January 2007
Registry opts for Pepsi over Ipsei
Coca-Cola's branding strategy has come some way since its 1904-5 straplines of "Coca-Cola is a delightful, palatable, healthful beverage" and "The favourite drink for ladies when thirsty, weary, and despondent" but the company has been recently thwarted by Pepsi in an attempt to brand its new soft drink under the name IPSEI. Coca-Cola applied to register that word as a UK trade mark in relation to non-alcoholic beverages in class 32. Pepsi is the registered owner of UK and Community trade marks for the word PEPSI and initiated opposition proceedings on the grounds that (i) IPSEI was similar to PEPSI, Coca-Cola's application concerned identical or similar goods and there was a likelihood of public confusion; and (ii) the PEPSI trade mark had a reputation in the UK and use of the IPSEI trade mark by Coca-Cola would take unfair advantage of, or be detrimental to, the distinctive character of Pepsi's mark.
At the Trade Mark Registry hearing, the Hearing Officer assessed the visual, aural and conceptual similarity of the two marks and held that they were similar. Even though case law has placed emphasis on the first syllable of a trade mark, he was persuaded by expert evidence concerning the distinctiveness of the 'PS' letter combination and the similarity between the endings. In addition, Pepsi's survey evidence impacted on his decision in that it revealed the majority of consumers spontaneously recalled the PEPSI mark when presented with the IPSEI mark. Of the 140 people interviewed, 102 made unprompted reference to Pepsi - although one interviewee instead opined that the IPSEI mark "looks like pies but then again that's because I'm a pie lunatic - how do you think I got like this". The Hearing Officer concluded from the survey evidence that consumers would believe the IPSEI name was an adaptation of the PEPSI brand devised by Pepsi for use in conjunction with non-cola soft drinks. Consequently Coca-Cola's mark was refused under ground (i) above.
The Hearing Officer also considered ground (ii) above. His opinion was that the association between the IPSEI and PEPSI marks in the minds of consumers, as indicated by the survey evidence, was sufficiently strong for a soft drink branded IPSEI to take unfair advantage of Pepsi's mark. The mark was therefore additionally prevented from being registered under this ground.
Briffa Comment:
The case indicates the persuasiveness
of carefully undertaken surveys. The Hearing Officer expressly stated
that he was more influenced in this instance by such evidence than
by the expert witness evidence when assessing the impact of the marks
on consumers, particularly as the surveys contained questions that
did not invite thoughts on brand origin or third party marks. It
is also clear from the judgment that prospective parties would be
well advised to adhere to the guidelines contained in Imperial Group
Plc v Philip Morris Ltd when devising and carrying out any such survey.