Whole Latte Trademark Trouble
posted by Christine Farley
Greetings from sunny Northwest DC! I’m a bit slow out of the gate as it’s taken me a couple of days to recover from Halloween. Here’s what I look like today; obviously slowly getting back to my old self.
I thought I’d make my first post about a story that combines two topics about which I am obsessed: trademarks & coffee. It seems there’s a controversy brewing between Starbucks & the gov’t of Ethiopia over the designations of certain Ethiopian coffee beans. The short version: apparently Starbucks, through the a trade association it dominates, is opposing Ethiopia’s US trademark applications for SIDAMO & HARAR. (Ethiopia’s earlier trademark for YIRGHACHEFFE must have escaped notice.) The story was brought to light by Oxfam who is bitter over the action, which it says blocks Ethiopia and it’s poor farmers from annual revenues of $88 million. The thinking here is that control of the intellectual property connected with these famous coffee beans translates into increased revenues. Presumably, Starbucks’ Sidamo beans, which now sell for $10.45 a pound, would cost a little more due to trademark license fees, which would be passed on to Ethiopian farmers by their government.
The piece that doesn’t make sense to me is why Ethiopia is seeking trademarks rather than certification marks. Although this may seem a technical point, it relates to a global battle over the protection of geographical indications (GIs). The European view is that GIs are an important form of IP that protects things like champagne & feta. The US stance is that basic trademark law is more than enough protection. The US has been promoting certification marks, a type of mark protected under federal law, amongst developing countries (mostly through Free Trade Agreements) as a counter to the European model. HARAR would work as either a GI or a certification mark since the distinctive beans are associated with the Harar region. But as a trademark it has trouble because it may be understood less as a brand than as a type of bean. Whether a trademark or a certification mark, Starbucks would still have to license the use the word. I note that in an earlier proceeding in which Ethiopia challenged a Starbucks’ mark including Sidamo, Ethiopia similarly claimed previous use as a mark (since 1929). (Starbucks voluntarily abandoned that mark.) The certification mark strategy might save Ethiopia from a challenge that the term is generic since even Starbucks admits that Sidamo is the “birthplace of coffee.”
I’ve put in a call to Ron Layton, founder of Light Years IP, who is advising Ethiopia on their strategy. I’ll report back any intelligence.
UPDATE 11/6/06
Today Starbucks has taken out a full-page ad in the New York Times defending itself from Oxfam’s attack. Last week Oxfam took out full-page ads in a few major west coast papers decrying Starbuck’s position on Ethiopia’s trademark strategy.
November 2, 2006 at 11:23 am
Posted in: Intellectual Property
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Responses (5)
Susan - November 2, 2006 at 6:25 pm
Thank you for this interesting and insightful analysis. I hope you start looking a bit better soon!
Frank - November 2, 2006 at 6:41 pm
Fascinating issue. I think there was an interesting colloquy between Madhavi Sunder and Mark Lemley on how much enchanced IP rights can help LDC’s at a conference recently. In any event, I’m happy to see my old firm (Arnold & Porter) is helping Light Years IP in its mission–this sounds like a terrific idea for public interest IP work.
Pamela - November 2, 2006 at 8:28 pm
starbucks will come around now that you have made them aware. I saw them on 60 minutes and they seem reasonable
Christine Farley - November 2, 2006 at 11:21 pm
Arnold & Porter must have been annoyed by the coverage by The Guradian who reported that “the Ethiopian government last year filed COPYRIGHT applications to trademark its most famous coffee names.” (emphasis added) Malpractice?
Christine Farley - November 3, 2006 at 3:42 pm
As promised, I did speak with someone at Light Years IP about the strategy. The choice of trademark over certification mark was a deliberate one. Ethiopia wants to set up a network of licensed distributors and thinks trademarks will enable this in a way that certification marks won’t. Apparently, they were put off certification marks by the difficulties India has had enforcing its Darjeeling certification mark. I can’t see why a trademark is any more exclusive than a certification mark. See the Roquefort cheese case.
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