Extremely well-known marks less likely to be confused with other marks


In Kimark v Calvin Klein Trademark Trust (July 22 2014), the hearing officer has dismissed an opposition against the registration of the figurative trademark CALINKALIN.

On October 14 2009 Kimark, a Belgian retailer of maternity wear, applied to register the following figurative trademark in Classes 18, 24 and 25 of the Nice Classification:

On advertisement the application was opposed by Calvin Klein Trademark Trust on the basis of its prior registrations for the word mark CALVIN KLEIN and the CALVIN KLEIN logo, depicted below:

These marks were registered in numerous different classes (including the classes in which the applicant had applied). The opponent alleged that it had used these marks continuously since 1968.

The opponent provided evidence in support of only one of the five grounds of opposition it had initially raised (ie, that a likelihood of confusion existed and that the applicant’s mark should be refused registration under Section 10(2) of the Trademarks Act 1996). The matter was therefore decided on this ground only.

The hearing officer, acting on behalf of the controller, noted that, in order for an objection on this ground to be successful, four requirements needed to be met:

  1. there must be “an earlier trademark”;
  2. the goods of the application must be identical with, or similar to, those in respect of which the earlier trademark is protected;
  3. the mark applied for must be identical with, or similar to, that earlier trademark;
  4. there must be a resultant likelihood of confusion on behalf of the public.

The first two requirements were deemed to have been met, as the opponent’s marks predated the filing of the application and the goods were deemed to be identical. However, the hearing officer was of the view that, having completed a global assessment, the two marks were “far more dissimilar than they [were] similar”.

The hearing officer held that the visual similarity between the marks was “medium-high” when the applicant’s mark was compared to the opponent’s word mark and “medium-low” when compared to the opponent’s device mark. While both marks contained similar letters, the opponent’s mark consisted of two words and the applicant’s mark also contained overlapping, shaded circles. The opponent’s logo was also dominated by the initials 'C' and 'K' and would be pronounced 'CK'.

While the hearing officer acknowledged that the opening syllable of a word mark is generally the most important in terms of its visual and aural identity, it was held that the marks only had a medium degree of aural similarity.

Conceptually, it was held that the applicant’s mark had no meaning, while the opponent’s mark would be perceived by the average consumer to signify the name of the person who founded the brand or who designed the goods bearing the mark.

Turning to the fourth requirement, the hearing officer noted that “consumers of these goods typically purchase them in retail stores… on the basis of visual examination” which led him to “attach more importance to the visual comparisons between the marks than to the verbal comparison”.

While the opponent’s marks had a high degree of inherent distinctiveness and had also acquired substantial additional distinctiveness through use and promotion” on clothing and fashion items in general, the hearing officer was of the view that the differences between the marks should not “be overlooked or played down”. In his opinion, “where the respective marks are different, the decision maker cannot bestow a greater level of similarity than that which exists between the marks, on the basis that the earlier marks are highly distinctive”. He also noted that, while the average consumer might generally be taken to have an imperfect recollection of marks, this “does not hold true for extremely well-known marks such as the opponent’s in these proceedings”. Such marks were, in the hearing officer’s opinion, less likely to be confused with other marks because consumers “keep perfect pictures of extremely well-known marks in their minds, not imperfect pictures”.

Accordingly, no likelihood of confusion was held to arise and the opposition was dismissed.

Ciaran O’Neill, DFMG Solicitors, Dublin

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