It sounds the same

Facton Limited (“Opposer”) is the owner of the G-STAR trademark in Class 25 for clothing. In Facton Limited v. Zhenjiang Wang, 12 January 2017 (IPC No. 14-2015-00003) the Opposer filed an Opposition to the registration of the E-STAR mark by Zhenjiang Wang (“Respondent-Applicant”) in Class 25 for clothing. The competing marks are provided below:

Screen Shot 2017-06-02 at 4.43.03 PM

The Adjudication Officer held that confusion is likely because of the close resemblance between the marks as the Respondent-Applicant adopted the dominant feature of Opposer’s G-STAR trademark. Thus, it is of no moment that the word STAR is preceded by a different letter, or that Respondent-Applicant’s mark is written in lower case letters while Opposer’s mark is written in upper case letters.

The Adjudication Officer also pointed out that competing marks sound similar. As held by the Supreme Court, similarity of sound is sufficient ground to rule that the competing marks are confusingly similar. Moreover, the Adjudication Officer ruled that:

Trademarks are designed not only for the consumption of the eyes, but also to appeal to the other senses, particularly, the faculty of hearing. Thus, when one talks about the Opposer’s trademark or conveys information thereon, what reverberates is the sound made in pronouncing it. When Respondent-Applicant’s mark is pronounced, the sound of Opposer’s G-STAR mark is practically replicated. Similarity of sound is sufficient ground to rule that two marks are confusingly similar when applied to merchandise of same descriptive properties.

Question: What is the dominant feature of Opposer’s G-STAR trademark?

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