Aster Disaster: General Court Rules Likelihood of Confusion

The General Court recently overturned a Board of Appeal decision in Case T-521/13, to rule that there was, at least in a part of the relevant public, a likelihood of confusion between the earlier mark A-STARS and the later mark, ASTER.

Background

In July 2008, Mr Kean Tung Cho and Ms Ling-Yuan Yu filed a Community figurative trade mark application for ASTER in respect of Class 18: 'Backpacks, travelling bags, briefcases, handbags, shopping bags, wallets, walking sticks, umbrellas'; and Class 25: 'Cyclists'.

In December 2008, the trade mark application was opposed by Alpinestars Research Srl pursuant to Article 8(1)(b) on the basis of a likelihood of confusion between the latter and earlier mark resulting from the similarities between the two marks and the goods offered.

The earlier word mark, A-STAR, was registered on June 2008 in relation to classes, 9, 12, 14, 18, 25, and 28. Of particular importance in the opposition were the class of goods claimed in Class 18: 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'; and Class 25: 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'.

General Court Decision

In the first instance, in October 2009, in front of the Opposition Division and later at the Fourth Board of Appeal of OHIM on 15 July 2013, the opposition and appeal were respectively rejected. However, the General Court were willing to examine the case on the basis that the visual, phonetic, and conceptual aspects were relevant features of the case in terms of determining the likelihood of confusion.

In comparing the marks at issue, the General Court held that the Board of Appeal was mistaken in finding a low degree of similarity between the earlier and the latter marks, and indeed there existed an average degree of similarity between the two marks in question.

Equally, the General Court held that the Board of Appeal was mistaken in its decision that there existed no phonetic similarities between the marks in question as the difference in the last letters between the two signs did not significantly alter the pronunciation.

With regard to the conceptual feature, there could be no conceptual similarity between the meaning of the two words. Star, as is derived from the earlier mark, is understood to be a celestial body, or with reference to a famous person. In contrast, the element, Aster, as derived from the latter mark, would be attributed by a part of the relevant public that speak Spanish, Estonian, Dutch, German, Polish and Swedish, as meaning a plant.

On the basis that the goods in relation to the marks are identical, and there exists a degree of visual and phonetic similarity between the two marks, the lack of conceptual similarity was not sufficient to distinguish the two marks and as such, the General Court held that there existed a likelihood of confusion for a part of the relevant public.