Vittoria Coffee has emerged victorious in a trademark battle with competitor Di Bella Coffee over the use of the phrase “we know coffee”.
In the latest chapter of the brands’ fiercely competitive relationship, the Australian Trademark Office has declined Di Bella’s applications to trademark the phrase on the grounds that Di Bella was well aware of Vittoria Coffee’s use of the exact same phrase.
Vittoria Coffee has used the tagline “we know coffee” in its advertising campaigns since 2010, including in a global campaign featuring Al Pacino.
But in early 2012, fellow coffee roaster Di Bella adopted similar language in its advertisements, including one television commercial in which founder Phillip Di Bella said “I’m not Pacino and I know coffee”.
According to Campaign Brief, Di Bella applied to trademark two slogans in March 2012: “Di Bella Coffee … We Know Coffee” and “Crop to Cup … We Know Coffee”.
Vittoria Coffee objected to the applications under the Trade Mark Acts and, last week, IP Australia – the governing body for trademarks – found in its favour and declined Di Bella’s applications.
Michael Kirov, who was the hearing officer in the case, said in filing the applications Di Bella’s conduct “fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.”
“It is one thing to imitate a rival’s advertising campaign, but it is quite another to seek to acquire registered rights in trademarks which feature the very tagline prominently used in that advertising,” said Kirov.
Leo Schirato, chief executive of Vittoria Food & Beverage, said in a statement the ruling “is a great win for companies who have spent time, money and resources in building their brands”.
But Di Bella hit back in a post on its company’s blog, saying Vittoria’s application to trademark the tagline “we know coffee” is still under examination.
“Di Bella has the right to lodge an appeal on the ruling and at this stage they are considering this option,” said the company.
Di Bella said it had been using the tagline “well before the trademark application was lodged”.
“It has never been Di Bella Coffee’s intention to give an impression that they were comparing themselves to Vittoria Coffee, or that their products are similar or of comparable quality,” said the company.
“The use of the phrases ‘Di Bella Coffee … we know coffee” and ‘From Crop to Cup … We know coffee” has always been intended to make a point that as a coffee brand, Di Bella Coffee is known for specialty coffee and for actively managing all parts of the coffee process (from crop to cup) to ensure the ultimate coffee experience.”
Finlaysons intellectual property, media and technology partner John MacPhail previously told SmartCompany companies have the right to object to a trademark bid if it is exactly the same as their trademark, or if it is not the same, it is so close to it that it would cause confusion.
SmartCompany contacted Vittoria Coffee and Di Bella Coffee but did not receive a response prior to publication.