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Monday, 24 August 2015

Star Wars? It's all Greek, but opposition succeeds in the end

Case T‑521/13 Alpinestars Research Srl v Office for Harmonisation in the Internal Market, Kean Tung Cho and Ling-Yuan Wang Yu, a General Court of the European Union (Third Chamber) decision going back to 7 July, is one of those decisions that has been sitting in this Kat's in-tray for far too long. But then, since the matter in question has taken so long to get as far as a judicial ruling, there didn't seem to be any urgent hurry to blog it.

Way back in July 2008, Kean Tung Cho and Ling-Yuan Wang Yu applied to register as a Community trade mark (CTM) the figurative sign depicted on the right, for 'backpacks, travelling bags, briefcases, handbags, shopping bags, wallets, walking sticks, umbrellas’ (Class 18) and ‘cyclists’ clothing, gloves [clothing], hats, sports shoes, ear muffs [clothing], socks’ (Class 25).

This appears to be how
Alpinestars uses its mark
In December of the same year Alpinestars opposed, citing its own earlier registration of a CTM for the word A-STARS, registered for ‘leather and imitation of leather and goods made of these materials and not included in other classes; animal skins, hides; trunks, suitcases, parasols, umbrellas, knapsacks, walking sticks, handbags, travelling bags, mountaineering bags, school bags, camping bags, wallets and purses’ (Class 18) and ‘clothing, footwear and headgear; anoraks, trousers, shirts, pullovers, skirts, sports footwear, boots for motorcyclists, slippers, trench coats, coats, socks, track suits, gloves, hats, caps, scarves, leisure-time footwear’ (Class 25).  Said Alpinestars, on account of the similarity of the respective marks and the identity of the goods for which they were registered or sought to be registered, there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) of the CTM Regulation 207/2009.

The Opposition Division rejected the opposition and Alpinestars appealed. In July 2013 the Fourth Board of Appeal dismissed Alpinestars’ appeal. In essence, the Board of Appeal agreed with the Opposition Division that the goods covered by the respective marks were identical. However, the respective signs were similar to only a low degree both visually and phonetically. What's more, in spite of the common origin of the two marks (the word ‘αστήρ’ in ancient Greek, meaning 'star'), it was unlikely that consumers would detect any conceptual similarity between them. Alpinestars then applied to the General Court to annul the Board of Appeal's decision.

The General Court held that the decision of the Board of Appeal would be annulled.

Seeing stars ...
Starting with a visual comparison, the court considered that the dominant element of the mark applied for -- ‘aster’ -- and the earlier mark A-STARS coincided in their first three letters and in their fifth letters, namely ‘a’, ‘s’, ‘t’ and ‘r’, which were even in the same positions. They differed only in the presence in the earlier mark of a hyphen linking the first letter to the rest of the sign, and the vowel ‘a’ and the consonant ‘s’ placed in fourth and sixth position respectively, whereas the mark applied for contained the vowel ‘e’ in fourth position. As the marks contained five and six letters respectively, they were similar in length. Although the marks weren't identical, the part which was common to them gave rise to a visual similarity between the word elements, particularly because the public generally pays more attention to the initial part of word marks. Accordingly, contrary to the finding of the Board of Appeal, the similarity between the signs at issue was not capable of being offset to a significant extent by the fact that the word element ‘aster’ in the mark applied for was written in black in a stylised font, was in bold, sloped slightly to the right and had a decorative element placed above it, whereas the earlier sign consisted only of the word element ‘a-stars’. Accordingly, the Board of Appeal erred in finding that there was a low degree of visual similarity.

In the days before Stormtroopers
The Board of Appeal got it wrong on phonetic comparison too. First, it was unlikely that consumers would repeat the vowel ‘a’ in the applicants’ mark in order to pronounce the sign as ‘a-aster’. That mark would be pronounced as two syllables and not three, contrary to what the Board of Appeal stated as an alternative in its decision. Further, regarding the pronunciation of A-STARS, the hyphen between the letter ‘a’ and the word ‘star’ must be taken into account with regard to the part of the relevant public which has some knowledge of English and English pronunciation since it would be pronounced as two elements which could easily be identified by that part of the relevant public. However it could not be be ruled out that, for the non-English-speaking part of the relevant public, the presence of the hyphen would have no effect, so that the earlier mark would be pronounced as two syllables which were difficult to perceive with the ‘a’ being pronounced in the same syllable as the initial letter ‘s’ of the element ‘stars’. The phonetic stress might be placed, both in respect of both marks, on either the first or second syllable depending on the language spoken by the consumer. Further, the vowels ‘e’ and ‘a’ in the second parts of the respective marks mad similar sounds which could hardly be perceived phonetically. Finally the mere fact that the signs differed as regards their last letters could not suffice to dominate their overall phonetic impression and to offset the phonetic similarity between them. Accordingly, the Board of Appeal erred in finding that there was only a low degree of phonetic similarity since the words were highly similar phonetically, at least for the non-English-speaking part of the relevant public.

Finally the court considered conceptual comparison. While A-STARS might be perceived either as a laudatory term which emphasises the quality of the goods or as a reference to a star or a famous person, it could not directly convey a clear meaning to the relevant public, particularly when taking account of the very remote link between the possible meanings of the word ‘stars’ and the goods in Classes 18 and 25 at issue. The Board of Appeal was therefore 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 was nothing in the case-file to support such a finding. As regards the element ‘aster’ in the mark applied for, it was unlikely that the relevant public would attribute to it the meaning of star owing to the link between the words meaning star in most of the languages of the European Union and the Greek word ‘aster’ or Latin word ‘astrum’, which had the same meaning. 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. Moreover, part of the relevant public would 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. It was unlikely that the Greek public in particular would make a link between the modern word ‘αστέρι’ (or ‘asteri’ in transliteration) and the word ‘ἀστήρ’ (or ‘astér’ in transliteration) and it followed that, given the various possible meanings of the elements ‘stars’ and ‘aster’ and the remote conceptual link between them, there was no conceptual similarity between the two signs.

As to the likelihood of confusion, the goods at issue were identical, there was an average degree of visual similarity between the signs at issue for the whole of the relevant public and a high degree of phonetic similarity between the signs at issue for at least the non-English-speaking public. Thus, even though there was no conceptual similarity, the conceptual dissimilarity between them could not suffice to counteract the average degree of visual similarity and the high degree of phonetic similarity which existed. There was accordingly a likelihood of confusion.

Says this Kat, the most notable things about this decision are the almost manic attention to detail paid by the Court in dissecting the respective marks and the inordinate time that seems to be required before a CTM opposition gets out of the Office for Harmonisation in the Internal Market and receives a judicial decision. As for the attention to detail, that is no crime -- but the closer the focus on the minutiae of the comparison of conflicting marks, the easier it is for people to forget that the decision as to whether marks are confusingly similar must be founded on an overall global impression of the respective marks.  As for the time spent getting a ruling, well maybe it's quite explicable -- if seven years on Earth equals one Interstellar hour.

Asteroid here
Asterix here
Astaire here
Astrud here

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