COSTA COFFEE vs Caffè la Costa

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Costa Limited, operating the UK’s largest and the World’s second-largest International chain of coffee shops “COSTA COFFEE”, against trademark registration no. 6230027 for the “Caffè la Costa” mark for use on coffee, coffee beans in class 30 and restaurant services in class 43 by finding both marks are dissimilar and less likely to cause confusion.
[Opposition case no. 2020-900137, Gazette issued date: December 25, 2020]

Opposed mark

The mark “Caffè la Costa” (see below) was filed by a Japanese individual on March 11, 2019, for use on tea; coffee; cocoa; coffee beans; confectionery, and bread in class 30 and restaurant service in class 43, and published for opposition on May 17, 2020, after registration on February 27, 2020.

Opposition by Costa Limited

On May 14, 2020, Costa Limited filed an opposition and alleged the opposed mark shall be revocable in contravention of Article 4(1)(xi) of the Japan Trademark Law due to close resemblance to senior trademark registration for a wordmark “COSTA” and the “COSTA COFFEE” logo (see below) in class 30 and 43.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.

Costa Limited argued that relevant consumers are accustomed to discriminating coffee shops by means of a distinctive literal element contained in their name. As a universal habit of shortening the full name, “Starbucks Coffee” is referred to as “Starbucks.” Likewise, “Doutor Coffee” as “Doutor”, “Excelsior Caffè” as “Excelsior”, “Tully’s Coffee” as “Tully’s”. Because the term “Coffee” and “Caffè” lack distinctiveness as a source indicator in relation to coffee; coffee beans and restaurant services.

In this respect, the consumers would consider the term “Costa” to be a dominant portion of the opposed mark when used on the goods and services in question. Therefore, “Caffè la Costa” shall be deemed confusingly similar to a wordmark “COSTA” and the “COSTA COFFEE” logo mark owned by Costa Limited.

Board Decision

The Opposition Board found the opposed mark does not give rise to any particular meaning as a whole. The mere fact that the respective word of the opposed mark (“Caffè”, “la”, “Costa”), is in the Italian dictionary would not change the finding since relevant consumers are unfamiliar with these Italian words. If so, the consumers would perceive the opposed mark as a coined word in its entirety and pronounce the entire mark as it sounds. In this regard, the Board doubted whether the term “Costa” is considered the dominant portion of the opposed mark by stating the facts show no evidence.

Based on the findings, the Board assessed the similarity of both marks as follows.

It looks obvious that the opposed mark is distinguishable from the cited marks, “COSTA” and the “COSTA COFFEE” logo, in appearance and sound, on account of different term and position of “Caffè la” and “COFFEE” combined with “Costa” and other distinction of figurative elements.
Provided that “COSTA” is an Italian word unfamiliar to relevant consumers with ordinary care, the Board believes both marks are incomparable in concept.
Even if both marks are incomparable in concept, the low level of similarity in appearance and sound would suffice to conclude that the consumers are unlikely to associate, connect the opposed mark with “COSTA COFFEE” when used on the goods and services in question.

Accordingly, the Board decided the opposed mark wasn’t revocable in contravention of Article 4(1)(xi) of the Trademark Law.

Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM