JallaXXXXXX: Coca-Cola accuses local soft drink maker of infringing SPRITE mark

Facts
NIPO opinion
Legal action

The Arabic word jalla, which means 'come on, hurry up', was introduced to the Norwegian language by soldiers who served with UN peacekeeping forces in the Middle East. In Norwegian, the word has come to mean 'gaudy' or 'outlandish', but it is also used to indicate that something is of low quality or below accepted or traditional standards. So how did this word become the subject of a trademark conflict between a local carbonated soft drink maker and international giant The Coca-Cola Company?

Facts

Norwegian company O Mathisen AS (OM) was founded in 2014. It first received attention for Tøyen-Cola! – an open-source cola soft drink which was based on a recipe that OM published and encouraged others to reuse. However, when OM expanded its selection to include the lemon-based soft drink Jallasprite in February 2018, Coca-Cola paid attention. That same month, OM received a letter from Coca-Cola accusing it of infringing Coca-Cola's SPRITE mark and demanding it to immediately cease its infringing use.

OM responded in March 2018, insisting that there was no infringement and that it would continue to use the name Jallasprite.

NIPO opinion

On 15 May 2018 Coca-Cola asked the Norwegian Industrial Property Office (NIPO) for an opinion on whether the name Jallasprite could be registered as a trademark. NIPO concluded that Jallasprite was confusingly similar to Sprite and thus could not be registered. Subsequently, Coca-Cola repeated its demand that OM discontinue all infringing use and offered OM three months to phase out existing products. Following this, Coca-Cola threatened legal action and repeated its offer of a three-month phasing out period.

Legal action

On 14 June 2018 OM filed an application to register JALLASPRITE as a trademark. The following day, Coca-Cola informed OM that it would commence legal action if it did not accept Coca-Cola's offer before 18 June 2018. On that date, OM repeated its position and stated that if it were to phase out the name Jallasprite, it would need longer than three months to do so because it had ordered new bottles bearing the name in May 2018. Thus, OM asked Coca-Cola to advise it as to whether a longer phasing out period would be acceptable.

Things quietened down during the summer months, but in September 2018 Coca-Cola sent a formal notice of litigation to OM, at which time local newspaper Vårt Oslo (Our Oslo) reported on the conflict. At this time, OM suggested changing its name to JallaXXXXXX. However, Coca-Cola promptly made clear to OM in an email of 28 September 2018 that it would not accept any alternative name which suggested that the word 'Sprite' had been censored. However, Coca-Cola advised that it would have no problem with names such as Jallasitron (Jallalemon) or Jallabrus (Jallasoda).

On 7 October 2018 Vårt Oslo reported that OM was planning to change the name Jallasprite to JallaXXXXXX and that Coca-Cola had not accepted this. Two days later, Coca-Cola filed for a preliminary injunction with the Oslo City Court, arguing that:

• the name Jallasprite contravened Section 4 of the Trademark Act and Section 25 of the Marketing Control Act; and
• the name JallaXXXXXX breached good business practices, with reference to Section 25 of the Marketing Control Act.

Coca-Cola has demanded that the court prohibit OM from selling, distributing or marketing carbonated soft drinks under the name Jallasprite or JallaXXXXXX. It has also demanded attorney's fees.

For further information on this topic please contact Tom Ekeberg at Zacco by telephone (+47 22 91 04 00) or email (tom.ekeberg@zacco.com). The Zacco website can be accessed at www.zacco.com.