Kia Motors' mark rejected based on sole trader's business name registration

The Court of Patent Appeals has rejected Korean car manufacturer Kia Motors’ application for the registration of a trademark for its auto repair and maintenance services based on a sole trader’s business name registration with the Swedish Companies Registration Office (Case 11-132).

Kia Motors had applied for the registration of the combined word-and-device mark FAMILY-LIKE CARE KIA MOTORS SERVICE; the phrase 'family-like care' made up roughly half of the logo. The Swedish Patent and Registration Office rejected Kia Motors’ application on the grounds that there was a likelihood of confusion with a sole trader called Kia Service, registered with the Swedish Companies Registration Office. The sole trader (a 91-year-old individual) provides services relating to consulting and controlling assignments for the repair and maintenance of buildings, kitchen appliances, cars and engines.

The Patent and Registration Office found that there were similarities between the device mark and the sole trader's business name, especially with regard to the “maintenance and repair of vehicles” in Class 37 of the Nice Classification and the sole trader's business area. Even though the name 'Kia' in the device mark was smaller than the phrase 'family-like care' and placed on the right-hand side of the device, according to the Patent and Registration Office the phrase appeared to be an advertising slogan referring to the services provided under the sign Kia. The name Kia was thus found to be the dominant part of the device mark, even though it had a subordinate position. The Patent and Registration Office concluded that there was a likelihood of confusion that prevented the mark from being registered.

Kia Motors appealed to the Court of Patent Appeals, arguing that:

• there was no likelihood of confusion;
• its mark had acquired distinctiveness through use of earlier trademarks relating, among other things, to the sales of motor vehicles in Class 12; and
• these earlier marks were well known, thereby giving Kia Motors an earlier right to the name Kia for maintenance and repair services.

The Court of Patent Appeals upheld the Patent and Registration Office’s decision, simply stating that it agreed with the latter’s view that there was a likelihood of confusion between the mark and the name of the registered company. Without elaborating, it held that the fact that Kia Motors owned registered earlier marks that included the word 'Kia' or that these marks could have acquired distinctiveness did not lead to a different assessment.

The decision seems to be a step back compared to earlier practice, because:

• the court did not expand on the reasons for its decision; and
• a company name was given greater weigth on the outcome of a trademark application.

This appears to contradict the preparatory works of the new Swedish Trademark Act 2010 and recent case law concerning the level of protection of business names in relation to trademarks (see the Court of Appeals' decision in The Gripsholms Inn v The Swedish Red Cross and the Supreme Administrative Court's decision in Gucci v GG Sömnadsindustri).

Tom Kronhöffer and Sebastian Frintzer, von lode advokat ab, Stockholm