CTM opposition kicked into touch

The EU General Court has dismissed an opposition to the ‘Kicktipp’ Community trademark (CTM) application, stating that there is no likelihood of confusion with the Italian mark ‘Kickers’.

Germany-based Kicktipp filed the CTM application to cover clothing, but found its attempt halted by fashion company Società Italiana Calzature.

The fashion company cited its Italian trademark for the term ‘Kickers’, which covers clothing, footwear and headgear products, as the basis for its argument that the marks were too similar.

Kicktipp filed its application in 2010.

Società Italiana then filed an opposition, which was upheld by both the Opposition Division at the Office for Harmonization in the Internal Market (OHIM) and the Second Board of Appeal.

Kicktipp then appealed against the decision to the General Court.

In its appeal, Kicktipp raised two issues. First, it argued that the Italian company provided only a renewal application and not the registration certificate for its trademark, and therefore failed to demonstrate the “existence, validity and scope of protection of the mark”.

Second, it said OHIM was wrong to conclude that the marks were similar.

The court, in a ruling handed down on Friday, February 5, agreed that Società Italiana’s “application for renewal cannot be regarded as sufficient to establish the validity of the earlier trademark”.

It further clarified that rule 19 of EU Regulation 2868/95 (which covers opposition filings) requires a party to provide “both the registration certificate and the renewal certificate”.

“The requirement to produce the registration certificate ... is intended to ensure OHIM has available to it reliable proof of the existence of the mark on which the opposition is based."

The court also said the disputed marks have “weak visual similarity, very weak phonetic similarity, and cannot be compared conceptually”.