No Monopoly for Calvin Klein on Letters CK
Opposition Against CK CREACIONES KENNYA
Calvin Klein is one of the best-known producers of luxury clothing
and fashion accessories. It owns various trademarks for clothing,
including device marks consisting of a stylized smaller C followed
by a bigger K. A Spanish company, Zafra Marroquineros, is using the
same abbreviation CK on its clothing and accessories, sometimes in
isolation and sometimes with the words (in very small letters)
Creaciones Kennya. When Zafra tried to register the Community
trademark CK CREACIONES KENNYA as a word mark with the OHIM, Calvin
Klein filed a notice of opposition, inter alia on grounds
of Article 8 (1) under b of the Community Trademarks Regulation
("CTMR"); (identical or similar signs and identical or
similar goods giving rise to a likelihood of confusion on the part
of the public), and Article 8 (5) of the CTMR (protection of a
trademark with a reputation against detriment and unfair
advantage). The OHIM dismissed the opposition in two instances,
because it found that the signs were not sufficiently similar.
Adjudication by the General Court
("GC")
On appeal, the GC has made a careful analysis of the case. First of
all, the GC established that the goods at issue are identical
(clothing). Secondly, the GC compared the conflicting signs, on the
basis of the principle that a compound trademark (like CK
CREACIONES KENNYA) cannot be regarded as being similar to another
trademark which is identical or similar to one of the components of
the compound trademark (like CK), unless that component forms the
dominant element within the overall impression created by the
compound mark. The GC held that this is not the case. Because of
their size, the words CREACIONES KENNYA occupy a much more
significant position and form a unit that dominates the whole mark,
also because CK is an abbreviation of the first two letters of the
words. The fact that the trademark begins with the letters CK is
not sufficient to make those letters the dominant element.
Moreover, the trademarks of Calvin Klein are different because of
their specific graphic design. There is also no phonetic and
conceptual similarity between CK CREACIONES KENNYA on the one hand
and Calvin Klein’s CK trademarks on the other hand. The GC found
that the trademarks are not similar and consequently that there is
no likelihood of confusion.
Copycat Conduct Not Taken
Into Account
In its appeal to the ECJ, Calvin Klein objected most of all to
the fact that not all circumstances had been taken into account,
especially the circumstance that Zafra in fact displays the letters
CK prominently on its goods in an apparent attempt to latch on to
Calvin Klein. Although this frustration is very understandable,
Calvin Klein failed to appreciate the nature of opposition
proceedings here. In such proceedings, the question under review is
whether the trademark as it was applied for
possibly infringes the earlier trademarks; the conduct of the
applicant in the market is not relevant. The ECJ formulates this as
follows: “the similarity of the marks at issue must be assessed
by referring to the intrinsic qualities of the marks and not to
circumstances relating to the conduct of the person applying for a
Community trademark (ground 46)". The ECJ did add to
this, however, that such conduct is “particularly
significant” in infringement
proceedings.
Reputation of CK?
Another objection of Calvin Klein, which in my opinion is
realistic, is that the GC had disregarded the fact that almost
everyone will associate the letters CK with Calvin Klein, not only
because Calvin Klein is widely known, but also because it is common
practice in the fashion industry to refer to producers by their
initials. For this reason alone, more significance should be
attached to the first two letters of the trademark CK CREACIONES
KENNYA.
First of all, the ECJ held that the GC based its analysis on an
incorrect assumption. It is not true that the signs can only be
deemed to be similar if the element in a compound mark
corresponding to the earlier mark is the dominant element. The
trademarks must be considered as a whole. A dominant element may be
decisive in this consideration, but only if the other elements are
negligible. This phrasing is known from the recent judgment in the
Carbonell case (C-498/07), inter alia.
However, in this case the ECJ upheld the judgment of the GC,
because the GC had weighed all relevant elements and reached the
eventual conclusion that the conflicting signs are not similar. The
ECJ will not reevaluate such an assessment of facts. And if the
signs are not similar at all, there can be no likelihood of
confusion, not even if the abbreviation CK is very well-known among
the public. For the same reason, Calvin Klein cannot rely on the
special protection of trademarks with a reputation (Article 8 (5)
of the CTMR): after all, if there is no similarity whatsoever
between the signs, this protection is not at issue.
This last point in the judgment deserves a critical eye. From an
analytical point of view, it is correct that if signs are not
similar at all, other variables such as the reputation of the
earlier mark become irrelevant. Some similarity between the signs
has to exist before a likelihood of confusion can be taken into
consideration. However, what is wrong is the finding of the GC that
there was no similarity at all. This conclusion is clearly wrong,
because the trademark CK CREACIONES KENNYA comprises the earlier
trademark CK. This was precisely the reason why the GC made such a
detailed analysis, which would not have been necessary otherwise.
It would have been more appropriate to conclude that although a
certain extent of similarity exists, such is not sufficient –
according to the GC – to assume a likelihood of confusion. This
formulation would have allowed to take into account that Calvin
Klein’s CK trademarks have a reputation, and might have caused
Calvin Klein's complaint to be successful.