January 2006
Wake Up and Smell the Coffee: Starbucks Suffers Globally From Its Own Success
Starbucks appears to have suffered a series of alleged infringements around the world in recent times the results of two long running court battles on opposite sides of the globe having recently been announced.
USA
In 2001 in New Hampshire, USA, a small company “Black Bear Micro Roastery” released a dark coffee blend named "Charbucks". Starbucks sued for trademark infringement and unfair competition. Jim Clark, The owner of Black Bear, Mr Jim Clark, claimed he named his coffee Charbucks in order to “warn customers that his new roast was very dark”. Similarly he has also named products "Charbucks Blend" and "Mr. Charbucks."
Although the judge was of the opinion that Black Bear had intended to take advantage of the Starbucks' name she did not feel that Starbucks had managed to prove its image or brand was damaged by the Charbucks brand or that the name was used to mislead consumers about a connection between the two.
Notably the packaging of the Charbucks product, offered by mail order and in a coffee shop is not similar to that of Starbucks as the colour layout and images in the logo is different to the well known green and white of Starbucks.
China
The US coffee giant appears to have had more luck in protecting its brand in China where a Shanghai court has found in favour of Starbucks in an a copyright infringement case.
The Shanghai Xingbake Coffee Co Ltd registered the Chinese name “Xingbake” in the country before Starbucks entered the Chinese market. (The word “Starbucks” translates as “Xingbake” in Chinese).
The infringing Shanghai company began setting up its own “Xingbake” coffee houses in 2003 some five years after Starbucks had entered the Chinese market through its franchisees in Taiwan and China. In December 2003 Starbucks sued the Shanghai company claiming copyright infringement in the logo and trade mark infringement.
Conversely to the US case some of the Chinese cafes did use a logo similar to that of Starbucks i.e. a round logo with green characters against white background Chinese characters reading "Xing Ba Ke" on the top and Cafe at the bottom.
The court ruled that Shanghai Xingbake Coffee Co Ltd constituted illegitimate competition by using the Chinese translation of Starbucks in its company name and a similar logo design. The presiding judge ruled that the Starbucks name (in Chinese and English) and its associated logos are famous marks in China and should therefore be entitled to additional protection. Payment of 500,000 Yuan (c. £35,000) was ordered to be paid to Starbucks.
Briffa Comment:
If you are trading using your brand in other territories it is important that you ensure that you have registered rights in those countries also. Having a UK registered trade mark will not go very far towards helping you in the event that an infringement occurs in China, the USA or any other country other than the UK. Briffa are able to assist with trade mark filings in most countries of the world. Please contact Sarah Jeffery (sarah@briffa.com) for more information.