No likelihood of confusion between KING and LA KINGS, says CFI
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In NHL Enterprises BV v Office for Harmonization in the Internal Market (OHIM) (Case T-414/05, May 7 2009), the Court of First Instance (CFI) has held that the marks KING and LA KINGS were not confusingly similar.
NHL Enterprises BV (which is incorporated in the Netherlands) sought to register the figurative mark LA KINGS as a Community trademark for goods and services in Classes 16, 25 and 41 of the Nice Classification (including "clothing, footwear and headgear"). The mark consisted of a shield or coat of arms featuring two hockey sticks crossing over each other, a crown, a lion holding a hockey stick and a sun. The letters ‘LA’ appeared in a quadrilateral at the top of the shield, while the word ‘kings’ appeared at the bottom in another quadrilateral.
Manufacturas Antonio Gassol SA opposed the application on the basis of its earlier Spanish registration for the figurative trademark KING for goods in Class 25 (clothing). The KING mark was subsequently assigned to Glory & Pompea SA. The Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between the marks. NHL appealed. The Fourth Board of Appeal of OHIM dismissed the appeal, finding that the marks were confusingly similar. NHL appealed to the CFI, which disagreed with the reasoning of the board.
According to the CFI, while ‘LA’ could be understood as the Spanish feminine indefinite article, it could also be perceived as the abbreviation of the American city of Los Angeles. The CFI pointed out that the dominant element ‘king’ of the earlier mark and the word ‘kings’ in the mark applied for would be imperfectly remembered by consumers. The importance of the word element of both marks was not such as to render the other elements of the marks negligible. From a phonetic point of view, the CFI found that the element ‘LA’ in the mark applied for was less significant as the mark was likely to be shortened by the public from LA KINGS to KINGS.
In carrying out a global assessment of the marks, the CFI highlighted that while oral communication concerning the goods at issue and the marks was not excluded, the choice of clothing products is generally made on a visual basis before purchase. In light of the visual and conceptual differences between the marks, the CFI concluded that the relevant public would not be misled into thinking that the goods sold under the KING and LA KINGS marks originated from the same manufacturer.
The analysis of the CFI is interesting in two respects. First, the decision shows that the word element of a complex mark no longer systematically prevails over the figurative element. Second, the decision illustrates the approach of the EU courts to trademarks for the clothing sector. The CFI took into account the conditions in which the goods at issue were purchased by consumers and did not limit its analysis to a strict comparison of the marks from a visual, aural and conceptual point of view. The CFI may have reached a different conclusion if the case had involved other types of goods or services.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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