JUDGEMENT OF THE ECJ (First Chamber) of 2 September 2010 - Case C-254/09 P - Calvin Klein Trademark Trust, appellant (trademarks "cK Calvin Klein" and "cK"), appellant vs. OHIM, defendant and Zafra Maroquineros SL (wordmark CK CREACIONES KENNYA) (intervener) - Appeal against Court of First Instance judgement ("the General Court") (Case T - 185-07 of 7 May 2009) confirming rejection of opposition - Appeal dismissed.
On 2nd September 2010 the European Court of Justice (ECJ) issued its ruling in Calvin Klein Trademark Trust v Office for Harmonisation in the Internal Market (OHIM) (Case C-254/09 P). Calvin Klein, which owns the marks CK CALVIN KLEIN and CK, filed a notice of opposition against Zafra Maroquineros SL's word mark CK CREACIONES KENNYA pursuant to Articles 8(1)(b) and (2)(c) of the Community Trademark Regulation (40/94/EC). The Opposition Division of OHIM rejected the opposition on the grounds that there was no likelihood of confusion between the respective marks. The Second Board of Appeals dismissed the subsequent appeal by Calvin Klein, considering that the marks at issue were not sufficiently similar, and that therefore there was no risk of confusion on the part of the public.
Calvin Klein then appealed to the General Court, seeking annulment of the contested decision and an order that OHIM refuse Zafra's application. The General Court conducted a detailed analysis of the relevant provisions and the facts, recalling that the likelihood of confusion must be assessed globally, taking into account all the relevant facts, and pointing out that the more distinctive the earlier marks, the greater the likelihood of confusion. Visual, phonetic and conceptual similarity between the marks at issue was discussed at length. The General Court finally found that the marks were not similar because the opposed mark was a compound one, wherein the words "Creasciones Kennya" were the dominant part, with the consequence that the overall impressions were too different for it to be found that there was a likelihood of confusion notwithstanding the alleged reputation of the appellant's marks.
In its grounds of appeal before the ECJ, Calvin Klein argued that the General Court erred in:
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Disregarding the fact that Zafra used the letters "CK" in isolation in large highlighted letters, whereas the part "Creationes Zafra" was reproduced in small letters, thereby omitting to consider a fact relevant to the circumstances of the case.
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Disregarding in its analysis the importance to be attributed to the letters "CK" in view of the reputation of the appellant's marks.
The ECJ did not share Calvin Klein's arguments. It found the judgment to be correctly drafted, stating that where no similarity exists, as in this case, the reputation of or goodwill attached to the earlier marks is insufficient to affirm a likelihood of confusion. Accordingly, there was no need to consider in detail the reputation of the earlier marks.
Moreover, the General Court did not err in omitting to consider how Zafra used its mark (by highlighting the "CK" component). This specific aspect could have been the subject of an action under Article 51(1)(b) of the regulation:
"1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings... (b) where the applicant was acting in bad faith when he filed the application for the trade mark."
In fact, submissions of this kind "should be made in proceedings alleging possible infringement of a trade mark or unfair competition" (see paragraph 40 of the ECJ's judgment).
Certain principles of the ECJ's decision should be borne in mind by trademark owners when fixing strategies to challenge trademarks that have been applied for, registered or used by competitors. This particularly applies to owners of trademarks involving the names of luxury goods designers.
