April 2019. Jeans manufacturer G-Star has failed to halt the EU registration of the trademark GRSTA. Even though GRSTA consists of the same letters as the well-known G-STAR word mark, the EUIPO’s Opposition Division did not feel the two trademarks were sufficiently similar.
The case is reminiscent of the dispute between NOKIA and AIKON (a scrambled version of NOKIA, you could say). There, too, EUIPO threw out NOKIA’s claim, concluding that the two words weren’t similar enough.
In its ruling in the G-STAR case, the Opposition Division cited an old rule formulated by the European General Court: ‘Since the alphabet is made up of a limited number of letters … it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar’, the Court stated. Essentially, then, there must be additional points of similarity for two trademarks to be confusingly similar.
EUIPO mainly sees differences between G-STAR and GRSTA. Although G-STAR is a well-known trademark, consumers still wouldn’t confuse G-STAR with GRSTA, EUIPO concluded. Another factor supporting this was that the ‘STAR’ element in G-STAR had a specific meaning, and this element was absent in GRSTA, EUIPO said.
So if for whatever reason you want to register a scrambled version of a familiar trademark, make sure you go for ‘smart’ scrambling. For example, PB as a trademark for petrol just isn’t good enough, whereas Rekkof for aircraft might be OK.