Starbucks challenge to Morinaga’s Mt. Rainier logo shot down

05-Dec-2017 - Last updated on 05-Dec-2017 at 09:10 GMT

Morinaga's Mt. Rainier logo has faced opposition from multiple brands claiming the trademark is too similar to their own. ©GettyImages/TimArbaev

The Intellectual Property Office of Singapore (IPOS) has rejected Starbucks’ opposition to a trademark application filed by Japanese dairy manufacturer Morinaga Nyugo Kabushiki Kaisha (trading as Morinaga Milk Industry Co., Ltd.) for its RTD espresso and milk beverage.

The trademark application was filed by Morinaga in March 2013 and, in 2016, Starbucks submitted their complaint to IPOS.

Starbucks argued that Morinaga’s trademark application for a black circular logo featuring Mt. Rainer, located in the state of Washington, was confusingly similar to the Seattle-based green and black circular logo with its iconic mythical siren in the middle.

Additionally, Mt. Rainier Caffe Latte is packaged in a take away style coffee cup despite being a premade RTD espresso coffee drink.

IPOS joint managing partner, Lorraine Tay, found that the two companies trademarks were not similar because of Morinaga’s mountain imagery instead of a mermaid which she argued was the most distinct feature of the Starbucks logo.

“The distinctiveness of the opponent’s marks resided in the depiction of the marks as a whole, in which the textual element (i.e., ‘Starbucks’) and/or the mermaid icon played a huge role,” Tay said.

“The absence of mark-similarity means that one of the critical elements necessary for a confusing connection to be established is lacking; and if there is no confusing connection, there cannot logically be a likelihood of damage.”

Past trademark battles

The US Trademark Trial and Appeal Board (TTAB) rejected Morinaga’s trademark application of the Mt. Rainier logo last year for its milk beverages containing espresso coffee based on the “likelihood of confusion with Mount Rainier Coffee Company.”

Morinaga argued that the logo, which also says the “Mountain of Seattle” under “Mt. Rainier” plays a “relatively minor role” because it appears at the base of the mountain image in smaller text.

However, the TTAB felt that the logo would be geographically deceptive to potential consumers when looking at the trademark as a whole.

“The marks are obviously not identical, and would differ somewhat in sound if vocalized in their entirety,” the TTAB said, but “they are substantially similar in appearance, sound, meaning, and commercial impression.”