KIK vs. KIX: Discounter is not relevant

Clothing manufacturer KIK won before the European Court in the trademark dispute KIK vs. KIX and the allegation of likelihood of confusion. The CJEU used the case for clarification with regard to the term “textiles” in Nice class 35 – and that “discounters” are not a relevant characteristic.

The trademark dispute began when in 2014 the plaintiff, FF Group Romania SRL (Romania) applied for the EU figurative mark KIX as a trademark. The intervener, Kik Textilien und Non-Food GmbH (Germany), filed an opposition against this trademark registration, citing its own earlier word mark KIK, which is protected as both an international trademark and a national trademark.

The opposition was successful and both the Opposition Division and the Board of Appeal of EUIPO upheld the opposition. The applicant FF Group Romania SRL did not want to accept this and brought the case before the European Court (CJEU).

CJEU confirmed the likelihood of confusion

The European Court of Justice ruled on the question of similarity and likelihood of confusion between the two marks in the same way as the previous instances: there is a medium degree of visual similarity, a high degree of phonetic similarity; a conceptual or conceptual comparison is not possible, however, since the signs are meaningless in German.

In addition, the CFI took the opportunity to define more precisely the term “textiles” from Nice Class 35. Among other things, the applicant had argued that its own trademark application KIX claimed “clothing” and “accessories”, whereas the earlier marks of KIK claimed “textiles”.

Textiles also include any clothing

The court explained that the term “textiles” in Nice Class 35 includes household, bed and table linen as well as clothing and headgear. The Opposition Division had rightly acknowledged this in its contested decision.

According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors must be taken into account, the Court recalled, in particular their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Distribution channels may also be taken into account. Moreover, services are considered to be identical if the services designated by the earlier trademark fall into a more general category designated by the trademark application, the CJEU added.

In practice, this means that the category “clothing” also includes “sportswear”. The Board of Appeal was therefore right to compare “sportswear” with “clothing” and to consider them identical, the CJEU held.

Discounters vs. high quality goods?

Finally, the applicant claimed that, contrary to the findings in the contested decision, those services were not similar, since the services covered by the earlier national mark were the services of ‘discounters’, whereas the services designated by the mark applied for concerned the high-quality goods offered in retail outlets.

However, the CJEU rejected this objection. Details of the marketing methods used by the parties were not included in the lists of services designated by those marks, the Court found. In short, “discounters” are not a relevant feature of the list of trade marks.