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Starbucks, A fierce battle to defend the logo

In a tired morning, people come to coffee shops to have a cup of coffee to wake their mind up. They also drink coffee during work or during class. When chatting with a friend, going out with a significant other, coffee is often a central aspect of daily life. Now that coffee shops have become commonplace, which is the coffee shop most people know and use? In Korea, it can be argued that it’s ‘Starbucks’. In Korea, Starbucks has surpassed 1 trillion Won (US$1=W1,127) in sales for the third consecutive year, and the number of stores per person has reached 4th in the world. Starbucks operates in 64 countries around the world and operates approximately 24,000 stores worldwide.

 

Let’s look at the Starbucks’ logo which is headquartered in Seattle. The Starbucks logo has had many changes, the one on the left is the very first logo. The woman in the middle is the “Siren” of Greek mythology. Sirens are mermaids or sea monsters, and they have attracted people with beautiful voices and driven people to throw themselves into the sea. The founder of Starbucks has decided to put the Siren in the logo in order to stop people on the go and make them taste coffee. ‘Starbuck’ is also known as a sailor who loved coffee, which appeared in Herman Melville’s novel Moby Dick. There are three founders of the chain, and it became ‘Starbucks’ with an ‘s’. As the founder of Starbucks hoped, Starbucks became the world’s best coffee shop, and the logo was changed as follows.

 

The first logo in 1971 is the brown siren. It was changed in 1987 due to the criticism that it is sensational. Since then, the green logo we know has finally appeared and covered her chest with her long hair. In 1992, the sirens came forward and the navel is disappeared. Since then, the Starbucks logo has been transformed again in 2011. The brand name has disappeared, leaving only Siren.

Companies that have been internationally successful, such as Starbucks, will always keep an eye on whether or not companies or individuals intend to profit from Starbucks’ brand value, infringing the trademark. Starbucks has also filed many lawsuits related to their trademarks and brand names.
Let’s look at the lawsuits they have filed in Korea.

 

First, ‘1. Starbucks and 엘 프레야’s logo and trademark dispute ‘. In December 2003, Starbucks filed a patent infringement claiming that El Freya’s logo was similar to its logo, infringing the trademark rights(2005후926). Both the Patent Tribunal and the Patent Court have concluded that the STAR section is a generic term and is not discernible and that the characters appearing in both trademarks can not be regarded as similar trademarks because they are ‘Sirens-mermaids’ and ‘Goddesses’ each. The Supreme Court also ruled that 엘프레야 won the lawsuit. In addition, Starbucks filed a separate lawsuit against 엘프레야’s “STARPREYA” trademark, but both the Patent Tribunal and the Court dismissed Starbucks’ claims.

 

“The registered trademark in this case is a combination of “STAR” and “PREYA”, and the preregistered trademark is a trademark consisting of a combination of “STAR” and “BUCKS” and its appearance differs. Since “PREYA” and “BUCKS” do not have a special meaning, both trademarks do not have a concept to contrast. And the “STAR” part of both trademarks seems to be very weak in discrimination because it is a commonly used word in Korea… This registered trademark will be called “Star Freya”, and the pre-registered trademark will be called “Starbucks” … Since they do not seem to be called separately, both trademarks have a big difference in their titles. Therefore … can not be seen as the same or similar trademark.” (2006허5072, darts-843-322-A-ko)

 

The second case is a trademark invalid lawsuit filed by Starbucks headquarter against Japanese dairy company Morinaga in 2018. The Morinaga company applied and registered coffee trademark ‘Mt. RAINIER’ in February 2015. Starbucks claimed that “Morinaga’s trademark is a trademark that is similar to a well-known trademark of its own, and the registration should be nullified.” However, the Patent Tribunal and the Court did not recognize it. ( 2017허5481,darts-778-720-E-ko/ 2015당5512, darts-790-077-E-ko)

 

This case registered trademark (Morinaga) ‘is a figure with a’ mountain shape ‘and’ Mt. RAINIER ‘is placed in the configuration. On the other hand, the pre-branded trademark 1 and the prebranded trademark 2(Starbucks) are arranged in a circle with a figure of a ‘long-haired woman figure wearing a crown’. Registered trademarks and pre-owned trademarks 1 and 2 have a clear difference in overall appearance due to differences in shape and character configuration of the graphic portion. And in title and concept, this trademark will be called ‘Mountain Mount Rainier’ and will be considered ‘Mount Rainier’. On the other hand, pre-used trademarks 1 and 2 will be called “Starbucks” (coffee) and will be considered as “Starbucks (coffee)”. Accordingly, the registered trademark and the used trademark 1 and 2 are trademarks that are not similar to each other due to different appearance, title, and notion.” (2015당5512, darts-790-077-E-ko)  

 

What about other countries? The coffee brand ‘SardarBuksh’, which operates 25 outlets in Delhi, India, has agreed to change its brand name to ‘Sardarji-Bakhsh’ after Starbucks sued them (See our previous blog post here covering the case). In addition, Starbucks is actively involved in litigation to protect their trademarks. Starbucks sued the owner of a “Star Bock” beer in Texas, and also the owner of a coffee shop called Sambucks in Oregon.

In Korea, Starbucks has barely won a lawsuit. However, through a series of examples, you can see how aggressively Starbucks is trying to keep the value of their logos. As coffee shops are popularized and become one of our daily lives, we are expecting more lawsuits from Starbucks. Our business and self-employed people should be careful not to become a defendant in these lawsuits through more thorough efforts.

Author : Taeyoen Kim

Taeyoen Kim graduated from Sungkyunkwan University and Ewha Womans University where she obtained her JD. She worked as a reporter of , and now working as an analyst of Darts-ip, dealing especially with trademark issues. She is interested in trademark and Unfair Competition law issues, and about copyright issues regarding cultural contents such as Kpop.

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