of Content
1.

Introduction2

2.

Trademarks.2

3.

EU Legislation....3

3.1. General Structure of the European Union3


3.2. The EU Legislation Process...3
3.3. EU legislation on trademarks..4

4.

The case: COCA-COLA VS. OHIM MITICO (Case #Number: T-480/12) ......5

4.1. Chronological overview..5


4.2. Ruling.5

5.

Conclusion.6

Bibliography.............7

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COCA-COLA VS. OHIM MITICO

General Court - Case # T-480/12

1. Introduction
This paper on trademarks aims to answer the following question:
Can trademarks with a completely different wording (text) be considered similar?
The question is important because according to EU legislation, a proposed trademark that is
similar to an earlier one can be denied registration, so the topic is relevant for companies that
want to register new trademarks or want to protect their existing ones.
The answer is found in the EU General Court decision of December 11, 2014 (Case T480/12),
regarding Coca-Cola Company (Coca-Cola) and Modern Industrial & Trading Investment Co
Ltd (Mitico), which concludes that a trademark with a different wording (compared to an earlier
trademark) can be considered similar (and thus be refused registration based on existing EU
legislation), when
- the overall visual appearance is similar to the earlier trademark
- it is intended to make use of the reputation of the earlier trademark
This ruling will be the main subject of this paper, which will first briefly describe the concept of
trademarks and the corresponding EU legislation.

2. Trademarks
Trademarks are generally considered a type of Intellectual Property, which (WIPO Intellectual
Property Handbook, 2004: 03) defines as The legal rights which result from intellectual activity
in the industrial, scientific, literary and artistic fields1. Other types of Intellectual Property are
patents, designs, copyrights, trade secrets, ... Still according to (Kur and Dreier, 2013: 157)2,
trademarks are Distinctive signs that serve to indicate the origin of products, by way of identifying
and distinguishing goods stemming one source from those with a different origin.
In the European Union, trademarks are managed by EUIPO: The European Union Intellectual
Property Office. Similar to Wikipedia, EUIPO mentions trademarks as one of four types of
Intellectual Property (Trademarks, Designs, Copyright, and Patents) and defines them as3 :
Any signs, in particular words, including personal names, or designs, letters, numerals, colors, the
shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
- distinguishing the goods or services of one undertaking from those of other undertakings;
and
- being represented on the Register of European Union trademarks in a manner which enables the
competent authorities and the public to determine the clear and precise subject matter of the
protection afforded to its proprietor.
EUIPO names 6 specific types of trademarks that can be formally registered:
1.
2.
3.
4.
5.

Word marks: uses words, letters, numbers or any other characters that can be typed.
Figurative mark: a figurative mark is represented using pictures, graphics or images.
Figurative mark with letters: combines pictures, graphics or images with words or letters.
3D mark: uses a three-dimensional shape, such as the actual product or its packaging.
Color per se mark: used only to register an actual color to distinguish products or services.

World Intellectual Property Organization (2004). Intellectual Property Handbook. (pp 03)
Kur, A. and Dreier, T. (2013). European Intellectual Property Law.
3 Euipo.europa.eu. (2016). Trade mark definition - EUTM.
2

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6. Sound mark: a sound that also must be represented graphically (example: musical notation).
EUIPO also lists the EU legal framework regarding trademarks4. The most important legal
document is COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the European
Union trademark. The next paragraph will explain the EU Legislation process and briefly describe
the articles of this resolution that are relevant for this paper.

3. EU Legislation
3.1.

General Structure of the European Union

The EU is composed of institutions and agencies, both also named bodies5 :


Institutions:
- European Council
- Council of the European Union
- Court of Justice of the European Union (CJEU)
- European Court of Auditors (ECA)
- Committee of the Regions (CoR)
- European Data Protection Supervisor (EDPS)
- European Economic and Social Committee (EESC)

- European Parliament
- European Commission
- European Central Bank (ECB)
- European External Action Service (EEAS)
- European Investment Bank (EIB)
- European Ombudsman

As will be mentioned below, 4 of these institutions are involved in the EU legislation process: The
European Parliament, the Council of the European Union, the European Commission, and the Court
of Justice of the European Union.
Agencies
An agency of the EU is a body of the European Union, which is different from the institutions, has
its own legal personality, and has specific tasks. There are over 40 agencies spread all over the
EU and divided into 5 groups6 :
- Decentralized agencies (permanent agencies, implementation of general EU policies).
- Executive agencies (transitory agencies, management of specific EU projects and programs).
- Agencies under Common Security and Defense Policy (Security and Defense policy).
- EURATOM agencies (coordination of national nuclear research programs)
- Other agencies: for specific purposes
One of the decentralized agencies is the previously mentioned EUIPO - European Union
Intellectual Property Office. It is the Agency responsible for managing the EU trademarks and
designs. For the good understanding of the case presented in this paper, it is important to note that
before 2016 EUIPO was formally known as OHIM, the Office for Harmonization in the Internal
Market.

3.2.

The EU Legislation Process

In order to understand the EU legislation on trademarks, it is important to understand the EU


Legislation process in general. According to source7, 3 main institutions are involved:
1. the European Parliament (represents the EUs citizens and is directly elected by them)
Euipo.europa.eu. (2016). EU trade mark legal texts.
Craig, P. and De Burca, G. (2011). EU Law: Text, Cases and Materials. (pp 31- 69).
6 Europa.eu. (2016). EUROPA - Agencies and other EU bodies.
7 Europa.eu. (2016). EUROPA - EU Law.
4
5

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2. the European Commission (represents the interests of the Union as a whole).


3. the Council of the European Union (represents the governments of the member countries)
Together, these institutions produce, implement, apply and enforce EU policies and laws.
According to the same source, there are two levels of legislation:
a. Primary legislation: general treaties that have been approved by all EU member countries (the
ground rules).
b. Secondary legislation: detailed regulations, directives and decisions, that are derived from
Primary Legislation (the specific rules).
This process of two legislative levels (Primary - Secondary) by three legislative institutions
(Commission, Parliament, Council) is called the 'Ordinary Legislative Procedure'8.
A fourth important institution is the Court of Justice of the European Union, whose role is to ensure
that justice is applied all over the EU according to EU Law. The CJEU is divided into 3 bodies9 :
- Court of Justice: deals with requests for preliminary rulings from national courts, certain
actions for annulment and appeals.
- General Court: rules on actions for annulment brought by individuals, companies and, in some
cases, EU governments. In practice, this means that this court deals mainly with competition
law, state aid, trade, agriculture, and the subject of this paper: trademarks.
- Civil Service Tribunal: rules on disputes between the EU and its staff.
In conclusion, the Commission proposes new laws and regulations, and the Parliament and
Council adopt them in the name of the EU Citizens and in the name of the member states. The
Commission and the member countries then ensure that they are properly employed, while the
Court of the European Union and the courts of the member stated apply justice accordingly.
3.3.

EU legislation on trademarks

As mentioned before, the most important legal text on trademarks is the COUNCIL REGULATION
(EC) No 207/2009 of 26 February 2009 on the European Union trademark. It is a detailed
Secondary Legislation document, with 167 articles and over 40 pages. See reference10. The
article and clauses that are relevant to this paper read as follows:
Article 8: Relative grounds for refusal
Clause 8.1. Upon opposition by the proprietor of an earlier trademark, the trademark applied for
shall not be registered:
(b) if because of its identity with, or similarity to, the earlier trademark and the identity or similarity
of the goods or services covered by the trademarks there exists a likelihood of confusion on the part
of the public in the territory in which the earlier trademark is protected; the likelihood of confusion
includes the likelihood of association with the earlier trademark.
Clause 8.5. Upon opposition by the proprietor of a registered earlier trademark within the meaning
of paragraph 2, the trademark applied for shall not be registered where it is identical with, or similar
to, an earlier trademark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trademark is registered, where,
8

Craig, P. and De Burca, G. (2011). EU Law: Text, Cases and Materials. 5th Edition. Oxford University Press. New York,
United States of America. (pp 123 -125).
9 Europa.eu. (2015). EUROPA - Court of Justice (CJEU) - The EU institutions explained.
10

Official Journal of the European Union. (2009). Council Regulation (EC) No. 207/2009.

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in the case of an earlier EU trademark, the trademark has a reputation in the Union or, in the case
of an earlier national trademark, the trademark has a reputation in the Member State concerned,
and where the use without due cause of the trademark applied for would take unfair advantage of,
or be detrimental to, the distinctive character or the repute of the earlier trademark.

4. The case: COCA-COLA VS. OHIM MITICO (Case #Number: T-480/12)


4.1.

Chronological overview

May 2010: Modern Industrial & Trading Investment Co. Ltd. (Mitico), a Syrian company, submits
a trademark application at the Office for Harmonization in the Internal Market (OHIM) for a range
of food and beverage products.
July 2010: The trademark registration is accepted by OHIM and published in the Community
trademarks Bulletin.
October 2010: Coca-Cola opposes the registration, based upon confusing similarity (Article 8.1.b.)
and the fact that its earlier marks enjoyed a reputation of which the new mark would take unfair
advantage (Article 8.5.).

September 2011: OHIM rejects the opposition by Coca-Cola, because the marks are considered
not similar, based on the following arguments:
- The word elements of the marks are different and more distinctive than the figurative parts of
the marks.
- There is no similarity between the signs with the exception of the 'tail' coming from the 'M' of
Miticos mark and the 'C' of Coca Cola's mark.
- The script of the Coca Cola marks, called the Spenserian script, is not owned by Coca Cola and
is freely available for any party to use.
- The way in which Mitico might be using its mark (food and beverages) is irrelevant.
October 2011: Coca-Cola files an appeal, insisting again on the similarity of mark and its use.
August 2012: the appeal is refused by OHIM for a second time.
November 2012: Coca-Cola takes the case to court, specifically the General Court, a body of the
Court of Justice of the European Union, as mentioned earlier (Case T480/12).

4.2.

Ruling

On December 11, 2014, the General Court manifested its verdict in favor of Coca-Cola, taking into
account11 :
11

Curia.europa.eu. (2014). Judgement of the General Court.

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COCA-COLA VS. OHIM MITICO

General Court - Case # T-480/12

1. Similarity of the marks:


The Court considered the similarity in the aesthetic elements (such as the logos) for food and
beverage products to play an equally, if not more important role than the word elements.
Consumers of these products are considered to be persuaded more by the impression created
from a product through packaging or labels than the words themselves. Both the identical tail
and fonts contributed to the similarity of the marks.
2. Unfair advantage (free-riding) or detrimental impact
The court first confirmed the reputation of the Coca Cola marks in the food and
beverage industry, and then indicated it was convinced (in part by pictures from
Miticos website) that the company had the intention to free-ride on Coca Colas
reputation. According to (Johnson, 2005)12 free-riding is someone who chooses to
receive the benefits of a public good or a positive externality without contributing to
paying the costs of producing those benefits.
The verdict annuls the decision of OHIM (today named EUIPO) and upholds the opposition of Coca
Cola to the registration of Miticos trademark, orders OHIM to bear its own costs and to pay those
incurred by Coca Cola, and orders Mitico to bear its own costs.

5. Conclusion
This paper started on trademarks with the following question: Can trademarks with a
completely different wording (text) be considered similar?
The answer is YES! The General Courts decision shows the importance of evaluating marks as a
whole. Generally, when it comes to trademarks, the verbal elements have a strong differentiating
power (which is why OHIM initially rejected the opposition by Coca Cola), but the court pointed
out that the graphic elements and the visual impression also play an important role. The court
also enforced that free-riding and/or damages to the reputation of the original mark should be
taken into account based on all available evidence and circumstances, including the real
commercial use of the mark intended to be registered.
This way case T480/12 influenced the interpretation of EU Law on trademarks, and set a
precedent that will help to avoid potential conflicts between national and EU law on this matter.

12

Johnson, P. (2005). Glossary of Political Economy Terms: Free-Riding.

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Bibliography
(1) World Intellectual Property Organization (2004). Intellectual Property Handbook. 2nd Edition.
Geneva, Switzerland. ISBN: 92-805-1291-7.
(2) Kur, A. and Dreier, T. (2013). European Intellectual Property Law. Edgar Elgar Publishing.
Cheltenham, UK. ISBN: 978-1-84844-880-3.
(3) Euipo.europa.eu. (2016). Trade mark definition - EUTM. [online] Available at:
https://euipo.europa.eu/ohimportal/en/trade-mark-definition [Accessed 29 Jun. 2016].
(4) Euipo.europa.eu. (2016). EU trade mark legal texts. [online] Available at:
https://euipo.europa.eu/ohimportal/en/eu-trade-mark-legal-texts [Accessed 29 May 2016].
(5) Craig, P. and De Bu rca, G. (2011). EU Law: Text, Cases and Materials. 5th Edition. Oxford University
Press. New York, United States. ISBN: 978-0-19-957699-9.
(6) Europa.eu. (2016). EUROPA - Agencies and other EU bodies. [online] Available at:
http://europa.eu/about-eu/agencies/index_en.htm [Accessed 29 May 2016].
(7) Europa.eu. (2016). EUROPA - EU law. [online] Available at: http://europa.eu/eulaw/index_en.htm [Accessed 29 May 2016].
(8) Craig, P. and De Bu rca, G. (2011). EU Law: Text, Cases and Materials. 5th Edition. Oxford University
Press. New York, United States of America. (pp 123 -125). ISBN: 978-0-19-957699-9.
(9) Europa.eu. (2015). EUROPA - Court of Justice (CJEU) - The EU institutions explained. [online]
Available at: http://europa.eu/about-eu/institutions-bodies/court-justice/index_en.htm
[Accessed 29 May 2016].
(10)
Official Journal of the European Union. (2009). Council Regulation (EC) No. 207/2009.
[online] Available at: http://eur-lex.europa.eu/legalcontent/EN/TXT/?qid=1461325727753&uri=CELEX:02009R0207-20160323 [Accessed 29 May
2016].
(11)
Curia.europa.eu. (2014). Judgement of the General Court. [online] Available at:
http://curia.europa.eu/juris/document/document.jsf?text=&docid=160546&doclang=EN
[Accessed 29 May 2016].
(12) Johnson, P. (2005). Glossary of Political Economy Terms. [online] Available at:
http://www.auburn.edu/~johnspm/gloss/free_rider [Accessed 29 May 2016].

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