Court of Justice of the European Communities (including Court of First Instance Decisions)

(Community trade mark Opposition proceedings Application for the Community word mark CK CREACIONES KENNYA Earlier Community figurative mark CK Calvin Klein and earlier national figurative marks CK Relative ground for refusal No likelihood of confusion No similarity of the signs Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-85/07,

Calvin Klein Trademark Trust, established in Wilmington, Delaware (United States), represented by T. Andrade Boué, I. Lehmann Novo and A. Hernández Lehmann, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by à. Mondéjar Ortuño, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Zafra Marroquineros, SL, established in Caravaca de la Cruz (Spain), represented by J. Martín Álvarez, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 March 2007 (Case R 314/2006-2), concerning opposition proceedings between Calvin Klein Trademark Trust and Zafra Marroquineros, SL,

composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and E. Moavero Milanesi, Judges,

Registrar: K. Andová, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 29 May 2007,

having regard to the response of OHIM lodged at the Court Registry on 3 October 2007,

having regard to the response of the intervener lodged at the Court Registry on 3 October 2007,

having regard to the reply of the intervener to the Court's written question of 17 June 2008,

having regard to the change in the composition of the Chambers of the Court of First Instance,

having regard to the designation of another judge to complete the Chamber as one of its Members was prevented from attending,

further to the hearing on 8 July 2008,

gives the following

Background to the dispute

1. On 7 October 2003, the intervener, Zafra Marroquineros, SL, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. Registration as a trade mark was sought for the word sign CK CREACIONES KENNYA.
3. The goods in relation to which registration of the trade mark was sought belong to Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

Class 18: 'Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery';

Class 25: 'Clothing, footwear, headgear'.

4. The application for the Community trade mark was published in Community Trade Marks Bulletin No 23/2004 of 7 June 2004.
5. On 6 September 2004, the applicant, Calvin Klein Trademark Trust, filed a notice of opposition to registration of the mark in question pursuant, inter alia, to Article 8(1)(b) of Regulation No 40/94.
6. The opposition was based on the following earlier marks:

Community trade mark No 66172, registered for goods and services in Classes 3, 4, 8, 9, 14, 16, 18, 20, 21, 24, 25, 26, 27, 35 and 42, and represented below:



Spanish trade mark No 2023213, registered for goods in Class 18, and represented below:



Spanish trade mark No 2028104, registered for goods in Class 25, and represented below:



7. The opposition was based on all the goods and services covered by the earlier marks and was directed against all the goods covered by the application for the mark.
8. By decision of 22 December 2005, the Opposition Division of OHIM rejected the opposition in its entirety. It found that there was no likelihood of confusion between the marks at issue for the relevant consumer.
9. On 22 February 2006, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the Opposition Division's decision, alleging that there had been infringement of Article 8(1)(b) of that regulation.
10. By decision of 29 March 2007 ('the contested decision'), the Second Board of Appeal dismissed the appeal and upheld the Opposition Division's decision. It found that the signs at issue were not sufficiently similar to conclude that there was a likelihood of confusion on the part of the public concerned.

Forms of order sought

11. The applicant claims that the Court should:

annul the contested decision;

order that the trade mark applied for be refused registration;

order OHIM and the intervener to pay the costs.

12. OHIM contends that the Court should:

dismiss the action;

order the applicant to pay the costs.

13. The intervener contends that the Court should:

dismiss the action and uphold the contested decision;

order the applicant to pay the costs.

Law

Admissibility of the applicant's second head of claim

14. By its second head of claim, the applicant is asking the Court to direct OHIM to refuse to register the trade mark applied for. It should be recalled in that connection that, under Article 63(6) of Regulation No 40/94, OHIM is to take the measures necessary to comply with the judgment of the Community Courts. Accordingly, the Court of First Instance is not entitled to issue directions to OHIM. It is for OHIM to draw the appropriate inferences from the operative part of this judgment and the grounds on which it is based (see to that effect, Case T-331/99 Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform) [2001] ECR II 433, paragraph 33, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 12). The applicant's second head of claim is therefore inadmissible.

Substance

Arguments of the parties

15. The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.
16. The applicant maintains that the Board of Appeal's analysis is incorrect as regards the comparison of the conflicting signs and the assessment of the likelihood of confusion.
17. As regards the comparison of the conflicting signs, the applicant submits that, contrary to what is stated in the contested decision, the distinctive element of the conflicting marks is constituted by the group of letters 'ck'.
18. Those two letters appear at the beginning of the trade mark applied for, with the result that they are perceived first and hold the consumer's attention. The most distinctive element of the conflicting marks is thus the same, which means that there is a phonetic similarity between the conflicting signs.
19. The applicant disputes the argument that the group of letters 'ck' in the earlier marks has greater distinctive character than that of the group of letters 'ck' in the trade mark applied for solely on account of the particular way in which it is represented graphically.
20. The applicant maintains that, contrary to what is stated in the contested decision, the use of the group of letters 'ck' is not explained by the words 'creaciones' and 'kennya', which do not correspond to the intervener's trade name, but rather by an intention to make the mark more like the well-known earlier mark.
21. The applicant states that neither the word 'creaciones' nor the word 'kennya' has distinctive character. The first is used in the fashion sector to refer to garment models. The second may evoke an African country, Kenya, or the name of a person.
22. The mark CK CREACIONES KENNYA is thus perceived as a mark CK which refers to the range 'creaciones' (designs) entitled 'kennya' (Kenya), either because it is inspired by the art or colours of Kenya or because the designer of the goods in question bears that name. Names of countries do not have distinctive character and may not be used as elements to differentiate between the marks being compared. The applicant submits that, in the present case, the word 'kennya' is a false indication of origin because the applicant for the mark at issue is a trader from the Spanish city of Murcia who has no connection with Kenya and whose goods are not, moreover, purchased in that country.
23. The outcome is the same if the word 'kennya' alludes to the name of a person because a common name is not distinctive per se. It increases the confusion by leading people to think that it is a sub-brand of the mark CK, designed by a person called Kennya, which is not the case. Consequently, the applicant takes the view that the word 'kennya' is not distinctive or has only very weak distinctiveness and that, therefore, the consumer will focus on the element 'ck' of the trade mark applied for, which consists of the same letters as those forming the earlier marks.
24. The applicant observes that the earlier marks are very well known, which is liable to strengthen the similarity between the marks, in particular from a visual and phonetic point of view. It maintains that it is the figurative sign CK which is in fact well known.
25. In the applicant's opinion, it is common in the fashion sector for clothing manufacturers to be identified by the letters which form the acronym of their name. Therefore, to make a mark resemble marks consisting of the letters of an acronym is clearly an attempt to copy the mark of another.
26. In the fashion sector, it is also common for a single clothing manufacturer to use sub-brands, that is to say signs which derive from a principal mark and share a common dominant element with that mark, to distinguish its various product lines from one another. Consequently, the fact that the group of letters 'ck' is in all the marks at issue, even though the letters are represented differently graphically, is likely to confuse the consumer, who might think that the sign CK CREACIONES KENNYA relates to a particular product line.
27. In support of that argument, the applicant refers to a number of decisions of the Community courts, Spanish courts, OHIM and the Spanish Patents and Trade Marks Office.
28. OHIM and the intervener dispute the merits of the applicant's arguments. They take the view, inter alia, that the Board of Appeal's assessment that the signs at issue create a different overall impression is correct. OHIM also maintains that, since it is the figurative sign CK, which already has inherent distinctive character on account of its specific graphic design, which is well known, it is not appropriate to accord to the group of letters 'ck', written in standard characters, or the way they sound, the renown which the Board of Appeal accorded to the earlier marks.
29. Furthermore, OHIM and the intervener submit that, as regards the trade mark applied for, the expression 'creaciones kennya' is the dominant element, either visually, on account of its length, or conceptually, on account of its fanciful component, whereas the group of consonants 'ck', in view of its specific graphic design, constitutes the dominant element of the earlier marks.

Findings of the Court

30. Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, a trade mark must not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
31. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (Case T-104/01 Oberhauser v OHIM Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 25; see also, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 29; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17).
32. It is also settled case-law that the likelihood of confusion must be assessed globally, according to the perception by the relevant public of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (See Case T-162/01 Laboratorios RTB v OHIM Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 and 32, and the case-law cited).
33. Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Therefore, marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, Lloyd Schuhfabrik Meyer, paragraph 20).
34. In addition, the perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25). For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect (Lloyd Schuhfabrik Meyer, paragraph 26).
35. In the present case, it must be pointed out at the outset that the parties do not dispute that the goods at issue are identical.
36. Furthermore, it is apparent from the contested decision, which has not been called into question on that point, that, in so far as the earlier marks are two trade marks registered in Spain and one trade mark registered as a Community trade mark and the goods at issue are intended for the general public, the relevant public consists of average consumers of those goods in Spain and in the Community.
37. By contrast, the applicant disputes the Board of Appeal's assessment regarding the similarity of the signs at issue and the conclusion drawn from that as regards the likelihood of confusion. It must therefore be examined whether the Board of Appeal erred in finding that there were sufficient differences between the conflicting signs to preclude a likelihood of confusion on the part of the relevant public.

The similarity of the signs

38. As to the visual, phonetic or conceptual similarity of the conflicting signs, the global assessment of the likelihood of confusion must be based on the overall impression given by them, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips-Van Heusen v OHIM Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47, and case-law cited).
39. Furthermore, according to established case-law, a compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T-6/01 Matratzen Concord v OHIM Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 33, and Case T-28/05 Ekabe International v OHIM Ebro Puleva (OMEGA3) [2007] ECR II-4307, paragraph 43).
40. However, it is not appropriate to take into consideration only one component of a complex trade mark and compare it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole (Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 41; Case C-193/06 P Nestlé v OHIM and Quick [2007], not published in the ECR, paragraph 35; and MATRATZEN, paragraph 34).
41. In the present case, it is apparent from paragraph 7 of the contested decision that the figurative signs covered by the earlier registrations consist of the group of letters 'ck', written in upper case printed characters, the letter 'k' being longer and broader than the letter 'c', which is centred in relation to the 'k'. The earlier Community trade mark also contains the words 'calvin klein' written in printed characters much smaller than the letters 'c' and 'k'. Furthermore, the mark applied for is a word mark consisting of three elements, namely the group of letters 'ck' followed by the words 'creaciones' and 'kennya'.
42. The applicant maintains that the element 'ck' constitutes the distinctive and dominant element of the mark applied for. However, clearly, as OHIM argues, the words 'creaciones kennya' occupy, because of their size, a much more significant position than the group of letters 'ck' and form a syntactical and conceptual unit which dominates that whole mark.
43. Although the precise meaning of the element 'creaciones kennya' is uncertain, inasmuch as it may be understood either as a reference to a fashion designer or as a purely fanciful expression, it has a certain distinctive character in respect of the items of clothing and fashion accessories in Classes 18 and 25. Furthermore, that distinctive character is not called into question by the connection the relevant public makes between the word 'kennya' and the country of Kenya, having regard to the different spelling of the two words. The applicant's arguments disputing the distinctive character of the element 'creaciones kennya' must therefore be rejected.
44. Furthermore, as the Board of Appeal pointed out in paragraph 26 of the contested decision, the element 'ck' corresponds to the initial letters of the words 'creaciones' and 'kennya', thus establishing the origin of that element and explaining its presence. As stated in the application for the trade mark, the element 'ck' therefore occupies an ancillary position in relation to the element 'creaciones kennya'.
45. It follows that the relevant consumer will above all remember the words 'creaciones kennya', on which he will to a very great extent focus his attention. The fact, relied on by the applicant, that the group of letters 'ck' appears at the beginning of the trade mark applied for does not alter that assessment. Although it is true that the average consumer generally pays more attention to elements at the beginning of a mark, the circumstances specific to certain marks may constitute an exception to that rule (see to that effect, Case T-149/06 Castellani v OHIM Markant Handels und Service (CASTELLANI) [2007] ECR II-4755, paragraph 54). In the present case, on the grounds set out in paragraphs 42 to 44 above, the mere position of the group of letters 'ck' at the beginning of the trade mark applied for is not sufficient to make it the dominant element in the overall impression created by that mark.
46. As regards the visual similarity between the signs, it must consequently be pointed out that the Board of Appeal was correct to find that the marks at issue are different. Although the earlier marks consist of the sole or dominant element 'ck', represented with a specific graphic design which, as the Board of Appeal pointed out in paragraph 22 of the contested decision, confers on those marks inherent distinctive character, the overall impression created by the mark applied for is dominated by the element 'creaciones kennya'.
47. The mere visual resemblance, therefore, of the sole or dominant figurative element 'ck' in the earlier marks and the element 'ck' in the mark applied for does not serve to create a visual similarity between the marks at issue, in the light of the overall impression created by the mark CK CREACIONES KENNYA and the specific graphic representation which characterises the earlier marks, namely the smaller size and centring of the letter 'c' in relation to the letter 'k'.
48. In that regard, it is important to point out, as the Board of Appeal stated in paragraph 23 of the contested decision, that the examination of the similarity of the marks at issue takes into consideration those marks in their entirety, as they have been registered or as they have been applied for. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark. The graphic representation which the mark applied for may have in the future must not, therefore, be taken into account for the purposes of the examination of similarity (see to that effect, Case T-211/03 Faber Chimica v OHIM Naberska (Faber) [2005] ECR II-1297, paragraphs 36 and 37; Case T-353/04 Ontex v OHIM Curon Medical (CURON) [2007], not published in the ECR, paragraph 74; and Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43).
49. The Board of Appeal also correctly found that the marks at issue are not similar phonetically. As OHIM states, the earlier marks will be referred to by means of the group of letters 'ck', or even by means of the words 'calvin klein', even where those words do not appear in the earlier sign, since it is clear that the figurative sign CK, when represented with its characteristic graphics, constitutes a reference to the well-known manufacturer and designer of fashion items, Calvin Klein.
50. By contrast, the trade mark applied for will be referred to by using the words 'creaciones kennya' alone or the whole of the expression 'ck creaciones kennya'. It is, in any event, very unlikely that the trade mark applied for, CK CREACIONES KENNYA, will be referred to merely by using the group of letters 'ck' inasmuch as, because they are little known, the words 'creaciones kennya' will have to be expressly referred to.
51. Conceptually, the Board of Appeal did not err in finding that the words 'creaciones kennya', from which the group of letters 'ck' is derived, create a conceptual difference compared with the earlier marks. As the Board of Appeal pointed out in paragraph 27 of the contested decision, although the group of letters 'ck' in the mark applied for derives from the words 'creaciones kennya', the group of letters 'ck' of which the earlier marks consist constitutes a reference to the well-known manufacturer and designer of fashion items Calvin Klein.
52. It is apparent from the foregoing that the Board of Appeal did not err when it found that the marks at issue are not similar. The visual, phonetic and conceptual examination of the marks shows that the overall impression created by the earlier marks is dominated by the sole or dominant element 'ck' whereas that created by the trade mark applied for is dominated by the element 'creaciones kennya'. The lack of similarity between the signs at issue thus stems from the visual, phonetic and conceptual differences noted above.

The likelihood of confusion

53. In the light of the examination of the similarity between the marks at issue, the Board of Appeal was correct to find that it was inappropriate to conclude that there was a likelihood of confusion.
54. The fact that the goods covered by the conflicting marks are identical does not alter that assessment since the signs in question are not similar. As the Board of Appeal pointed out in paragraph 28 of the contested decision, it is clear from the mark applied for that the group of letters 'ck' refers to the words 'creaciones kennya', which distinguish without ambiguity the trade mark applied for from the earlier marks. As the conflicting signs must be similar for there to be a likelihood of confusion, a finding that there is no such similarity precludes the possibility of a likelihood of confusion (see to that effect Case T-6/07 Torres v OHIM Sociedad Cooperativa del Campo San Ginés [2008] ECR II-0000, paragraph 74).
55. It must also be pointed out that the applicant relies on the reputation of the figurative element CK, which is common to the earlier marks and characterised by specific graphics. Although the case-law recognises that marks with a highly distinctive character on account of their reputation enjoy broader protection (see paragraph 33 above), the recognition, in the present case, of the reputation of the earlier marks cannot call into question the merits of the Board of Appeal's assessment that, inter alia on account of the difference in their respective dominant elements, the marks at issue create overall impressions which are too different for it to be found that there is a likelihood of confusion.
56. As regards the applicant's argument to the effect that the target public may perceive the trade mark applied for as one of its sub-brands, it must be pointed out, as the applicant states, that sub-brands are characterised by signs that derive from a principal mark and which share with it a common dominant element (Joined Cases T-117/03 to T-119/03 and T-71/03 New Look v OHIM Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 51). As has been stated above several times, the earlier marks are dominated by or consist exclusively of the figurative element CK, whereas the mark applied for is dominated by the distinctive word element 'creaciones kennya'.
57. It follows from the foregoing that the Board of Appeal did not err in finding that there is no likelihood of confusion between the trade mark applied for and the earlier marks. The action must therefore be dismissed.

Costs

58. Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since OHIM has applied for costs against the applicant and the latter has been unsuccessful, the applicant must be ordered to pay the costs.

On those grounds,

THE COURT OF FIRST INSTANCE (Sixth Chamber)

hereby:

1. Dismisses the action.

2. Orders Calvin Klein Trademark Trust to pay the costs.

Meij

Vadapalas

Moavero Milanesi

Delivered in open court in Luxembourg on 7 May 2009.

[Signatures]

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* Language of the case: Spanish.