Despite losing this case at first instance and on appeal in Germany ten years earlier, G-star was frustrated enough with Topstreetwear's use of RAW BLUE to give it another shot. G-star is part of the G-star RAW-group and specialises in jeans, leisurewear and accessories. G-star is the proprietor of a number of Benelux and European word marks. TM25 is the proprietor of the G-star figurative marks (together referred to as ''G-star''). RAW BLUE is an American clothing brand and there are German and EU trade marks for RAW BLUE. In Dutch proceedings, G-star argued that Topstreetwear infringes and has been infringing its trade marks by using RAW alone or in combination with other words on clothing, shoes, hats and belts since Autumn 2015.
Topstreetwear uses RAW in three distinct ways.
Firstly, signs consisting of RAW and BLUE, in which RAW and BLUE are depicted next to each other or underneath each other in the same size. Secondly, signs consisting of the words RAW and BLUE, in which the word RAW is significantly bigger or in which the word BLUE is not (or hardly) visible. Thirdly, signs consisting of the word RAW in combination with the descriptive text:
- ONLY 1 (RAW), or
- ALL FOR ONE (RAW) SINCE DAY ONE.
Ten years earlier, the Oberlandesgericht Düsseldorf in a similar case between the same parties held that there was no likelihood of confusion between G-star's RAW signs and RAW BLUE even if the goods were identical. The German Court found RAW to be descriptive and its distinctive character to be below average.
Furthermore, the overall impression of the marks was different. According to the Court, the acquired distinctiveness could not be proven, the marks themselves were not considered sufficiently similar, and RAW and BLUE are equally as important in the overall impression of RAW BLUE.
Fast forward ten years and the Dutch Court at first instance rejected G-star's demands in part. The Court held that Topstreetwear had to cease using RAW on goods on which 'RAW' was placed more prominently than 'BLUE' and on goods that had the sign 'Only1RAW' on them. The court followed the German Appellate Court with respect to some goods holding that conflicting judgements regarding an EU trade mark would be problematic. On appeal, the Dutch Appellate Court said that the judgement of the German Appellate Court should give the Dutch Court some direction but that the Dutch Court in first instance should have assessed itself whether there was infringement.
The Dutch Appellate Court followed the Court at first instance that the signs on which 'RAW' is placed more prominently and the signs 'Only1Raw' and 'All for one (RAW) since day one' infringe.
The Appellate Court held that for signs where RAW and BLUE are placed next to or underneath each other in the same size, RAW and BLUE both contribute to the overall impression, contrary to what the German Court said.
Furthermore, RAW and RAW BLUE are visually, aurally and conceptually similar and are registered for the same goods. As to RAW's distinctive character, the Court held that RAW has been used significantly on a great scale. RAW has been used on its own and in combination with other signs since 1996 by G-star. Market research proved the relevant public recognizes RAW.
The ruling of the Oberlandesgericht considered the distinctive character of RAW in 2006. The Dutch Appellate Court stated that distinctive character is not a consistent factor but instead may vary over time. Finally, due to the similarity of the marks and the registration for the same goods, the Court held that there is a likelihood of confusion and thus that there is infringement. As to the figurative trade marks, the Court held that the word RAW and the logo both determine the overall impression of figurative marks and that the average consumer is more likely to remember the word element than the logo. This is more so in this case, as RAW in RAW BLUE is written in the same font as G-star's trade marks.
After ten years, G-star finally got its way. As a result of this judgment, Topstreetwear is required to cease the infringement and recall all infringing goods.
