Wednesday, 8 July 2015
The ancient Greek word 'αστήρ' (transliterated as aster) found itself in the centre of Community trade mark (CTM) opposition proceedings and the General Court's judgment in Case T‑521/13, Alpinestars Research Srl v OHIM / Kean Tung Cho and Ling-Yuan Wang Yu.
Alpinestars, owner of CTM Registration No. 6181002 for the word mark A-STARS, in connection with various goods in Classes 18, 25, opposed the registration as a CTM of the compound mark "A ASTER" (below right).
The mark opposed also designated various goods in Classes 18 and 25, which no one argued that are identical with the goods of the earlier CTM.
Both the Opposition Division and the Board of Appeal rejected the opposition, but the General Court took a different view. It held that the average consumer "may perceive the graphic element situated above the word ‘aster’ as an arrow or other decorative element and not as a capital letter ‘a’" and that the word element ‘aster’ is the dominant element "since it has characteristics which enable it to make an immediate impression on the relevant public and that the decorative element in the shape of an arrow, which is less distinctive than that word element, is, on account in particular of its size and its white colour which is less visible than that of that word element, negligible, with the result that it is the element ‘aster’ which the relevant public will remember". On the other hand, according to the General Court in spite of the link made between the initial letter ‘a’ and the element ‘stars’ by a hyphen, in the earlier A-STARS CTM, that sign "cannot be broken down visually into two elements", [so it became ASTARS]. Based on these key thoughts, the comparison shifted mainly to the ASTER and ASTARS word elements, paving the way to a finding of likelihood of confusion.
This Kat was also interested in the way the General Court addressed the possible conceptual similarity between the marks. The court held [rightly in this Kat's mind] that:
"... the Board of Appeal was in error as to the facts when it found that at least English-speaking consumers would not understand the element ‘stars’ in its primary meaning of stars, but in its secondary meaning of persons of brilliant reputation or talent. There is nothing in the case-file to support such a finding.
50 As regards, secondly, the element ‘aster’ ...The mere fact that in most of the languages of the European Union the word meaning ‘star’ derives from Greek or Latin does not enable average consumers, the very great majority of whom do not have any knowledge of Greek or Latin, to attribute the meaning of star to the mark at issue [Greek national pride, or what's left of it, obliges this Kat to strongly oppose this particular finding].
51 Moreover, part of the relevant public will attribute to the element ‘aster’ the meaning which that word has in, inter alia, Spanish, Estonian, Dutch, German, Polish and Swedish, in which ‘aster’ refers to a plant.
52 As regards, thirdly, the Greek public in particular, it is unlikely that that public will make a link between the modern word ‘αστέρι’ (or ‘asteri’ in transliteration) and the word ‘ἀστήρ’ (or ‘astér’ in transliteration), which comes from ancient Greek and means star, and will thus attribute the specific meaning of star to the element ‘aster’, [I beg to differ] since the spelling and pronunciation of those words are different."
Based on the above thoughts, the General Court overturned the Board of Appeal's decision and accepted the opposition. Aster, in its plant costume, decorates this post.