OHIM decision annulled in dispute between STAR marks

European Union
In Wessang v Office for Harmonization in the Internal Market (OHIM) (Case T-492/08, May 11 2010), the General Court has annulled a decision of the Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks STAR FOODS and STAR SNACKS.
Greinwald GmbH applied to register the mark STAR FOODS (and design) as a Community trademark (CTM) in Classes 29, 30 and 32 of the Nice Classification. An individual, Nicolas Wessang, opposed the application based on:
  • the word mark STAR SNACKS, which is registered as a CTM for goods in Classes 29, 30 and 31; and
  • a figurative trademark including the term 'star snacks', which is registered as a CTM for the same classes.
The Opposition Division of OHIM upheld the opposition, but the Board of Appeal disagreed and dismissed the opposition. Wessang appealed to the General Court.

The only ground of appeal before the court was that the board had infringed Article 8(1)(b) of the Community Trademark Regulation (40/94) - namely, that the board had erred in assessing the similarity of the goods, the similarity of the marks and the existence of a likelihood of confusion.

First, the court recalled that, to assess the similarity of goods, it is necessary to take into account all the relevant factors, including:
  • the nature of the goods;
  • their use;
  • their distribution channels; and 
  • whether they are in competition with each other or complementary.
In the present case, it was undisputed that the goods in Classes 29 and 30 were identical or similar.

First, the court considered whether "mineral and sparkling water and other non-alcoholic beverages; fruit juices, syrup and other preparations for drinks, powder for drinks" covered by the STAR FOODS mark in Class 32 were similar to the goods in Class 29 ("milk beverages, milk predominating") and Class 30 (“tea, cocoa drinks, coffee-based drinks, chocolate-based drinks, herbal tea”) covered by the earlier mark. The court held that the products covered by the marks were of the same nature, had the same destination and used the same distribution channels, as they were all non-alcoholic drinks. Therefore, the goods could be considered to be in competition with each other and were held to be similar.
Second, the court compared "beers" in Class 32 with the goods in Classes 29 and 30. The court pointed out that beers are alcoholic drinks and are thus different from non-alcoholic drinks in Classes 29 and 30. The fact that beers are distributed through the same channel as the goods in Classes 29 and 30 was insufficient to conclude that they were similar.
Third, the court compared "beers" in Class 32 with "seed-based snacks" in Class 29 and "crackers" in Class 30, and found that they were not complementary. The court recalled that two products will be held to be complementary if one is indispensable or important for the use of the other and, consequently, consumers are led to believe that they originate from the same company. The fact that the goods at issue could be consumed together was insufficient to find that they were complementary. Therefore, the court concluded that they were not similar.
Turning to the comparison of the marks, the court started by examining the mark applied for, which consisted of the words 'star foods' in lower case on a black oval background (the word 'star' being written in white), together with four white stars under the word 'foods'. A line starting from the letter 'F' followed the inside border of the oval background, and there was a four-pointed white star at the edge of the oval.

From a visual point of view, the court held that the marks at issue both included two words, the first word ('star') being identical and the second being different. The court reiterated the general principle that consumers generally pay greater attention to the beginning of a mark. As a consequence, even if the mark applied for included graphical elements, and even if the second word of the marks was different, it could not be denied that there was a low degree of visual similarity between the marks.

From a phonetic point of view, the court pointed out that the first word of the marks was identical. According to established case law, the fact that the word 'star' appeared at the beginning of both marks was sufficient to find that there was a certain degree of phonetic similarity. In addition, the second words, 'foods' and 'snacks', were not sufficiently dissimilar to eliminate the similarity stemming from the common element 'star'.

Conceptually, the court found that there was a high level of similarity between the marks, since the word 'snack' is used in several European languages to designate a light meal. The court thus concluded that the marks as a whole were similar.
Finally, the court found that the board had erred in finding that, because the marks had a weak distinctive character, the differences between them were sufficient to neutralize the similarities. According to the court, such a solution placed an excessive importance on the distinctive character of the marks to the detriment of the assessment of similarity. Therefore, if an earlier mark had only a weak degree of distinctiveness, a likelihood of confusion would exist only if the earlier mark was reproduced in the later mark in its entirety. This would be contrary to the rule according to which the competent authorities must assess the marks as a whole. As a consequence, the board had erred in finding that there was no likelihood of confusion between STAR FOODS and STAR SNACKS.
The decision is interesting in that the court carried out a thorough analysis of the goods - and, in particular, of the complementary nature of the goods.
Richard Milchior, Granrut Avocats, Paris

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