Swedish designer successful against major US fashion brand

The Swedish Court of Patent Appeals has ruled that there was no likelihood of confusion between the trademarks DKNY and DONNA KARAN NEW YORK on the one hand, and the trademark BY KNY on the other (Case PBR 09-170).
Swedish designer KNJ registered the trademark BY KNY for photography, fashion design and catering. Gabrielle Studio Inc, the registered owner of the trademarks DKNY and DONNA KARAN NEW YORK, opposed. The trademarks DKNY and DONNA KARAN NEW YORK are registered for a wide range of services within the fashion industry.
Gabrielle Studio argued that its trademarks are well established in the clothing and design business and that the trademark BY KNY would be perceived as meaning 'by Karan New York'. Since the only difference between KNY and DKNY was the letter 'D', consumers could be misled into believing that there was a commercial connection between the marks. KNJ argued that DKNY is an abbreviation pronounced letter by letter, while 'Kny' should be pronounced as a word.

The Swedish Patent and Registration Office held that Gabrielle studio had not shown that its trademarks had become well established and publicly known in the clothing business on the Swedish market. According to the office, there was no risk of confusion since the trademarks were phonetically and visually dissimilar.
Gabrielle Studio appealed to the Court of Patent Appeals. The court agreed with the office and held that Gabrielle Studio’s trademarks were not sufficiently established on the Swedish market. Therefore, protection was limited to the trademarks as registered. The court further stated that it was irrelevant whether the word 'Kny' would be pronounced letter by letter or as a word. The overall impression of the mark BY KNY was sufficiently removed from that produced by Gabrielle Studio’s trademarks.
The outcome was different in a recent decision involving the Swedish fashion brand Odd Molly. According to the Court of Patent Appeals, the ODD MOLLY mark was not entitled to a broader scope of protection. However, registration of the trademark ODD NOOAH was refused - the court stated that potential consumers could believe that there was a commercial connection between the marks and be misled into thinking that Odd Nooah was the male clothing line of Odd Molly.
Tom Kronhöffer and Pia Järvengren, MAQS Law Firm, Stockholm

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