In Case T-521/13, the General Court reviewed the following opposition

OHIM’s Opposition Division and Board of Appeal rejected the opposition on the following grounds.

The goods covered are identical and the signs are similar to a low degree both visually and phonetically. In spite of the common origin of the two marks (the word ‘αστήρ’ in ancient Greek), it is unlikely that consumers will detect a conceptual similarity between them. As regards the goods in Classes 18 and 25, the result of the visual comparison carries greater weight, given that those types of goods are normally chosen following a visual inspection. The inherent distinctiveness of the earlier mark is normal and the applicant did not explicitly claim that its mark had become particularly distinctive as a consequence of intensive use or of its reputation.

The General Court canceled the contested decision for the reasons which follow.

In the earlier mark, which is a word mark, in spite of the link made between the initial letter ‘a’ and the element ‘stars’ by a hyphen, the sign cannot be broken down visually into two elements.

It follows that the visual comparison entails an assessment of the similarities and differences between the word element ‘aster’ and the word mark A-STARS.

The dominant element of the mark applied for ‘aster’ and the earlier mark coincide in their first three letters and in their fifth letters, namely ‘a’, ‘s’, ‘t’ and ‘r’, which are in the same positions in the respective signs. They differ 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 contains the vowel ‘e’ in fourth position. As the marks contain five and six letters respectively, they may be regarded as being similar in length. Although those differences at the end of the earlier mark preclude the signs from being held to be identical, the fact none the less remains that the part which is common to the signs gives rise to a visual similarity between the word elements, particularly because the public generally pays more attention to the initial part of word marks

The BoA erred in finding that there was a low degree of visual similarity: the similarity between the signs at issue is not capable of being offset to a significant extent by the fact that the word element ‘aster’ in the mark applied for is written in black in a stylised font, is in bold, slopes slightly to the right and has a decorative element placed above it, whereas the earlier sign consists only of the word element ‘a-stars’.

The Court therefore took the view that there is an average degree of visual similarity between the signs at issue, in spite of the differences between them.

Moreover, the signs at issue are highly similar phonetically, at least for the non-English-speaking part of the relevant public. The mere fact that the signs differ as regards their last letters also cannot suffice to dominate the overall phonetic impression and to offset the phonetic similarity between the marks at issue, since the letter ‘s’ in the earlier mark is preceded by the letter ‘r’ — which is in the same place in both of the marks at issue — and it will remain silent for the part of the relevant public which speaks languages in which the letter ‘s’ at the end of words is silent, such as French.

Conceptually speaking, as regards the Greek public in particular [Please read this post by our dear colleague Nikos who 's the actual relevant public], 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’, since the spelling and pronunciation of those words are different.

Although the mark A-STARS may 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 is not, however, capable of directly conveying a clear meaning to the relevant public. That finding is reinforced, in the present case, by virtue of the very remote link between the possible meanings of the word ‘stars’ and the goods in Classes 18 and 25 at issue.

It follows that, contrary to the finding of the Board of Appeal, given the various possible meanings of the elements ‘stars’ and ‘aster’ and the remote conceptual link between them, there is no conceptual similarity between the signs at issue.

Although the marks at issue have been held to be conceptually different, it is also necessary, for conceptual differences between two signs to be capable of counteracting phonetic and visual similarities between the marks at issue, for at least one of those signs to have a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately

Consequently, it must be held that there is a likelihood of confusion in the present case, at least for part of the relevant public. Thus, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that there was no likelihood of confusion between the signs at issue.

Bravo to our colleague and friend Nikos who - amidst the turmoil in his country-doesn't give up on his blogger duties and penned an article about this case on IPKat blog -click here.