Costs, Conduct and Coca‑Cola

Introduction

The UK Intellectual Property Office (UKIPO) rejected an opposition brought by Robinsons Soft Drinks Limited (Robinsons) against trade mark applications filed by The Coca‑Cola Company (Coca-Cola). Coca‑Cola applied to register two marks, the word mark COCA‑COLA CREATIONS and logo mark in class 32 for a range of beverages (the "Applications").

Robinsons opposed the Applications based on its earlier UK trade mark for FRUIT CREATIONS also covering class 32.

Robinsons relied on section 5(2)(b) of the Trade Marks Act 1994 ("TMA") arguing a likelihood of confusion between their mark and the Applications. In addition, they opposed under section 5(3) TMA claiming the ROBINSONS CREATION mark enjoys a substantial reputation.

Proof of Use

Because Robinson's mark had been registered for more than five years, it was subject to proof of use requirements. Evidence was filed and the hearing officer accepted that the mark had been used in relation to fruit beverages.

Section 5(2)(b) – likelihood of confusion

Comparison of Goods

The goods covered by the Applications were found to be identical or highly similar.

Comparison of the Marks

The hearing officer determined that the Applications were dominated by the highly distinctive and globally recognised COCA‑COLA brand. The term “CREATIONS” was considered weak or descriptive, suggesting a line or variation of products.

The Hearing Officer concluded consumers would focus on COCA‑COLA as the key indicator of origin and “CREATIONS” would play a secondary, descriptive role. The marks were found to have a low degree of visual similarity, low to medium degree of aural similarity and low to medium degree of conceptual similarity.

Despite identical goods, no likelihood of confusion was found due to the dominance of the COCA-COLA element and the fact the shared element “CREATIONS” lacked distinctiveness. The overall differences outweighed similarities.

Therefore, the opposition failed under section 5(2)(b).

Section 5(3) - Reputation

The Hearing Officer accepted that Robinsons had a moderate reputation in the UK in the FRUIT CREATIONS mark for fruit in beverages.

In order to be successful under section 5(3), it is necessary to show that the public would, when confronted with the Applications, make a link with the earlier reputed mark. This is where Robinson's case failed. The hearing officer found the shared term “CREATIONS” was too weak to create a meaningful mental link and consumers would not associate Coca‑Cola’s marks with Robinsons.

Without such a link, claims of dilution or unfair advantage could not succeed and the section 5(3) also failed.

Costs

Having succeeded, Coca‑Cola became entitled in principle to recover a contribution towards its legal costs.

However, rather than determining costs immediately, the UKIPO invited post‑decision submissions, largely because a “without prejudice save as to costs” settlement offer had been made during proceedings.

Robinsons argued that costs should be awarded in line with the UKIPO’s standard published scale, which typically grants only modest costs.

Coca‑Cola took a markedly different approach, seeking costs “off the scale” – that is, a higher award reflecting its actual legal spend. Its argument was essentially that the case involved significant complexity and effort, and Robinsons’ conduct justified a departure from the standard scale.

The hearing officer has discretionary power to award costs which depart from the standard scale. Departures from the standard scale are rare and typically require unreasonable behaviour by the losing party and/or procedural abuse or conduct that significantly increases costs unnecessarily.

Following Coca‑Cola’s request Robinsons contested the application for enhanced costs and the UKIPO gave Robinsons additional time to respond. Further submissions were exchanged, including Coca‑Cola’s criticism of alleged “factual inaccuracies” in Robinsons’ response. This exchange highlights how costs disputes themselves can become mini‑litigations, particularly when off‑scale awards are sought.

The hearing officer did not consider this case warranted off-scale costs. However, it did make a slight increase to the award to account for the fact that the Robinson's lawyers submissions were overly lengthy and, to an extent, disproportionate. A costs award of £3,000 was made.

Key Lessons from the Decision

• Weak shared elements carry little weight

This case reinforces that common or descriptive words (like “CREATIONS”) rarely drive confusion, even when identical covering identical goods/services. The distinctiveness of the shared element is critical.

• Famous house marks can dominate

The presence of a powerful brand like COCA‑COLA can decisively shape the overall impression and can eliminate confusion even where goods/services overlap entirely.

• Reputation alone is not enough

Even if a mark has reputation the opponent must still establish a link in the consumer’s mind and weak similarities will not support dilution claims

• Reinforcement of scale costs as the Default

The case underscores that scale costs remain the norm in UKIPO proceedings, even in disputes involving major commercial players.

• High bar for off‑scale awards

Coca‑Cola’s attempt to recover full or enhanced costs illustrates the difficulty of securing off‑scale awards.

The UKIPO's structured consideration of submissions shows that detailed evidence of actual costs is necessary but not sufficient and conduct and procedural fairness remain the decisive factors.