Kors case goes off course

22nd Jul 2019

Nick Bowie reveals why an invalidity argument was unconvincing. 000015152, Michael Kors (Switzerland) International GmbH v Julong Wang, EUIPO, 30th April 2019.

000015152, Michael Kors (Switzerland) International GmbH v Julong Wang, EUIPO, 30th April 2019

This case concerns an invalidation action by Michael Kors (Switzerland) International GmbH (the Applicant) against EU registration No 14785141 of Julong Wang (the Proprietor) for the MIK logo, in relation to clothing and fashion accessory products in classes 9, 18 and 25. The Applicant relied on its earlier EU registration No 14273304 for the MK logo in invoking Article 60(1)(a) EUTMR in connection with Articles 8(1)(b) (likelihood of confusion) and 8(5) (unfair advantage or detriment to a reputation without due cause). 

The Applicant claimed that its business and MK logo have achieved worldwide recognition in the fashion and accessories industry over several decades. The Applicant submitted evidence of its reputation under its earlier mark, including but not limited to examples of printed and online media, internet archive pages depicting use of the mark in relation to bags and eyewear, brand recognition certificates issued by Spanish regional chambers of commerce, details of awards won by the Michael Kors brand and past decisions that acknowledge the fame and reputation of Michael Kors’ trade marks. 

The Cancellation Division (CD) reviewed the evidence both in the context of: (a) the Applicant’s reputation; and (b) whether its trade mark enjoyed broader protection as a result of high distinctive character obtained through market recognition. To prove that a mark enjoys a reputation, the Applicant is required to demonstrate a sufficient level of exposure to the relevant public of its reputation in the MK logo, whereas to demonstrate an enhanced degree of distinctiveness in a trade mark, it is not necessary to meet this higher threshold.  

The CD concluded that the majority of evidence referred to the use of the sign “Michael Kors” together with the depiction of products bearing the earlier mark “MK” (ie on bags, wallets, etc) and therefore the link between the capital letters “MK” and the house mark “Michael Kors” could be established. The CD determined that the evidence as a whole was sufficient to prove that the MK logo enjoyed an enhanced degree of distinctive character in relation to “handbags” but was insufficient as regards the extent of the relevant public’s awareness for reputation also to be considered proven. Therefore, Article 60(1)(a) relating to Article 8(5) EUTMR was dismissed.  

Reputation evidence

While the CD found identity between all goods, it held that the MK element of the Applicant’s trade mark would be recognised by the relevant public as the initials of the designer. Thus, despite being the dominant element of the trade mark, the MK element played a subordinate and dependent role to the wording Michael Kors. The CD held that the common terms M and K placed within a non-distinctive circle device produced a low degree of aural and phonetic similarity between the trade marks which, even given the identity of the conflicting goods and an enhanced degree of distinctiveness of the trade mark in respect of “handbags”, was insufficient to find a likelihood of confusion. 

Accordingly, the application for invalidity was dismissed in its entirety.

Key point

• It is customary for the relevant public of clothing to recognise a fashion designer’s initials as a trade mark, such that initials may play a subordinate and dependent role within a composite mark, despite being the dominant element 

Nick Bowie is a Director at Keltie LLP

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