No likelihood of confusion between figurative mark K SPORT and earlier K2 SPORTS mark

In K2 Sports Europe GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-54/12), the General Court has upheld a decision of the Board of Appeal of OHIM that an application made by Kahru Sport Iberica to register a figurative Community trademark (CTM) consisting of the word 'sport' preceded by an element said to resemble a letter 'K' did not infringe K2 Sports Europe GmbH’s (KSE) prior registered word mark K2 SPORTS for goods in Classes 18, 25 and 28 of the Nice Classification.

In December 2008 Kahru filed to register a CTM in Classes 18, 25 and 28 - broadly, leather items, clothing and footwear and games, playthings and sporting articles - for a figurative mark consisting of a graphic element designed to look like the letter 'K' and the word 'sport':

In May 2009 KSE filed a notice of opposition against Kahru’s figurative mark. The opposition was based upon KSE’s earlier word mark registered in March 2008 for goods in the same classes. KSE also opposed Kahru’s mark based on an international word mark K2 SPORTS, which was registered in July 2008 and had effect in several EC countries. The international mark covered the same goods as those registered in Germany.

KSE opposed Kahru’s application on the grounds set out at Article 8(1)(b) of the Community Trademark Regulation (207/2009) and contended that there existed a likelihood of confusion between the two marks. The goods for which both marks were registered were identical and KSE submitted that the marks were confusingly similar.

KSE’s opposition was rejected by OHIM at first instance and the decision was appealed. The Board of Appeal upheld the decision, finding that there was no likelihood of confusion between the two marks as:

• they were dissimilar overall; and
• the only elements that were identical were the words 'sport/sports', which were descriptive “or at least highly allusive”.

The board also found that the letter 'K' in KSE’s mark and the figurative element in Kahru’s mark had no common characteristics. KSE appealed the board’s decision to the General Court.

Before the General Court, KSE contested that the board had misinterpreted how the figurative element of Kahru’s mark would be perceived by the public and that it had not correctly taken a global assessment of the signs when determining similarity.

The board considered that Kahru’s mark was made up of the word 'sport' and a “device of two dynamic curved brushstrokes bending toward each other in the middle without touching”. This was deemed to be the distinctive element of the mark. The presence of a common element 'sport' did not render the marks conceptually or phonetically similar, because of the weak distinctive character of the mark. Following the decision in MIP Metro v OHIM (Case T-485/10), the board considered that, where elements have a weak distinctive character, they are not regarded generally by the public as being dominant in the overall impression of the mark.

KSE contended that, whilst 'sport' is a basic English word, understood by the average consumer in the relevant territories, it is not entirely descriptive in all territories and for all the classes of goods. It will always be pronounced and perceived differently by each consumer and, therefore, such differences will contribute to the degree of similarity of the marks. The word 'sport' should not, therefore, have been disregarded as negligible in an assessment of the similarity of the goods.

The General Court upheld the board’s decision, however, as:

"…the word 'sport' evokes the idea of sportswear or clothing which is sporting in style and is therefore descriptive of those goods, [and there is a] sufficiently direct and specific link to them to enable the relevant public immediately to perceive […] a description of the relevant goods in question."

In addition, the General Court held that KSE was not correct to assert that identity of the words sport/sports adds to any similarity of the marks, because this would require a comparison of these words in isolation, and not the marks as a whole.

Aside from the word 'sport', the board found that the signs differed in all their characteristics, as the figurative element of the mark does not reproduce the typical elements of the letter 'K'. Since it was styled in a particular brushstroke fashion, the board upheld the OHIM decision at first instance that the element did not resemble a letter of the alphabet at all. Alternatively, where it did, it could easily have been interpreted as the letter 'X' or a letter 'H'.

The General Court found that, as the figurative element did not, prima facie, resemble a letter of the alphabet, it would not be pronounced. Accordingly, Kahru’s mark would be pronounced 'Sports' and KSE’s word mark would be pronounced either 'kei-tü sports' in English or 'ka-tsvai chports' in German. This difference in pronunciation meant that, whilst there was phonetic similarity between the two identical words ('sports'), phonetic similarity of the marks as a whole could not be established on this basis alone. In addition, the General Court found that, in making a global assessment of the signs as a whole, the term 'sport' is a word on its own and cannot be phonetically linked with the consonant, 'K'.

This case provides useful guidance to trademark proprietors looking to enforce trademarks that contain a figurative, stylised element intended to represent a letter of the alphabet, coupled with a less distinctive word. It may mean that greater thought will be given to choosing typefaces for trademarks that rely heavily on the addition of a stylised letter as the distinctive element of a figurative mark, so the figurative element remains easily distinguishable in its alphabetical context.

Hiroshi Sheraton, McDermott Will & Emery UK LLP, London