„g-stor“ kein „g-star“
Eigener Leitsatz:
Bei der Beurteilung der Ähnlichkeit zweier Marken müssen zwar alle Aspekte beachtet werden, jedoch beeinflusst die Art der Wahrnehmung durch die Öffentlichkeit die Gewichtung dieser Aspekte.
Die Streitmarken bestechen durch ein stark unterschiedliches visuelles Design, und werden von ihrem jeweiligen Kundenkreis eher über dieses wahrgenommen. Die Gewichtung der klanglichen Ähnlichkeit wird dadurch ausreichend reduziert; eine Verwechslungsgefahr ist nicht gegeben.
Urteil des Gerichtshofes der Europäischen Union
vom 21.01.2010
Az.: T-309/08
JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
21 January 2010 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark G Stor – Earlier national and Community word and figurative marks G-STAR and G-STAR RAW DENIM – Relative ground for refusal – Absence of similarity between the marks – Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EC) No 207/2009))
In Case T-309/08,
G-Star Raw Denim kft, established in , represented by , lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by and , acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
ESGW Holdings Ltd, established in Road Town, British Virgin Islands (United Kingdom),
ACTION brought against the decision of the First Board of Appeal of OHIM of 14 April 2008 (R 1232/2007-1), relating to opposition proceedings between G-Star Raw Denim kft and ESGW Holdings Ltd,
THE GENERAL COURT (Fifth Chamber),
composed of M. Vilaras, President, M. Prek (Rapporteur) and V.M. Ciucă, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 4 August 2008,
having regard to the response lodged at the Registry of the Court on 5 December 2008,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
On 15 December 2004, ESGW Holdings Ltd filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
Registration as a mark was sought for the following figurative sign:
g-stor
The goods in respect of which registration was sought are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Data processing equipment and computers’.
The trade mark application was published in Community Trade Marks Bulletin No 29/2005 of 18 July 2005.
On 17 October 2005, the applicant, G-Star Raw Denim kft, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods listed in paragraph 3 above.
The opposition was inter alia based on the following earlier trade marks:
– the word mark G-STAR, registered, first, in the Benelux countries (No 545551) for ‘clothing; footwear; headgear’ in Class 25 and, secondly, as a Community trade mark on 5 January 2006 (No 3444262) inter alia for ‘spectacles; sunglasses, sunglass products, namely, head straps, sunglass retainers, eyeglass cases, and sunglasses cases’ in Class 9 and ‘clothing including sportswear sport and swimwear; footwear including sports shoes; headgear; leather belts for clothing’ in Class 25;
– the following figurative mark, which was registered as a Community trade mark on 18 October 2005 (No 3445401) inter alia for ‘spectacles; sunglasses, sunglass products, namely, head straps, sunglass retainers, eyeglass cases, and sunglasses cases’ in Class 9 and ‘clothing including sportswear sport and swim wear; footwear including sports shoes; headgear; leather belts for clothing’ in Class 25:
g-star
– the word mark G-STAR RAW DENIM, which was registered as a Community trade mark on 18 October 2005 (No 3444171) inter alia for the goods in Class 9 listed above and for ‘office functions relating to drawing up and concluding franchise agreements provided within the framework of business operation of shop chains, in particular selling horological instruments’ in Class 35.
The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 40/94 (now Article 8(1)(b), (4) and (5) of Regulation No 207/2009).
On 19 June 2007, the Opposition Division allowed the opposition on the basis of Article 8(5) of Regulation No 40/94.
On 2 August 2007, ESGW filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
By decision of 14 April 2008 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal and rejected the opposition, on the ground that the conditions for the application of Article 8(1)(b), (4) and (5) of Regulation No 40/94 were not satisfied. As regards Article 8(5) of Regulation No 40/94, it found, first, that the visual and conceptual differences between the marks at issue prevented any assumption of a possible connection between them and, secondly, that the applicant had not submitted evidence to suggest that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the repute or the distinctive character of the earlier trade marks.
Forms of order sought
The applicant claims that the Court should:
– annul the contested decision;
– reject the registration of the trade mark applied for in its entirety;
– order OHIM to pay the costs.
OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
Arguments of the parties
In support of its claims, the applicant relies on a single plea in law alleging infringement of Article 8(5) of Regulation No 40/94. It maintains that the Board of Appeal erred in finding that Article 8(5) of Regulation No 40/94 was not applicable even though the conditions for the application of that provision are satisfied.
First, the applicant submits that its marks enjoy an extensive reputation and a highly distinctive character with average consumers and that it is therefore particularly likely that a link will be established between them and similar trade marks, even though they cover very different goods.
Secondly, the applicant submits that the marks at issue are sufficiently similar for relevant consumers to establish a link between them.
First, the applicant states that, visually, the Board of Appeal should have attributed more importance to the word elements of the marks at issue. It submits that the word element ‘g stor’ is the dominant element of the mark applied for or is, at the very least, as distinctive as the figurative element. It relies, in that regard, on the judgment of the Court of Justice in Case C-120/04 Medion [2005] ECR I-8551, in which the applicant states it was held that if a widely-known trade mark is included in a more recent composite sign, it is more likely that the element which is similar to the widely-known trademark will play the dominant role in the global assessment. Furthermore, it submits, first, that the letter ‘g’ in the mark applied for must be taken into account in so far as it is easily visible even to average consumers and, secondly, that the difference between the vowel ‘o’ in the mark applied for and the vowel ‘a’ in the earlier marks is negligible. Owing to the fact that the earlier marks are so widely known, consumers do not dwell on the slight differences which may exist between the marks at issue.
Secondly, the applicant submits that the marks at issue must be perceived as aurally identical. First, in some parts of the European Union the vowels ‘a’ and ‘o’ are pronounced in the same way and, secondly, the other word elements of the marks at issue are identical. The applicant admits that the visual aspects of trade marks in the fashion sector are very important, but maintains that that does not mean that visual differences always outweigh aural similarities as the latter also play an important role in that sector.
Furthermore, the applicant maintains that the conceptual difference observed by the Board of Appeal between the elements ‘star’ and ‘stor’ is irrelevant in assessing whether the marks at issue are similar in so far as the marks should be assessed globally. As a whole, the marks at issue have no meaning. However, the applicant submits that should a certain conceptual difference between the marks at issue be considered to exist, that conceptual difference cannot counteract the aural and visual similarities between them.
Lastly, the applicant states that Article 8(5) of Regulation No 40/94 does not impose the condition that the goods covered by the marks at issue must be similar. However, it maintains that the nature of the goods must be taken into account in establishing the link which is necessary for the application of that article. Thus, where there is an overlap between the publics concerned by the goods covered by the marks at issue, the risk of consumers establishing a link between those marks is great. The Board of Appeal itself stated that it was aware of the type of cooperation which exists between mobile phone manufacturers and fashion companies and that such cooperation could occur in relation to the marketing of the goods designated by the mark applied for.
Thirdly, the applicant submits that the Board of Appeal incorrectly found that it had not set out prima facie evidence that the use of the Community trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks. As a result of the reputation of the earlier marks, the similarity between the marks at issue and the cooperation which may exist between manufacturers of well-known brands and the manufacturers of the goods designated by the mark applied for, some of the qualities of the goods covered by the earlier marks and the attractiveness of those marks could be transferred to the goods covered by the mark applied for. The mark applied for would take advantage in particular of the image and message of trendiness, fashion, style and toughness conveyed by the earlier marks and the advertising effort made in respect of those marks. That situation would lead to the dilution of the distinctive character of the earlier marks.
OHIM disputes the applicant’s arguments.
Findings of the Court
Under Article 8(5) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
For an earlier mark to be afforded the broader protection under Article 8(5) of Regulation No 40/94, a number of conditions must therefore be satisfied. First, the earlier mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the Community, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T-215/03 Sigla v OHIM – Elleni Holdings (VIPS) [2007] ECR II-711, paragraphs 34 and 35; Case T-150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II-2353, paragraphs 54 and 55; and judgment of 30 January 2008 in Case T-128/06 Japan Tobacco v OHIM – Torrefacção Camelo (CAMELO), not published in the ECR, paragraph 45).
The legality of the contested decision must be assessed in the light of the above considerations.
Regarding the relevant public, the Board of Appeal found, in paragraph 15 of the contested decision, that, as regards the goods applied for in Classes 9 and 25, this was composed of the public at large in the Member States and Benelux, which is reasonably well informed and reasonably observant and circumspect. It stated that the attention of the public might be greater in so far as, first, data processing equipment and computers might be expensive goods and, secondly, the value of clothing, footwear, headgear, spectacles and other related items is often related, in the eyes of the consumer, to the brand. By contrast, it found, in paragraph 16 of the contested decision, that the different office functions in Class 35 were addressed to business professionals who accord them a high degree of attention in so far as those services can affect the functioning, performance and market success of the undertaking in need of such services. As regards the nature of the goods and services concerned, the Board of Appeal’s analysis must be approved of and is not, moreover, disputed by the applicant.
It is not disputed before the Court that the earlier marks have acquired a reputation within the Community with regard to the goods and services which they designate. Therefore, as the conditions for the application of Article 8(5) of Regulation No 40/94 are cumulative, it must be ascertained whether the marks at issue are identical or similar to the extent that a link may be established between them and, if necessary, whether the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
As regards the condition relating to whether the marks at issue are identical or similar, it must be pointed out that, according to the case-law, the harm referred to in Article 8(5) of Regulation No 40/94 is the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them, even though it does not confuse them. The existence of such a link must, like the likelihood of confusion within the meaning of Article 8(1)(b) of the Directive, be assessed globally, taking into account all factors relevant to the circumstances of the case (VIPS, paragraph 23 above, paragraph 47; see also, by analogy, Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraphs 29 and 30). Therefore, that global assessment must, with respect to the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components (judgment of 16 May 2007 in Case T-137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the ECR, paragraph 35, and Case T-181/05 Citigroup and Citibank v OHIM – Citi (CITI) [2008] ECR II-669, paragraph 65).
First, as regards the visual comparison between the earlier word marks G-STAR and the mark applied for, the fact cannot be ignored that they have certain letters in common. However, the relevant public, which displays at the very least an average level of attention, will principally be attracted by the figurative elements of the mark applied for, which are presented in a distinctive and original manner. The figurative element placed at the beginning of the mark applied for, which is absent from the earlier marks, plays a particularly important role in the assessment of the visual similarity between the trade marks, given, first, its position and size and, second, the fact that it represents a Chinese dragon’s head. The significant difference relating to the presence of that figurative element and to the black rectangle which is present only in the trade mark applied for has the effect of conferring on the marks at issue a different overall visual impression despite the presence of certain letters in common.
That assessment is particularly justified as regards the comparison between the mark applied for and the other earlier marks. First, as regards the earlier figurative mark, the font and colours used differ significantly from the manuscript style and white-coloured letters used for the mark applied for. Furthermore, the word element of the earlier figurative mark is surrounded by an oval shape which has the appearance of the letter ‘g’ written in capital letters. Secondly, the earlier word mark G-STAR RAW DENIM consists of two additional word elements, ‘raw’ and ‘denim’, which make it appear much longer than the mark applied for.
Secondly, as regards the aural comparison of the marks at issue, the Board of Appeal correctly found that the figurative element at the beginning of the mark applied for represented the letter ‘g’ for a substantial number of consumers. Therefore, inasmuch as the marks at issue have letters in common, which are set out in the same order and according to a similar structure, the Board of Appeal was entitled to take the view, in paragraph 29 of the contested decision, that there was a rather close similarity between the marks at issue.
Thirdly, as regards the conceptual comparison of the marks at issue, the Board of Appeal was right to find, in paragraph 30 of the contested decision, that it was necessary to take into account the word element ‘star’ of the earlier marks and the word element ‘stor’ of the mark applied for. The letter ‘g’, which is common to both marks, does not have a particular meaning. Furthermore, the figurative elements of the trade mark applied for do not allude either to the word elements of the marks at issue or to the goods and services covered by them.
The element ‘star’, which is present in the earlier marks, is a word which is part of basic English vocabulary, the meaning of which is widely understood throughout the Community. Thus the earlier marks will be perceived as a reference to a star or a famous person. As regards the element ‘stor’, which is present in the mark applied for, it is possible to take the view that a part of the relevant public will attribute to it the sense of the Danish and Swedish word ‘stor’, meaning ‘big, large’ or regard it as a reference to the English word ‘store’ meaning ‘shop, storage’. It is however more likely that the majority of the relevant public will not attribute any particular meaning to that element.
It necessarily follows that the relevant public will perceive the marks at issue as being conceptually different inasmuch as the earlier marks have a clear meaning throughout the Community, while the mark applied for has either a different meaning for part of the relevant public or has no meaning.
According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract the visual and aural similarities between them (Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643, paragraph 20; Case T-292/01 Philips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 54; and Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 56). In the present case, as was pointed out in the preceding paragraph, the word element ‘star’ has, for the relevant public, a clear and specific semantic content, which the public is likely to grasp immediately. It follows that the conceptual differences between the signs at issue, which were pointed out in paragraphs 32 and 33 above, are, in the present case, of a kind that will counteract their aural similarity.
Furthermore, the impact of the conceptual differences in terms of counteracting the aural similarity is reinforced by the fact that there are also significant visual differences between the marks at issue. In that context, it must be pointed out that the degree of aural similarity of two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public generally perceives visually the mark designating those goods (BASS, paragraph 34 above, paragraph 55, and Case T-301/03 Canali Ireland v OHIM – Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II-2479, paragraph 55). Clearly, that is the case in respect of the goods covered by the mark applied for and by the earlier marks.
In view of all of the above, the Board of Appeal was right to find, in paragraph 31 of the contested decision, that the visual and conceptual differences between the marks prevented any assumption of a possible link between them and, therefore, that the second condition for the application of Article 8(5) of Regulation No 40/94 was not satisfied.
That finding is not invalidated by the applicant’s argument concerning the judgment in Medion, paragraph 16 above. That judgment relates to the particular case of an earlier mark used in a composite sign which still had an independent distinctive role in that sign, without necessarily constituting the dominant element (Medion, paragraph 16 above, paragraph 30). It suffices to point out that, in this case, the mark applied for does not include any sign identical to the earlier mark.
In so far as the marks at issue are neither identical nor similar, one of the cumulative conditions for the application of Article 8(5) of Regulation No 40/94 is not satisfied. Therefore, there is no need to assess whether the use without due cause of the trade mark applied for could take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks.
Accordingly, the action must be dismissed as unfounded without there being any need to examine the admissibility of the second head of claim.
Costs
Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
As the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders G-Star Raw Denim kft to pay the costs.
Delivered in open court in Luxembourg on 21 January 2010.
