Calvin Klein fails to prevent registration of CK CREACIONES KENNYA
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In Calvin Klein Trademark Trust v Office for Harmonization in the Internal Market (OHIM) (Case T-185/07, May 7 2009), the Court of First Instance (CFI) has held that there was no likelihood of confusion between the trademarks CK and CK CREACIONES KENNYA.
Zafra Marroquineros SL filed an application for the registration of CK CREACIONES KENNYA as a Community trademark for goods in Classes 18 and 25 of the Nice Classification. Calvin Klein Trademark Trust opposed the application based on its earlier registered trademarks CK and CK CALVIN KLEIN for, among other things, goods in Classes 18 and 25. The Opposition Division and the Board of Appeal of OHIM dismissed the opposition on the grounds that there was no likelihood of confusion between the marks.
Calvin Klein appealed to the CFI, arguing that:
- the letters 'CK' constituted the distinctive and dominant element of the mark applied for; and
- its CK marks were well known.
The CFI first reiterated that the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case. The CFI found that the element 'creaciones kennya' was distinctive in respect of goods in Classes 18 and 25. In particular, the CFI concluded that the letters 'CK' occupied only an ancillary position in the mark applied for, even though they appeared at the beginning of the mark and, as submitted by Calvin Klein, consumers generally pay more attention to elements at the beginning of a mark. The CFI also held that the graphic elements of the CK marks conferred inherent distinctive character on them.
The CFI added that the element 'creaciones kennya' created a conceptual difference compared to the earlier marks. The letters 'CK' at the beginning of the mark applied for derived from the words 'creaciones kennya', while the letters 'CK' in the earlier marks directly referred to the famous fashion designer Calvin Klein.
Further, the CFI admitted that the CK marks were well known and reiterated that well-known marks enjoy a broader scope of protection. Nevertheless, it concluded that the overall impressions conveyed by the marks were different and dismissed the action.
The decision is surprising in light of previous case law on trademarks consisting of acronyms. For example, on June 30 2008 the Board of Appeal of OHIM held that the marks UBP and UBP UNION BANCAIRE PRIVÉE were similar. In addition, on October 18 2007 the CFI upheld an opposition against the registration of the mark AMS ADVANCED MEDICAL SERVICES on the grounds that there was a likelihood of confusion with the earlier mark AMS. In the present case, the CFI relied on the distinctive character of 'creaciones kennya', even though it might be argued that the word 'creaciones' (Spanish for 'creation') is descriptive in relation to goods in Classes 18 and 25.
The decision may have been different if the initials CK in the mark applied for had been associated with the name of an individual.
Séverine Fitoussi and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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