No likelihood of confusion between star marks, says CFI

European Union
In Fitoussi v Office for Harmonization in the Internal Market (OHIM) (Case T-311/08, July 2 2009), the Court of First Instance (CFI) has held that there was no likelihood of confusion between two figurative marks including a five-pointed star for identical goods.

Bernadette Loriot, who resides in Spain, applied for the registration as a Community trademark of a sign consisting of a black five-pointed star, bordered by white lines and surrounded by a grey circle, with the words 'Ibiza Republic' placed horizontally across the front. The application covered goods in Class 25 of the Nice Classification, among other things.

Paul Fitoussi, a French national, opposed the application based on a French trademark registration which comprised a white five-pointed star encompassed by a black circle for goods in Class 25.

Fitoussi argued that there was a likelihood of confusion between the marks because:
  • the earlier mark consisted of a representation of a five-pointed star surrounded by a circle;
  • the earlier mark was an intrinsically strong mark and not a mark with little distinctive character; and
  • the graphic element of the mark applied for dominated the word element.
The Opposition Division of OHIM dismissed the opposition and the Board of Appeal affirmed. Fitoussi appealed to the CFI.

Since the earlier mark was registered in France, the CFI determined the likelihood of confusion from the point of view of the average, reasonably well-informed and circumspect French consumer.

With regard to the comparison of the marks, the CFI took the customary three-pronged approach and focused on the visual, phonetic and conceptual similarities between the marks. The CFI admitted that there was a low degree of similarity between the marks in that they both incorporated a five-pointed star surrounded by a circle. However, the CFI highlighted several differences between the marks, such as the fact that the mark applied for incorporated the words 'Ibiza Republic'. The size, legibility and positioning of the words seemed to be a defining factor in the decision because it reduced the contrast between the star and the circle. In particular, the CFI noted that the word element in the mark applied for was capitalized, easily readable, occupied a central position and covered about an eighth of the diameter of the circle.

In addition, the CFI noted that the colours used in the marks were different and that grey hatchings had been used in Loriot's mark to reduce the contrast with the background image. As a result, the CFI rejected Fitoussi’s third argument, finding that the star was not the dominant element of the mark applied for. The dominant element was the word element, 'Ibiza Republic'.

The CFI also considered the phonetic and conceptual similarities between the marks. This was a simple assessment since the earlier mark could not be pronounced and, therefore, the marks could not be said to be phonetically similar. Conceptually, the marks were also found to be different since the mark applied for evoked the idea of an imaginary republic by virtue of the word element. This gave the mark an additional and precise meaning, differentiating it from the earlier mark.

The CFI referred to existing case law which stated that despite a weak degree of similarity, there might still be a likelihood of confusion between the marks where the products and services covered are similar and the earlier mark is particularly distinctive. However, since Fitoussi had not provided any evidence that his mark had a particularly distinctive character and the word element clarified the origin of the goods bearing the later mark, the CFI decided that the earlier mark had only a weak distinctive character. The CFI thus rejected Fitoussi’s second argument.
On the basis that there was a complete absence of phonetic or conceptual similarity and only a faint visual similarity between the marks, the CFI held that the mark applied for was neither identical nor sufficiently similar to the earlier mark to breach Article 8(1)(b) of the Community Trademark Regulation (40/94).

Further, the fact that the earlier mark was not particularly distinctive (the CFI noted that national flags and hotels regularly used the symbol of a star) and the word element was the dominant element of the later mark meant that there could be no likelihood of confusion on the part of consumers, even if the products covered were in the same class. The appeal was thus rejected.

This decision serves as a useful reminder (and perhaps also a warning) to trademark owners in the European Union that the greatest protection is afforded to those with marks which are highly distinctive and, particularly, to those which incorporate a word element in addition to a logo.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London 

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