What has happened?
- Brand owners can often assume that common descriptive or allusive words are free for all to use as part of their brands in the UK and further afield. However, that's not always the case.
- In the EU, knowledge of English beyond basic vocabulary is not assumed. It means that basic descriptive words can sometimes achieve registration for the goods/services they describe or those closely similar. These registrations can then block the use or registration of later marks consisting of or containing those words.
- This is what happened in the recent Karneolis case (T-332/24) where a prior registration for SWIPE in Italy for dating and social networking services was sufficient to block the registration of an EUTM for KinkySwipe for identical/similar services.
- For this reason, it is important that brand owners clear new brands for use and registration even where those brands seemingly consist of or contain common descriptive words.
Want to know more?
Match Group successfully opposed Karneolis's EU trade mark application for "KinkySwipe" for dating and social networking services. The opposition was based on an earlier Italian registration for the word mark SWIPE covering similar and identical services. The Board of Appeal and General Court both dismissed Karneolis's appeals, agreeing with the opposition decision that there was a likelihood of confusion.
The Court's findings
The General Court found the marks visually and phonetically similar to an average degree, with no conceptual comparison possible. The goods/services were identical or similar. Combined together, these factors all created a likelihood of confusion.
Since the earlier SWIPE mark was registered in Italy, it was the relevant territory. The Court confirmed that knowledge of a foreign language (here English) cannot be assumed beyond basic vocabulary. Neither "kinky" nor "swipe" were proved to be basic or commonly understood English words in Italy, giving them an average degree of distinctiveness. Since the average consumer would not perceive either of these words as describing the services in question, there was a likelihood of confusion.
What principles does the EU apply?
The EU has 24 official languages, making it difficult to prove that a word is widely understood and, therefore, descriptive across all Member States. This means that words that the average English consumer would understand as descriptive can sometimes achieve registration in an EU member state. In short, a word that describes products or services in English may retain distinctiveness in non-English speaking territories.
The knowledge of English across the EU is judged on the following four cascading principles:
- English is widely understood in some countries, particularly Scandinavian nations. Courts accept that English words are common knowledge in these countries.
- Similar words make translation easy. If an English word closely resembles a word in someone's native language, courts assume they'll make the connection.
- Common English words are universally known. Courts consider that the general public will understand some very common and basic terms without needing a translation.
- Specialist audiences have technical English knowledge. In certain industries or sectors, English is the standard language used. Courts assume that people who buy products or use services in these fields will understand the relevant English terminology.
What does this mean for you?
- Brand owners should recognise that consumer understanding of foreign languages cuts both ways. Your descriptive term may be protectable in some territories, but the reverse is also true; you may face opposition or infringement claims from earlier rights holders who've already protected that same descriptive word there.
- Don't assume that because a word is descriptive in one EU language, it lacks protection everywhere in the EU. Clearance is key.
- The same applies to all languages, not just English. A word that would be deemed descriptive and unregistrable in Germany might not be treated in the same way in Italy.
