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20 February 2018Trademarks

EU court dismisses motor company's trademark appeal

The European Union Intellectual Property Office’s (EUIPO) decision to uphold an opposition against a motorbike company’s ‘CK1’ trademark has been affirmed by the EU General Court.

The EU General Court delivered judgment today, February 20.

Taiwanese motorbike manufacturer Kwang Yang Motor Company applied to register the word sign ‘CK1’ with the EUIPO in January 2014. The mark sought to cover goods in class 12, including motorcycles and electric motorcycles.

Later that year, a Germany-based individual opposed the application, based on their earlier registered figurative mark, which features a stylised ‘CK’. Udo Schmidt’s mark covers class 12, 40, and 42, for goods such as hearses and automobiles, and services such as technical consulting and engineering.

The EUIPO’s Opposition Division upheld Schmidt’s opposition. On appeal, the EUIPO’s Second Board of Appeal affirmed the division’s ruling in November 2016.

Kwang’s motorcycles were similar to the automobiles covered by the earlier mark insofar as their nature and intended purpose appealed to the same audience, the appeal board held. It added that the audience would have a “high” level of attention, as automobiles are aimed towards a professional public as well as the general public.

The EUIPO noted that the signs in question were visually and phonetically similar. The presence of the number ‘1’ in the applied-for mark did not overcome the overall impression of similarity.

Kwang appealed against the decision to the EU General Court, alleging that motorcycles are, at best, only “remotely” similar to the automobiles covered by the earlier mark. It also argued that the signs were only remotely similar and that their differences “cannot be neglected”.

The General Court agreed with the EUIPO’s finding that the goods covered by the applied-for mark are similar to the earlier mark in terms of their use, and the consumers they are aimed at.

Certain elements prevent the goods covered from being “identical”, such as the differentiations in licences for cars and motorcycles and the ability of cars to carry bulkier items than motorcycles. But these do not “prevent there being a similarity”, added the court.

The court said that neither the earlier mark nor the applied-for mark includes a dominant element. As the signs do not have a high level of distinctiveness, there is a high likelihood of confusion on behalf of the public, it explained.

According to the court, the addition of the number ‘1’ is not sufficient to rule out the similarity “created by the common element formed by the pair of capital letters”.

It added: “The visual and phonetic differences between the mark applied for and the earlier trademark are not such as to divert consumers’ attention from their similarities.”

Kwang has been ordered the pay the costs, and its appeal was dismissed.

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