Court of Justice Confirms Rejection of Calvin Klein's Opposition to a Community Trademark Application Starting With "CK" - Court of Justice of the European Union, Judgment of 2 September 2010, C-254/09 P (Calvin Klein Trademark Trust v. OHIM - Zafra Marroquineros, SL)

The Spanish company Zafra Marroquineros SL (Zafra) applied for the registration of "CK CREACIONES KENNYA" as a Community trademark for goods in classes 18 and 25. The application was opposed by Calvin Klein Trademark Trust (Calvin Klein) who relied, inter alia, on its Spanish marks covering identical goods in classes 18 and 25.

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The Opposition Division of OHIM rejected the opposition, stating that Calvin Klein's trademarks and Zafra's trademark application were not sufficiently similar to cause likelihood of confusion pursuant to Article 8(1)(b) of the EC Regulation 40/94 (CTMR). OHIM's Board of Appeal and the General Court of the European Union dismissed the appeal by Calvin Klein.

On further appeal, the Court of Justice of the European Union (CJEU) said that the General Court did not err in law by not having taken into account the allegedly wrongful conduct by Zafra (Calvin Klein had claimed that Zafra actually used the sign "CK CREACIONES KENNYA" in such way that the element "CK" was depicted in large highlighted letters and separate from the element "CREACIONES KENNYA" which was depicted in very small letters). Such circumstances could not be taking into consideration in the assessment of similarity since wrongful conduct by the trademark applicant was a significant factor in the context of cancellation proceedings pursuant to Article 51(1)(b) CTMR (bad faith) but not relevant in opposition proceedings under Article 8.

With regard to the global assessment of the similarity of the marks, the CJEU observed that, contrary to what the General Court had stated, the similarity between two marks did not require that they shared a component which was a dominant element in the overall impression of the mark applied for. It was sufficient if the shared component was not an insignificant element. However, the finding of the General Court that the shared element "CK" only had an ancillary position in Zafra's trademark whereas "CREACIONES KENNYA" was the dominant element of the mark amounted, in essence, to the conclusion that "CK" was an insignificant element in Zafra's mark. The CJEU concluded that the General Court had assessed the similarity between the signs on the basis of a properly conducted analysis. The CJEU also confirmed that, despite the identity of the goods and notwithstanding the reputation of Calvin Klein's earlier marks, there was no likelihood of confusion.

Finally, the CJEU emphasized that Article 8(5) CTMR (refusal of the trademark registration if it takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the earlier trademark) was not applicable if - as in this case - the marks at issue were not similar, no matter how the degree of reputation of the earlier mark was.

As a result, the CJEU confirmed that "CK CREACIONES KENNYA" could be registered as a Community trademark and dismissed the appeal.