The dispute that has been ongoing since 2001 is soon to be re-visited.
Starbucks, the famous coffee house, brought an action against the Black Bear Micro Roastery (‘BBMR’) which sold a blend of coffee called ‘Charbucks’. Starbucks attempted to gain an injunction on the basis that the use of the mark ‘Charbucks’ was diluting its brand. However the court of first instance as well as the federal appeal court held in favour of BBMR on the basis that the marks were not substantially similar.
This ruling was based on the fact that BBMR used additional terms such as ‘Mr’ and/ or ‘Blend’ as well as use of the black bear name and the term ‘Micro Roastery’. Due to this it was held that dilution could not be present.
However the US Appeal Court has now stated (in line with recent legislation) that dilution is possible even when the marks are not substantially similar and has remitted the case for a fresh hearing on this point.