In G-Star Raw Denim kft v The Office of Harmonization for the Internal Market T-309/08, the General Court (formerly the Court of First Instance) held that Article 8(5) of the Community Trade Mark Regulation (40/94/EC) did not apply to prevent registration of the figurative mark G STOR, because the visual and conceptual differences between it and the earlier G-STAR marks prevented the establishment of any link between them.
In December 2004, ESGW Holdings Ltd, applied to register the following figurative Community trade mark (CTM) in Class 9 for "data processing equipment and computers":
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The clothing company G-Star Raw Denim kft opposed the application on the basis of its earlier registered word marks for G-STAR and also on the following figurative CTM in Classes 9 and 25:
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The Opposition Division of The Office of Harmonization for the Internal Market (OHIM) allowed the opposition on the basis of Article 8(5). On appeal, OHIM's First Board of Appeal overturned that decision and rejected the opposition, finding as regards Article 8(5), first that the visual and conceptual differences between the marks at issue prevented any assumption of a possible connection between them; and secondly, that G-Star Raw Denim had not submitted evidence to suggest that the use of the mark applied for would take unfair advantage of, or be detrimental to, the repute or the distinctive character of their earlier marks.
G-Star appealed to the General Court stating that the marks were at least aurally similar and that the Board of Appeal should have placed more importance on the G STOR element of the mark in question rather than solely regarding the figurative element.
The General Court noted that the conditions of Article 8(5) are cumulative so, if one of them is not satisfied, the provision is inapplicable as a whole.
Visually speaking, since the mark applied for was a figurative mark, the Court held that the relevant pubic would be drawn principally to the distinctive and original figurative elements of the mark, most notably the element at the beginning of the mark, which represented a Chinese dragon's head. Therefore, figurative element of the mark applied for ensured a different overall impression between the marks in question.
As regards the aural comparison, the Court agreed with the Board of Appeal that, as the marks had several letters in common, set out in the same order, they were indeed aurally similar.
As for the conceptual comparison, the Court took into account the word elements STAR of the earlier marks and STOR of the mark applied for. It concluded that the word STAR was widely understood in the Community, whereas the word STOR was most likely to be meaningless to the majority of the relevant public.
Since the Court had found that the marks at issue were neither identical nor similar, there was no need to examine 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 repute of G-Star's earlier marks.
G-Star's action was therefore dismissed and the figurative G STOR mark was allowed to proceed to registration.
The decision demonstrates clearly the importance the Court places on the overall impression of the marks in question. Here, the fact that the G STOR mark was heavily stylised was the main reason that the Court considered the marks to create different overall impressions and to be sufficiently different from each other visually, aurally and conceptually.