- Michael Kors fails to stop ‘Micarel Kmor’ trademark
- UK IP Office holds there is no likelihood of confusion
- Case comes after Sex & the City shoe designer Manolo Blahnik wins 22-year legal fight over China trademark
Michael Kors (Switzerland) International GmbH, the luxury brand, has failed in its attempt to invalidate the trademark “Micarel Kmor”.
Hong Kong company, UK MK INT’L LIMITED, registered the words “MACAREL KMOR” in various classes including for cosmetics and perfumes (Class 3), jewellery (Class 14) and bags; fur; trimmings of leather for furniture; umbrellas; walking sticks; leather leashes; school bags; travelling trunks; handbags; business card cases (Class 18)
Michael Kors, the luxury brand, sort to have UK MK INT’L LIMITED’s Trade Mark declared invalid.
Michael Kors claimed that that “there is a likelihood of confusion because the marks are visually and phonetically similar, and the goods are identical or highly similar.”
UK MK INT’L LIMITED filed a counterstatement denying the claims that the marks are similar but admitted that the goods of their trade mark are all either highly similar or identical to the goods of Michael Kors’ earlier trade mark.
The U.K. Intellectual Property Office (UKIPO) ruled that visual similarities between “Michael Kors” and “Micarel Kmor” were not sufficient to confuse customers.
The UKIPO considered that these two words, together, will be recognised as a first name and surname and “…as a general rule, surnames are more distinctive than forenames and that the surname KORS appears to be more unusual than the forename MICHAEL. However, it is also true that the consumer tends to pay more attention to the beginning of marks. Therefore….the overall impression of the mark lies in the combination of these elements.”
The UKIPO pointed out that confusion can be direct or indirect. “Direct confusion involves the average consumer mistaking one mark for the other, while indirect confusion is where the average consumer realises the marks are not the same but puts the similarity that exists between the marks and the goods down to the responsible undertakings being the same or related.”
The ruling further points out that “there is no scientific formula to apply in determining whether there is a likelihood of confusion; rather, it is a global assessment where a number of factors need to be borne in mind. The first is the interdependency principle i.e. a lesser degree of similarity between the respective trade marks may be offset by a greater degree of similarity between the respective goods and vice versa. It is necessary.. to keep in mind the distinctive character of the earlier mark, the average consumer for the goods and the nature of the purchasing process. In doing so, I must be alive to the fact that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them that he has retained in his mind”.
The UKIPO went on to hold: “…the marks are unlikely to be mistakenly recalled or misremembered as each other. I do not consider that the average consumer would overlook the differing letters in the middle of the marks, especially as the effect is to change invented words to a full name (or vice versa), which creates a clear conceptual hook in which to differentiate the marks. Consequently, I do not consider there to be a likelihood of direct confusion.
Having noticed that the competing trade marks are different, I see no reason why the average consumer would assume that they come from the same or economically linked undertakings. I do not consider that the average consumer would think the applicant’s trade mark was connected with the proprietor or vice versa. They are not natural variants or brand extensions of each other. Consequently, I consider there is no likelihood of indirect confusion.”
The UKIPO accordingly dismissed Michael Kors’ challenge and ordered the fashion brand to pay UK MK Int’l Ltd’s legal costs.
https://www.ipo.gov.uk/t-challenge-decision-results/o81322.pdf
Sex & the City shoe designer Manolo Blahnik victory in 22-year legal fight over China trademark.
The decision comes after the recent victory of Sex & the City shoe designer Manolo Blahnik who won a 22-year legal fight over China trademark.
Manolo Blahnik, Spanish fashion designer and founder of the eponymous high-end shoe brand, won the right to use his name in China for the first time, paving the way for the brand’s expansion.
Monolo Blahnik started his business in London in 1971 and became a household name through HBO’s Sex and the City.
The Supreme People’s Court of China, China’s highest court, cancelled a trademark incorporating the Manolo Blahnik name that has been owned by Chinese businessman Fang Yuzhou.
Manolo Blahnik is now able to sell his brand in the world’s fastest-growing luxury market.
“This is a meaningful victory for my uncle, our family and our team and I want to express gratitude to the Supreme People’s Court of China for its thorough and careful consideration of our long-standing case,” Chief Executive Kristina Blahnik, the niece of founder Manolo Blahnik, said.
China has a “first to file” trademark system which has meant that several foreign companies have found that their names have already been registered in China by companies looking to sell trademarks when those businesses enter China. Intellectual property theft has long been an issue between China and its trade partners. China’s “first to file” jurisdiction meant Fang’s claim to the Manolo Blahnik name as the first person to trademark it in the China market in 1999 was long found to be stronger under Chinese law.
Amendments designed to strengthen trademark legislation were implemented in China in November 2019 taking aim at so-called “bad faith” filings. This has led to some high profile wins for international brands in recent years.
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