Singapore’s jurisprudence in the area of trade mark law has seen some caffeine-themed action in recent times. Joining MacDonald’s "McCafé" versus "MacCoffee" Court of Appeal decision and the "KOPITIAM" opposition is Nescafé, who took out an opposition against Master Beverage Industries’ "Golden Eagle" trade mark.
In this latest act, a red coffee mug plays the starring role. Picture the lead character filled with steaming black coffee, sitting on a bed of brown coffee beans… and we see the eye of the storm.
Since the more idyllic days of 1978, Nescafé has sold coffee in Singapore under their "NESCAFE DELUXE" and, later, "NESCAFE CLASSIC" labels. Their product packaging has a representation of the red coffee mug sitting on coffee beans described earlier. Nescafé managed to register a device mark comprising these visual elements – significantly, without the house brand "NESCAFE" – in 1997.
Fast forward to 2004, and Master Beverage Industries files an application to register a mark combining an eagle above the words "Golden Eagle" on a horizontal banner with a red mug of milk coffee on a bed of coffee beans that forms the bottom half of the mark. Could such a mark be registered, in view of Nescafé’s earlier registered mark?
Nescafé thought not and opposed the registration of the "Golden Eagle" mark. Among its arguments, Nescafé claimed that its registered red-mug-on-coffee-beans, which is distinctive of the opponent, is wholly subsumed in the applicant’s mark, such that there is a likelihood of confusion. After all, the opponent had taken enforcement action against four other coffee manufacturers, such as Gold Roast Food Industry and Aik Cheong Roaster, for using the red mug in their set-up or product packaging.
In "Golden Eagle"’s favour was the fact that the eagle and words took up nearly half the mark; it was hard to ignore these verbal and visual elements. Also, Nescafé’s evidence showed that its registered red-mug-on-coffee-beans was never used on its own; it always appeared with the "NESCAFE" house brand.
Eventually, in a written decision issued in June 2009, the Principal Assistant Registrar at the Intellectual Property Office of Singapore allowed the "Golden Eagle" mark to be registered. Since Nescafé always used its red-mug-on-coffee-beans with its house brand "NESCAFE", the public would remember Nescafé’s marks not as "red-mug-on-coffee-beans" but simply as "NESCAFE" marks! The opponent has established a longstanding reputation and built up a substantial, loyal customer base for its "NESCAFE" coffee. This extensive reputation is the very reason why confusion among the public over a "red-mug-on-coffee-beans" representation is unlikely. Hence, Master Beverage Industries was able to register its "Golden Eagle" mark, red mug and all.
There will be those who think the whole episode was just a storm in a coffee cup. After all, if no likelihood of confusion was found, then Nescafé did not actually lose out in the coffee stakes; "Golden Eagle" coffee gets registered, a nod to consumer choice; and coffee lovers in Singapore can all enjoy their preferred cuppa.