1 November 2009

G-Star can't stop G-Stor

The Board of Appeal of the European Trade Mark office recently ruled in favour of the computer hardware company ESGW Holdings Limited in trade mark opposition proceedings relating to their G-STOR logo trade mark application.

G-Star Raw Denim Kft (G-star), the proprietor of the well-known G-STAR word mark, instituted opposition proceedings against the registration of the G-STOR logo trade mark (filed in respect of computer hardware) on the basis of G-star's earlier registered trade mark rights in the G-STAR trade mark (registered in respect of clothing and sunglasses).

G-star argued that that there is a likelihood of confusion between these marks as a result of the close similarity of the marks in question. G-star argued further that, even though the relevant goods, clothing and computer hardware, were dissimilar, the use and registration of the G-STOR logo mark would likely take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier well-known G-STAR marks as a result of the repute of the marks in the European and the Benelux markets.

According to the Community Trade Mark Regulations and Directives, a trade mark shall be unregistrable, where it is identical or similar to an earlier trade mark registration, where the earlier trade mark has a reputation in the Member State concerned and where the use 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, despite the fact that the goods or services in respect of which it is sought to be registered are not similar to those for which the earlier trade mark is registered. The likelihood of confusion or deception between the marks is accordingly irrelevant. A similar provision is to be found in the South African Trade Marks Act and this decision is also important in a South African context.

The Board of Appeal held that, even though the likelihood of confusion was not a requirement for the present purposes, a possible association of the two trade marks, enhanced by the reputation of the earlier mark, may suffice for the distinctiveness or repute of the latter mark to be detrimentally affected.

According to the Board of Appeal the trade marks were however, from a visual, phonetical and conceptual point of view, not similar and there were in fact many differences, particularly from a visual perspective. It was accordingly improbable that the public would associate or link these marks with one another. The Board of Appeal also held that the goods covered by these registrations were completely different and that there would be no likelihood that the use of the G-STOR logo mark would dilute the G-STAR brand. The G-STOR logo mark could accordingly proceed to registration.

This matter highlights the difficulty that well-known brands may face in enforcing their rights against similar third party marks, used in respect of completely different goods or services.

Eben van Wyk, Director, and
Regardt Botes, Associate,
Intellectual Property

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