Starbucks Prevails in Key Malta Trademark Infringement Case

Coffee Shop Ordered to Change its Name in Malta Trademark Suit

Dr. Maria Chetcuti Cauchi co-authored with Dr Susanna Deguara | Published on 19 Jan 2022

Starbucks - Key Malta Trademark Infringement Case

Malta Trademark Case - Background

The coffee giant Starbucks has prevailed in two Malta trademark infringement lawsuits against the St Paul’s Bay, Malta, coffee shop Strabuono Coffee. The cases were filed in 2017 (1153 / 2017) and judgement was delivered on 12 January 2022. 

In a move to clamp down on local copiers, the renowned international franchise Starbucks claimed that the Strabuono logo, colour scheme and get-up was very similar to its own renowned trademarks. It also argued that the high similarity of the signs, together with identical use created confusion in the minds of the public.  

A trademark is a word, symbol, image, phrase or even colour scheme that identifies the source of goods or services and links them to a particular entity or individual. It is trademark infringement to use a competitor's trademark without permission in a way that is likely to cause confusion in the minds of consumers as to source, sponsorship, or affiliation with another enterprise.  Also, when a trademark is famous, any use that dilutes the trademark is also actionable. Also, an alleged infringer must be a competitor of the right-holder for there to be trademark infringement.  Thus, it would not be classified as infringement when a dissatisfied customer makes use of a company's trademark to publicly complain about an establishment.

In this case, Strabuono opened a coffee shop which directly competed with the Starbucks business.

Strabuono argued that the logos differed in that the Starbucks logo features a ‘mermaid’ whilst the Strabuono logo features a ‘lion’. It also claimed that, per se, the word Strabuono was in a completely different language from the name of its celebrated competitor and translates to ‘extra good’ in Italian. This word was chosen as the coffee shop serves typical Italian sweets and delicacies. Therefore, the defendants claimed that the words have a different conceptual meaning as they mean different things in different languages. Strabuono also claimed that that their leading beverage Strapuccino derived its name from a deconstruction of the Italian word Cappuccino, blended with the name of the coffee shop itself. It insisted it was not a distortion of the plaintiff’s trademark “Frappucino”.

In this Malta Trademark Case, Starbucks would have had no difficulty proving Strabuono was competing with them, given the area in which the latter operated.  What was necessary to be proven was the likelihood of confusion.  The test that needs to be adopted in this case, is the test normal man in the street, the consumer, and the consumer’s outlook towards the infringing trademark. Would such consumer, upon viewing the Strabuono coffee shop, be confused as to the association or otherwise, with Starbucks. 

Malta Trademark Case: Judgement

Upon delivering his judgements, Chief Justice Mark Chetcuti referred to similar Starbucks EU judgments and noted that there was enough European legal precedent in favour of Starbucks. The court noted that the EU’s General Court stance was that even a low degree of similarity between two trademarks was sufficient for it to find for the plaintiff. The court also observed that the marks, in this Malta Trademark case, were visually and conceptually comparable and that therefore there was a breach. The court ruled that the Maltese company’s logo had a similar colour scheme and shared other characteristics with those trademarked by Starbucks

The court ordered the defendant company to:

  • cease and desist from using the infringing marks and signs; and
  • destroy any material in its possession or under its control containing such signs or other distinguishing marks comprising the words “Strabuono” and “Strabuono Coffee”.

The court also imposed a €2,000 fine, keeping mind that the Maltese café Strabuono had only very recently started operating and that Starbucks had failed to corroborate its claims of having suffered damages with solid evidence or witnesses to this effect.

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