Starbucks settles coffee trade mark law dispute

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Starbucks settles coffee trade mark law dispute

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Written by Noric Dilanchian | TRADE MARKS & LITIGATION

Saturday, 23 June 2007

coffee_victory In Coffee brand values we assessed coffee economics and trade marks. It was triggered by a dispute between Starbucks and Ethiopia. The dispute is now resolved. Ethiopia's IP licensing strategy is in full swing.

The background is that In 2005, with assistance from Light Years IP, Ethiopia filed trade mark applications.

The applications sought to register YIRGACHEFFE, SIDAMO and HARRAR as trade marks in 40 countries.

Each of those words is said to be the name of a specialty coffee from Ethiopia. However, they are neither invented nor novel words. Legal issues arose because of an argument that the names were geographic indications, ie names of districts in Ethiopia. If this is so, then Ethiopia's applications were exposed to legal opposition by others, such as Starbucks.

Starbucks, its lawyers and its PR people elected to oppose Ethiopia's applications in the United States.

Starbuck's lawyers and PR spokesman uploaded separate clips into YouTube pushing their positions. Ethiopia's legal representatives in the US also responded via YouTube. Fair trade campaigners spoke in support. Additionally Oxfam organised an international protest and their own online and in-store counter-response. For example Oxfam used online banner ads. One of the final ads illustrates this post.

On settling their dispute, on 20 June 2007 Ethiopia and Starbucks issued a joint press release saying:

Starbucks will not oppose Ethiopia's action to register its trade marks for its speciality coffees; and
the parties have entered into an agreement to promote the specialty coffees.

In ending its worldwide campaign against Starbucks, Oxfam America issued a video press release on YouTube.

Meanwhile, in Australia, the trade mark applications filed by Ethiopia remain pending. The Australian Trade Marks Office has issued adverse examiner's report.

Such registrations and the trade mark licensing strategy to be worked in with them are long term, legally-based, revenue generation plays as detailed Coffee brand values. Time will tell what economic value Ethiopia will garner from the names YIRGACHEFFE, SIDAMO and HARRAR. Managing Intellectual Property magazine, a London-based publication, cites Light Years IP saying "15 companies, including Starbucks, have now agreed to take a licence to use the coffee brands."

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