On 24 June 2014, Ken Virmani (the Applicant) filed an EU application for the ANOKHI and monkey mark (above left) in classes 9, 14, 18 and 25 (the Application), which was opposed by VF International Sagl (the Opponent) based on their EU KIPLING and monkey registered trade marks in classes 14, 16, 18, 24, 25 and 28 as well as their monkey EU registered trade mark in classes 9, 14, 18, 18, 24 and 25 (the Earlier Marks) based on Article 8(1)(b) - likelihood of confusion and 8(5) - reputation.
The opposition was rejected by the Opposition Division in its entirety. The Board of Appeal similarly held that the marks were not visually, phonetically or conceptually similar. In addition, it was pointed out that the Opponent had not submitted any evidence of reputation of the Earlier Marks.
The Board of Appeal held that the monkeys were not the most distinctive or dominant part of the marks. It was noted that most consumers will refer to the trade mark by the word element and not by the device element.
Upon reviewing the overall impression of the trade marks, the Board of Appeal considered that the words ANOKHI and KIPLING were not similar in any way and that the monkeys face opposite ways, their backs are bent differently and their tails are of different length and shape.
However on appeal, the General Court did consider that there were some similarities between the trade marks notably that the words are of similar length and contain a silhouette of a monkey. The General Court also accepted that as neither word elements have any meaning in English, the relevant public are more likely to refer to the marks conceptually as a monkey. The General Court did accept that the Application was similar to the Earlier Marks both visually and conceptually.
The Court of Appeal also held that the Opponent had not shown evidence of a reputation; the General Court confirmed that it is not necessary for opponents to provide proof of reputation but they must show that the mark is known by a significant part of the public. The Court of Appeal considered the reputation evidence and stated that the very numerous extracts of websites and press clippings submitted by the Opponent demonstrate some reputation of the goods identified as belonging to the Kipling brand. Nevertheless, it was apparent from that evidence that signs different to the earlier marks are also widely used to identify the Opponent's goods. Thus, a great number of photographs, appearing on numerous goods marketed by the Opponent, display a round sign which includes, in particular, the word element ‘kipling’ but no figurative element of a monkey. Similarly, the Court of Appeal found a furry figure representing a monkey whose appearance and build is very different to the monkey represented as a silhouette in the Earlier Marks was often attached to goods marketed by the Opponent.
The General Court upheld that the Opponent has not shown any evidence of reputation and they gave some clarification as to why the evidence submitted was not considered acceptable including:
- The advertisements published in the media and social media show goods on which signs other than the Earlier Marks appear, so that they do not unambiguously establish the reputation of the Earlier Marks.
- As regards the extract of the Wikipedia page dedicated to the Kipling brand, according to settled case-law, an extract of that site amounts to information lacking certainty since it is based on a collective encyclopaedia established on the internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously.
The General Court held that even without demonstrating a reputation the Opponent had shown that the marks were conceptually and visually similar and therefore, they held the Application should be rejected under Article 8(1)(b).
Case ref: T-548/17 Karen Dossey