Publications > Overall impression rules - Kinnie vs Kinji

Simonds Farsons Cisk plc v OHIM (Case T-3/04 24 November 2005)

This judgment clarifies that in a compound mark made up of a figurative and verbal part, the verbal component is not always dominant, and that what is important is the overall impression made on the mind of the relevant public.

The Opposition Division of OHIM upheld Simonds Farsons Cisk's ('SFC') opposition grounds against all the goods of the CTM application by the Belgian SA Spa Monopole NV ('SM') for the figurative mark KINJI by SPA, reproduced below. It was maintained that it was similar to the earlier registered CTM word mark KINNIE for identical or similar goods - non-alcoholic drinks; preparations for making beverages' (class 32) - and therefore likely to cause confusion to the relevant public. The application was accordingly refused on Article 8(1)(b) grounds of Regulation 40/94.

The mark and goods of the opposed application:

Class 29: 'Fruit pulp';

Class 32: 'Mineral and aerated waters and other non-alcoholic drinks containing fruit juice; non-alcoholic fruit drinks; non-alcoholic fruit extracts, fruit juices, syrups and other preparations based on fruit, fruit extracts or fruit pulp for making beverages'.

Both the First Board of Appeal, and then the Court of First Instance (CFI) showed rather more sense in determining that the marks are not similar and respectively annulling the Opposition Division's earlier decision and upholding this against appeal. Separately, the CFI dismissed the plea in law that the Board of Appeal had infringed Article 73 by not allowing an opportunity to the affected party to comment on a reason for the decision.

SFC's argument: Kinnie v Kinji

The original successful opponent, SFC (now the appeal applicant), argued that visually and phonetically the signs were very similar, taking into account the dominant component of the combined figurative and verbal mark, namely the word KINJI. They maintained that the main word component, KINJI, had a stronger impact on the mind of the public than the figurative component and that the adjunctive words 'by SPA' were diminutive, indicated origin, and would be ignored by the relevant public thus leaving KINJI as the dominant and most relevant part of the mark for comparison purposes. Both words, Kinji and Kinnie, shared the same eye-catching three letters KIN- and had similar length and structure, were made up of two syllables and had a similar sequence of letters and similar shape. The letter J might not be perceived as such and would be taken to read like an 'i'. Phonetically, in some Member States such as Sweden, Denmark and Holland, the 'j' would be pronounced as a 'y' and so pronunciation would be similar, i.e. 'Kinyi' and 'Kinnie'. Pronunciation, in turn, heavily influenced visual perception, more so than the shape of letters. Finally, conceptually there could be no comparison as neither word had any semantic content. In addition, given - it was claimed - that the goods in question, namely non-alcoholic fruit drinks, would be bought in bars and restaurants where the oral element was predominant and there would be minimal visual inspection, the phonetic similarity, following Lloyd Schuhfabrik would be highly determinative of likelihood of confusion. All in all, the opponent claimed, together with the 'high distinctiveness' of the invented word Kinnie, the identity or near identity (fruit pulp) of goods, there was a high degree of likelihood of confusion of goods when all factors of the circumstances of the case were taken into consideration.

Response of the CFI

The First Board of Appeal annulled the contested decision of the opposition division on appeal by the applicant. The CFI agreed with this decision when the opponent appealed against this reversal of position. The arguments were essentially as follows:

It was settled case law that the likelihood of confusion was to be assessed globally, taking into account visual, phonetic and conceptual similarity, based on overall impression and bearing in mind the distinctive and dominant components of the marks. Global assessment also implies some interdependence between the factors that need to be taken into account given all the circumstances, especially the similarity between the marks and the goods or services such that a lesser similarity in one can be offset by a greater similarity in the other (see Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33, and the case-law cited therein). Regarding the relevant public, given that the earlier mark was a CTM, the territory was the whole of the European community and the relevant consumer was an average European consumer since the goods in question were everyday goods. Regarding the conflicting goods, it was uncontentious that the goods were either identical or very similar.

The main analysis in the judgment dealt with visual comparison. The Court agreed with the Board of Appeal in finding that there were significant visual differences between the signs. The mark applied for was a compound sign made up of both figurative and verbal elements. The graphics of a Racoon wearing a T-shirt with the words 'Kinji' written on it, the stylisation of the letters of the main verbal element (in the style of bamboo sticks) and the words in small characters 'by SPA', cumulatively were 'eye-catching' and would attract the attention of the consumer. Neither did the Court find, contrary to SFC's contention, that the strong verbal element of SM's application, namely 'KINJI', had any close similarity to the word KINNIE. The two verbal elements had different lengths, their respective ends -nie and -ji were visually distinct and the doubling of the letter 'n' in KINNIE was 'particularly striking'. Use of a compound font in the form of bamboo sticks added to the visual differentiation, as did - again contrary to SFC - the words of the verbal element in small characters 'by SPA'. Analysing still further, the Court remarked that 'unlike the two-letter syllable 'ji' of the contested mark KINJI, the syllable 'nie' creates a perfectly symmetrical word in which the two central 'n's, the two 'i's and the letters 'k' and 'e' are perfectly balanced. That symmetry gives the word 'kinnie' a character which is visually different to that of the word 'kinji'.'

Importantly, the Court established that it did not always follow that it was the verbal element that always dominated a sign consisting of both verbal and figurative elements. It all depended on the 'overall impression' created on the mind of the public. Referring to the MATRATZEN case (Case T-6/01 Matratzan Concord v OHIM - Hukla Germany [2002] ECR II-4335, paragraph 33) it stated (in paragraph 46): "A compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it". Also, case law had established that in a compound sign the figurative element might actually occupy a position equivalent to the verbal element (cf. Case T-110/01 Vedial v OHIM - France Distribution (HUBERT) [2002] ECR II-5275, paragraph 53). Even if the verbal elements of the contrasted signs were similar (although not the case here) the overall impression conveyed by each sign might still be different due to the figurative elements.

Conceptually, the Court agreed with the Board of Appeal and judged that the graphic elements evoked various concepts, suggesting an association 'with nature or life in the wild' (the Jungle, in the words of the Board of Appeal). This differentiated the mark from the word KINNIE which had no semantic content.

Phonetically, on the other hand, the marks did, according to the Court and contrary to the Board of Appeal, have some similarity, at least in some languages. However, "the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods". The contention of SFC that the goods would be generally sold in such a way that the public would not perceive the mark visually (i.e. over the bar) was firmly rejected as being without substantiation. Besides, 'the visual and conceptual differences clearly cancel out the phonetic similarity'. Nor would pronunciation, more than the shape of letters, influence visual perception since the public perceives a mark as a whole and does not analyse its details (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23). Finally, the argument that the verbal mark KINNIE had a high degree of distinctiveness because of its inventiveness and therefore that this would add to the likelihood of confusion was rejected out of hand as there was no proof.

The CFI concluded that because of the visual and conceptual differences between the signs there were sufficient grounds for taking the view that there was no likelihood of confusion on the part of the relevant public. The Board of Appeal's contested decision was upheld. The procedural plea of alleging infringement of Article 73 did not cut any ice with the Court either. The Board of Appeal expressed its view on how drinks were ordered and sold in bars and restaurants without giving the parties an opportunity to comment. This was held not to be an independent reason for the contested decision but a part of the Board's reasoning. Article 73 therefore did not apply.

Proving likelihood of confusion (or mutatis mutandis infringement) where a 'compound' mark is involved is a tricky business. It is not enough to find a similar element in each, or indeed, an identical element in each to establish a prima facie clash. According to case law it is the 'overall impression' that is key. As this case shows, determining that overall impression is not at all easy. The reasoning, and the expression of the reasoning in this decision (similarly in cases such as MATRATZEN), provides the practitioner with a valuable kit of mental and lexical tools of argument to deal with similar tricky compound mark situations.

This article first appeared in the April 2006 issue of the ITMA Review