Kiss your mark goodbye

4th Mar 2020

A distinctive element sealed this decision, reports Charlotte Duly. B 3 075 718, Radio Blanca, S.A., v Cuneyt Ortan, EUIPO, 5th December 2019

goodbye written in lipstick

Cuneyt Ortan filed an EU application (the Application) covering classes 38 and 41 for the KISS FM logo. The Application received three oppositions, one of which has been decided, rejecting the Application in its entirety.

Radio Blanca, S.A. operates Kiss FM radio, which has been broadcast in Spain since April 2002. It opposed the Application on the basis of five national Spanish trade mark registrations under Article 8(1)(b) EUTMR, claiming a likelihood of confusion.

As the opposition was based on more than one earlier trade mark, the matter was first examined in relation to Spanish registration No. 2879817 for the KISS TV logo.

The services in classes 38 and 41 were found to be identical or similar. The radio broadcasting services of the Application were found to be similar to the Opponent’s television broadcasting services, as the nature and purpose can be the same and were found to be in competition to some extent. The relevant consumers overlap significantly, and it is not uncommon for the same company to operate in the fields of television and radio under the same name.

Education services provided by radio were found to have a low degree of similarity with electronic publications of books and newspapers online due to the proximity of the commercial fields and as both are distributed through the same channels to the same relevant public. The relevant territory for comparing the marks is Spain, with consumers displaying an average degree of attention.

KISS FM and KISS TV coincide with the KISS element, which has no meaning for a significant part of the Spanish-speaking public and is distinctive for the services covered. TV would be understood by the Spanish public as an abbreviation for the word “television” and descriptive of the services covered. The logo element of the earlier KISS TV mark was perceived as a TV screen and of low distinctiveness.

FM stands for “frequency modulation” both in Spain and throughout the EU. Like TV, due to its descriptive nature, it was also found to be weak. The red lipstick logo of the Application had no meaning in relation to
the services and was found to be distinctive.

Overall, the marks were found to be visually, aurally and conceptually highly similar. Neither mark had an element that was regarded as more dominant than the others but, as per previous case law, the verbal components were likely to have a stronger impact on the consumer than the figurative components; consumers were more likely to refer to the marks by the word elements. Both marks shared the initial identical verbal element KISS, and the colours black and red.

Based on a global assessment, there was found to be a likelihood of confusion on the part of the Spanish public. That decision isn’t a big surprise, but it does remind us that the relevant public can vary depending on the earlier rights relied on. That can then impact the assessment of the similarity of the marks at issue. At the time of writing, the decision had not been appealed.

Key points

A common English word may not have a meaning in other EU Member States, so bear this in mind when assessing similarity

Where services have overlapping distribution channels, this can lead to them being regarded as similar

Word elements form a key part of comparisons, even when large figurative elements are present

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