Although Calvin Klein, U.S. Plaintiff, challenged
European registration of later trademark by Spanish company that manufactures
same varieties of leather goods as Plaintiff’s, European Court of Justice
upholds adverse ruling by trial court and holds that Spanish Defendant’s
proposed new mark is so distinctively different that average EC consumer would
be unlikely to confuse it with Plaintiff’s well‑established mark
In its appeal, Calvin Klein Trademark Trust (Plaintiff),
incorporated in Wilmington, Delaware, USA, seeks to persuade the European Court
of Justice (ECJ) to set aside the judgment of the General Court (GC) [formerly
the Court of First Instance of the European Communities (EC)] dated May 7,
2009. The GC had dismissed Plaintiff’s action to overturn the decision of the
Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(OHIM). By that decision, the OHIM Board of Appeal had rejected Plaintiff’s
opposition to the application lodged by Zafra Marroquineros SL of Spain
(Defendant) to register Defendant’s word mark: “CK CREACIONES KENNYA” as a
valid EC trade mark.
(N.B. Council Trade Mark Regulation (EC) No 207/2009 of
February 26 2009 (OJ 2009 L 78, p. 0001), in force as of April 13, 2009 has
repealed Council Trademark Regulation (EC) No 40/94 of December 20, 1993. At
the time of the activities involved here, however, Regulation 40/94 was still
in effect and hence governs the present case.)
Article 8(1)(b) of Regulation No 40/94 provided as follows:
“Upon opposition by the proprietor of an earlier trade mark, the trade mark
applied for shall not be registered: ¼ (b) if, because of its
identity with, or similarity to the earlier trade mark and the identity or
similarity of the goods or services covered by the trade marks, there exists a
likelihood of confusion on the part of the public in the territory in which the
earlier trade mark is protected; ¼ the likelihood of confusion includes the likelihood of
association with the earlier trade mark.”
Article 8(5) of Regulation No 40/94 provided that “upon
opposition by the proprietor of an earlier trade mark within the meaning of
paragraph 2, the trade mark applied for shall not be registered where it is
identical with, or similar to, the earlier trade mark and is to be registered
for goods or services which are not similar to those for which the earlier
trade mark is registered, where in the case of an earlier Community trade mark
the trade mark has a reputation in the Community and, in the case of an earlier
national trade mark, the trade mark has a reputation in the Member State
concerned and where the use without due cause of the trade mark applied for
would take unfair advantage of, or be detrimental to, the distinctive character
or the repute of the earlier trade mark.”
Article 51(1)(b) of Regulation No 40/94 further provided as
follows: “A Community trade mark shall be declared invalid on application to
the Office or on the basis of a counterclaim in infringement proceedings, ¼ (b)
where the applicant was acting in bad faith when he filed the application for
the trade mark.” On October 7, 2003, the Defendant applied to the OHIM to
register the word sign “CK CREACIONES KENNYA” as a valid EC trade mark.
The Defendants belong to Classes 18 and 25 of the Nice
Agreement concerning the International Classification of Goods and Services for
the Purposes of the Registration of Marks of June 15, 1957, as revised and
amended. Class 18 includes leather and imitations of leather, and goods made of
these materials and not included in other classes; animal skins; trunks and
travelling bags; umbrellas, parasols and walking sticks; whips, harness and
saddler. Moreover, Class 25 includes “clothing, footwear, headgear”.
On September 6, 2004, the Plaintiff filed its opposition to
Defendant’s registration of the mark. Plaintiff’s opposition rested on all the
goods and services covered by its earlier marks and opposed all the goods
covered by Defendant’s trade mark application. On December 22, 2005, the OHIM
rejected the opposition in its entirety. It found that there was no likelihood
of confusion between the marks at issue for the relevant consumers. On March
29, 2007, the Second Board of Appeal dismissed the Plaintiff’s internal appeal.
By application lodged at the Registry of the General Court
(GC) on May 29. 2007, Plaintiff, Calvin Klein, sued to annul the contested
decision and for an order that OHIM should refuse to register Defendant’s
proposed trade mark. Plaintiff relied on a single plea, alleging infringement
of Article 8(1) and (5) of Regulation No 40/94. The GC dismissed the action by
finding that the lack of similarity between the signs at issue stems from the
visual, phonetic and conceptual differences between the signs.
As to the likelihood of confusion, the GC considered that it
was inappropriate to conclude that there was a likelihood of confusion in the
absence of any similarity between the marks at issue. The fact that the goods covered
by the conflicting marks are identical does not alter that assessment.
Moreover, although marks with a highly distinctive character on account of
their reputation do enjoy broader protection, the recognition here of the
reputation of the earlier marks cannot call into question the finding that the
marks at issue create overall impressions which are too distinctive for it to
be found that there is a likelihood of confusion.
Plaintiff Klein duly appealed to the ECJ which assigned its
case to the First Chamber. The Plaintiff relies on two grounds; it contends
that there was an infringement not only [1] of Article 8(1) of Regulation No
40/94 but also, [2] of Article 8(5) of that Regulation. The ECJ, however,
disagrees and upholds the [GC’s] ruling. The following are edited excerpts from
the ECJ’s opinion.
Para. 43. “As regards the first part of the first ground of
appeal, Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition
by the proprietor of an earlier trade mark, the mark applied for is not to be
registered if, because of its identity with. or similarity to, the earlier
trade mark and the identity or similarity of the goods or services covered by
the trade marks, there exists a likelihood of confusion on the part of the
public in the territory in which the earlier trade mark is protected. According
to that provision, such a likelihood of confusion includes the likelihood of
association with the earlier trade mark.”
44. “According to the settled case‑law of the Court, the
existence of a likelihood of confusion on the part of the public must be
appreciated globally, taking into account all factors relevant to the
circumstances of the case [Cites].”
45. “It is also apparent from settled case‑law that the
global assessment of the likelihood of confusion, in relation to the visual,
aural or conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind, in particular, their
distinctive and dominant components. The perception of the marks by the average
consumer of the goods or services in question plays a decisive role in the
global appreciation of that likelihood of confusion. The average consumer
normally perceives a mark as a whole and does not proceed to analyze its various
details. [Cites].”
46. “¼ [T]he similarity of the marks at issue must be assessed
from the point of view of the average consumer by referring to the intrinsic
qualities of the marks and not to circumstances relating to the conduct of the
person applying for a Community trade mark.”
47. “It must therefore be held that, contrary to the
[Plaintiff’s] submissions in the first part of its first ground of appeal, the
[GC’s] analysis is not vitiated by an error of law due to the fact that it
failed to take account of alleged wrongful conduct on the part of the trade
mark applicant. While such conduct is a particularly significant factor in
proceedings brought under Article 51(1)(b) of Regulation No 40/94 ‑‑ which is
not at issue in the present appeal ‑‑ it is not, on the other hand, a factor
that must be taken into account in opposition proceedings brought under Article
8 of that regulation. 48. It follows that the first part of the first ground of
appeal must be dismissed as unfounded.”
49. “As regards the second part of that ground of appeal,
alleging distortion of the facts, it should be noted at the outset that, under
Article 225(1) EC and the first subparagraph of Article 58 of the Statute of
the Court of Justice, an appeal lies on a point of law only. The [GC] [is a
trial court of general jurisdiction and thus] has exclusive jurisdiction to
find and appraise the relevant facts and to assess the evidence. The appraisal
of those facts and the assessment of that evidence thus does not ‑‑ save where
they distort the evidence ‑‑ constitute a point of law which is subject, as
such, to review by the Court of Justice on appeal. [Cites].”
50. “The assessment of the similarities between the signs at
issue is of a factual nature and, save where the evidence and facts are
distorted, is not subject to review by the Court of Justice. Such distortion
must be obvious from the documents on the Court’s file, without there being any
need to carry out a new assessment of the facts and the evidence. [Cites].”
51, 52. “The [Plaintiff] has failed to produce any evidence
which would make it possible to consider that the [GC] distorted the facts by
finding, ¼that
the lack of any similarity between the signs at issue stems from the visual,
phonetic and conceptual differences between the signs. The [Plaintiff’s]
argument that the distortion derives from the fact that the GC failed to take
account of [Defendant’s] conduct must be disregarded since, ¼,
that court was not required to take such conduct into account when carrying out
its assessment. Accordingly, the second part of the first ground of appeal must
be rejected as unfounded.”
53. “As regards the third part of the first ground of
appeal, it should be noted, first, that, where there is no similarity between
the earlier mark and the mark applied for, the reputation of, or the well‑known
nature attaching to, the earlier mark and the fact that the goods or services
concerned are identical or similar are not sufficient for it to be found that
there is a likelihood of confusion between the marks at issue. [Cites].”
54. “In the judgment under appeal, the [GC] found that there
was no similarity between the marks at issue. It stated, ¼ that
the visual, phonetic and conceptual examination of the marks shows that the
overall impression created by the [Plaintiff’s] earlier marks is dominated by
the element ‘ck’ whereas that created by the trade mark applied for is
dominated by the element ‘creaciones kennya’, concluding that the lack of
similarity between the signs at issue thus stems from their visual, phonetic
and conceptual differences.”
55. “In order to reach that conclusion, the [GC] carried
out, ¼
an analysis forming part of the process the purpose of which is to determine
the overall impression created by the marks at issue and to carry out a global
assessment of the similarity of the marks. Thus, ¼ it conducted a detailed
analysis of the mark applied for, taken as a whole, taking into account in
particular how the average consumer perceives the mark. That analysis was
followed, ¼
by an examination of the visual, phonetic and conceptual similarity of the
marks at issue.”
56. “¼ [T]he existence of a similarity between two marks does
not presuppose that their common component forms the dominant element within
the overall impression created by the mark applied for. According to
established case‑law, in order to assess the similarity of two marks, it is
necessary to consider each of the marks as a whole, although that does not rule
out the possibility that the overall impression created in the mind of the
relevant public by a complex trade mark may, in certain circumstances, be
dominated by one or more of its components. It is only if all the other
components of the mark are negligible, however, that the assessment of the similarity
can be carried out solely on the basis of the dominant element.” [Cites]. In
that connection, it is sufficient for the common component not to be
negligible.”
57. “[I]t is clear, however, that the [GC] found, first,
that the overall impression created by the mark applied for is dominated by the
element ‘creaciones kennya’, on which the consumer concerned will to a very
great extent focus his attention and, second, ,,, that the element ‘ck’
occupies only an ancillary position in relation to that element, which, in
essence, amounts to a conclusion that the element ‘ck’ in the mark applied for
is negligible.”
58. “Thus, having ruled out, on the basis of a properly
conducted analysis, any similarity between the marks at issue, the [GC]
correctly concluded, ¼ that, notwithstanding the reputation of the earlier
marks and the fact that the goods covered by the marks at issue are identical,
there is no likelihood of confusion between the marks.”
59, 60. “The third part of the first ground of appeal must therefore
be declared unfounded. In those circumstance, the first ground of appeal must
be rejected.”
61. “By its second ground of appeal, the [Plaintiff]
criticises the G C for failing to have regard to Article 8(5) of Regulation No
40/94 by failing to examine the reputation of the earlier marks in the context
of that provision.”
62. “The [GC] did err by stating, ¼ that the [Plaintiff]
relie[d] on a single plea in law, alleging infringement of Article 8(1)(b) of
Regulation No 40/94, whereas the application was also expressly based on
infringement of Article 8(5) of that Regulation.”
63. “By stating that, since the marks at issue are not
similar, there was no need to consider the reputation of the earlier marks, the
GC erred in law. In the [Plaintiff’s] view, account should have been taken of
the fact that Calvin Klein’s earlier mark, ‘cK,’ is well known in determining
whether it should be afforded greater protection. The reputation of an earlier
mark should be considered in the course of the assessment of the similarity
between the marks at issue and not after similarity has been established.”
64. “¼ [Plaintiff] submits that, if the well‑known ‘cK’ marks
were protected only when the letters ‘cK’ were used by third parties with the
same mode of graphic representation, that would be tantamount to conferring on
the well‑known mark CK a lower level of protection in practice than it would
enjoy if it was not widely known. The fact that the ‘cK’ trade marks, along
with other distinct graphic representations of those letters, are well known
protects them against the use of the letters ‘CK’ in the fashion sector, since,
in that sector, those letters are identified with ‘Calvin Klein,’ so that the
use of those letters by a third party would lead to confusion by association.”
65. “OHIM contends that, ¼ the [GC] gave a correct
ruling on the question of the reputation of the earlier mark. Since the signs
at issue cannot be regarded as similar, Article 8(5) of Regulation No 40/94 is
not applicable.”
66. “[Defendant] submits that the judgement under appeal
refers to the reputation of the earlier marks. Recognising the reputation of
the figurative element ‘CK’ in the earlier mark, the judgment under appeal then
goes on to state that that reputation does not alter the fact that there is no
likelihood of confusion between the marks at issue.”
[Findings of the
ECJ:] 67. “By its second ground of appeal, the [Plaintiff] complains, in
essence, that the [GC] incorrectly confined its assessment to an analysis of
Article 8(1) of Regulation No 40/94, without examining the [Plaintiff’s]
arguments in the light of Article 8(5), and failed to take account of the
reputation and well‑known nature which attaches to the earlier marks in
carrying out the assessment required under Article 8(5) of Regulation No
40/94.”
68, 69 “It should be noted that, in order for Article 8(5)
of Regulation No 40/94 to be applicable, the marks at issue must be identical
or similar. Consequently, that provision is manifestly inapplicable where, as
in the present case, the [GC] ruled out any similarity between the marks at
issue. Accordingly, the second ground of appeal must be rejected as unfounded.”
In conclusion, the European Court of Justice dismisses Plaintiff’s appeal.
Citation: Calvin Klein Trademark Trust v. Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM); Case C‑254/09;
Celex No. 609J0254 (Eur.Ct.Just. [1st Chamber] Sept. 2, 2010).
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