Maltese café fined €2,000 for ripping off Starbucks in copyright breach

US coffee giant Starbucks clamps down on Malta cafe over trademark breach

Even a low degree of similarity between two trademarks was sufficient to find a trademark breach
Even a low degree of similarity between two trademarks was sufficient to find a trademark breach

Seattle-based coffee-house giant Starbucks has successfully obtained two trademark infringement judgments in Malta, ordering a St Paul’s Bay café, operating under the name “Strabuono Coffee” to stop using that name and destroy any signs or merchandise bearing its logo, together with the payment of a €2,000 fine.

In the two cases which had been filed in 2017, Strabuono’s lawyer Matthew Bondin had argued that the emphasis in the logos was different – whilst Starbucks featured a mermaid, their clients’ logo was a lion’s head.

In addition to this, the names were in different languages and had completely different meanings, he said.

Bondin also argued that their flagship Strapuccino product’s name was a deconstruction of the Italian word cappuccino, melded with the name of the café and not a corruption of the plaintiff’s trademark “Frappucino” drink.

Handing down judgement in both cases, Chief Justice Mark Chetcuti made reference to EU judgments on similar trademark infringement cases filed by Starbucks against other companies, noting that the EU’s General Court had stated that even a low degree of similarity between two trademarks was sufficient for it to find for the plaintiff.

The court observed that the Maltese company’s logo had a similar colour scheme and shared other characteristics with those trademarked by Starbucks.

The plaintiffs had found out about the defendant’s use of the similar name in 2017 and had filed the case in October that year. Starbucks started physical operations in Malta in 2019, whilst the defendants had set up their business around 2015.

The defendants claimed that during the first two years after being set up, the company had only started investing and issuing capital, explaining that no sales took place during this time.

The court however ruled that the marks in question were visually and conceptually similar and that there had been a breach of European Union trademark protection legislation.

In imposing the €2,000 fine, the court said it had taken into account the fact that the Maltese café had only started operating very recently and that the plaintiff had failed to substantiate its claims of having suffered damages with concrete evidence or witnesses to this effect.

The court also ordered the defendant company to cease and desist from continuing to use the infringing marks and signs and destroy any material in its possession or under its control containing them or other distinctive marks containing the words “Strabuono” and “Strabuono Coffee.” The court ruled the word “Strapuccino” to be “ancillary and secondary.”

Lawyer Luigi A. Sansone represented Starbucks in the proceedings.