Ewa Górnisiewicz

Calvin Klein is not the only “CK”

The European Court of Justice has held that the trademark “CK Creaciones Kennya” is not similar to the trademark “CK” registered by the Calvin Klein Trademark Trust for clothing.

In Calvin Klein Trademark Trust v OHIM, judgment dated 2 September 2010 (Case C‑254/09 P), the First Chamber of the ECJ upheld the ruling of the lower court dismissing Calvin Klein’s opposition to registration of the mark “CK Creaciones Kennya” for the same type of items (clothing and accessories).

The dispute arose in 2004, when the Calvin Klein Trademark Trust, from the US, holder of registered trademarks including CK and CK Calvin Klein, filed an opposition to registration of the word mark “CK Creaciones Kennya” by the Spanish company Zafra Marroquineros SL.

The Office for Harmonisation in the Internal Market (Trade Marks and Designs), Opposition Division, found that there was no likelihood of confusion between the Calvin Klein marks and the mark “CK Creaciones Kennya”. This position was affirmed by the Second Board of Appeal in 2007, and by the Court of First Instance when Calvin Klein filed an action to vacate the decision of OHIM.

In a judgment dated 7 May 2009 (Case T-185/07), the lower court held that in the overall impression from the new mark, the predominant element was “Creaciones Kennya”, thus sufficiently distinguishing it from the prior “CK” mark.

On appeal to the First Chamber, the Calvin Klein Trademark Trust argued that notwithstanding the verbal phrasing of the mark, in practice Zafra Marroquineros SL stressed the initials “CK”, which are highly distinctive for Calvin Klein products, reducing the “Creaciones Kennya” element to tiny print, so that the obvious purpose and effect was to copy the famous CK brand.

The First Chamber dismissed the appeal, affirming the holding below that there was no likelihood of confusion between the marks, notwithstanding the renown of the CK brand and the identical types of goods covered by the two marks. The court also held that the alleged misconduct of Zafra Marroquineros was irrelevant from the point of view of the average consumer. The court further held that the finding of a lack of similarity between the marks excluded consideration of the reputation of the CK mark.

The judgment must be regarded as surprising. The court’s reasoning is contrary to the established interpretation that similarity between marks is only one element to be considered when assessing the risk of confusion, and cannot be considered in isolation from other criteria, particularly the similarity between the goods and the distinctiveness and reputation of the earlier mark. It is also contrary to the specific legal criteria for protection of a renowned trademark.