• The Importance of Registering a Trademark

    A trademark can be any word, symbol, phrase, design, colour scheme, or a combination of these things that identifies and distinguishes goods and services from the goods and services of other competitors.

Article:

The Importance of Registering a Trademark

02 March 2022

A trademark can be any word, symbol, phrase, design, colour scheme, or a combination of these things that identifies and distinguishes goods and services from the goods and services of other competitors.

The use of such a trademark by rivals without authorization and in a way that is likely to confuse consumers constitutes trademark infringement, which is illegal.

Even if the respective marks and products or services being utilized are wholly different, trademark infringement can still be pleaded when a well-known brand is diluted in any manner.

As a matter of fact, in two recent judgments delivered by the First Hall of the Civil Court on the 12th of January 2022, a local Maltese company, Strabuono, was found guilty of infringing the trademark of the coffee house giant, Starbucks (the "Plaintiff").

In the first case, brought before the Maltese Courts in terms of Articles 9(2)(b) and 9(2)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017 on the European Union trademark and Chapter 488 of the Laws of Malta, the Plaintiff claimed that both Starbucks and Strabuono operated as coffee houses with very similar goods and services.

The Plaintiff argued that there was a clear likelihood of public confusion between Starbucks' registered trademarks and Strabuono's marks, and that Strabuono had taken an unfair competitive advantage of Starbucks' registered trademarks, which have a good reputation and are well-known.

In Starbucks’ view, by making use of similar marks, Strabuono was not only causing detriment or dilution to its registered trademarks but also tarnishing its reputation.

In this case, the Court held that the marks in question were visually and conceptually similar, at least with respect to the Plaintiff's main mark and the Defendant's main mark, because they both had the same circular logo with green colouring; the respective dominant words "STARBUCKS" and "STRAUBUONO" were placed in the same position; the description of the service of each of the logos (that is, coffee) was the same; and there were identical elements on the left and right hand sides.

Even though the Starbucks mark focused on an image of a mermaid, while the Strabuono’s mark focused on an image of a lion, and the word "Starbucks" is an English term while the word "Strabuono" is an Italian term, the Court still argued that the marks gave the average person the impression that the Strabuono mark is identical or similar to the Starbucks mark.

The court continued to add that by using the Plaintiff’s marks, Strabuono took an unjust advantage, tarnishing the Plaintiff’s reputation as well as degrading the quality of the goods and services provided. As a result of all of this, the court ordered Strabuono to cease all use of the words, signs, and figures determined to be in violation of paragraphs (2) (b) and 9(2) (c) of the Trademark Regulation within one month of the court's ruling.

In the second case, which was filed against Strabuono in terms claiming that Strabuono’s use of similar signs and marks to that of the Starbucks trademark was contrary to Articles 32 to 36 of the Commercial Code, Chapter 13 of the laws of Malta.

In this case, the court concluded that the appearance and the impression that the similar signs and marks gave, reminded the public of the Plaintiff's registered marks, and after various other considerations, ordered Strabuono to pay a penalty of €2,000 as well as to get rid of any material in its possession or under its control within one month that had such signs or other distinguishing marks bearing the words "Strabuono" and "Strabuono Coffee." The expression "Strapuccino" was held to be ancillary and secondary to the aforesaid words.

By having its marks and creations registered, Starbucks had the right to initiate these infringement actions against Strabuono for using such marks without authorization and in a way that is most likely to confuse consumers.

Registration strengthens the legal protection of trademarks and ensures that, upon registration, trademark owners have the exclusive right to operate the trademarks in the market.

The burden of proving that an unregistered mark is not similar to a registered trademark is always very much higher, and so Strabuono, in this case, was clearly at a disadvantage by not having its marks registered.

Furthermore, when registering a trademark, the owner is guaranteed that the marks do not resemble any other registered trademarks, and if Strabuono had registered its marks, the company would not have been authorized to use such marks, and would have avoided the infringement in the first place.

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