The EUIPO’s Opposition Division has upheld in its entirety the opposition filed by furniture giant Inter IKEA Systems BV against an application for the figurative mark IKIKI, filed by Chinese entity Shenzhen 0615vape Co Ltd (Opposition Nо B 3 215 006).
Background
On 8 April 2024 IKEA filed an opposition against EUTM Application No 18970200 for the below mark:
This application covered “rucksacks; backpacks; trunks [luggage]; bags; backpacks for carrying infants; handbags; bags for sports; purses” in Class 18.
The opposition was based on, among others, EU trademark registration No 1227645 for the figurative mark depicted below:
The opponent invoked Article 8(1)(b) and Article 8(5) of Regulation 2017/1001. However, the opposition was considered only in the context of Article 8(5) and, as the opposition was entirely successful on this ground, the EUIPO did not have to examine the remaining ground and/or earlier rights relied upon in the opposition.
The applicant did not make any submissions in response to the opposition filed.
Decision
The Opposition Division, in comparing the marks and reaching the conclusion that they were sufficiently similar for the opponent to rely on Article 8(5), discussed the differences in the degree of similarity required to invoke Article 8(5) compared with that required under Article 8(1)(b). The Opposition Division clarified that, for Article 8(1)(b), it must be shown that the marks are likely to be confused; in contrast, the existence of a likelihood of confusion between the marks is not necessary for the protection conferred by Article 8(5). Therefore, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, as long as the relevant public establishes a link between the two marks.
When comparing the marks visually, the Opposition Division concluded that the marks were visually similar to an above-average degree. The Opposition Division referred to the near identity of the figurative elements in the marks, both coinciding in their backgrounds of a white ellipse against a rectangular black frame and in the very similar black and bold typeface, positioned in a very similar – if not identical – manner inside of the white ellipse against a black frame. The near identity in the figurative elements in the marks clearly impacted the finding of an above-average visual similarity between the marks.
The Opposition Division then concluded that the marks were aurally similar only to a low degree and, as neither of the signs had a meaning, they could not be compared conceptually. The visually similarities between the marks were, therefore, very important in this case.
The Opposition Division displayed no hesitation in concluding that the evidence filed by the opponent to support the claim of reputation unequivocally demonstrated that the earlier mark IKEA had an outstanding reputation, at least in Sweden and at least for furniture in Class 20.
Finally, and in concluding that the relevant public would establish a link between the two marks, the Opposition Division found that the relevant consumers would, without doubt, be very familiar with the earlier mark and, that owing to the opponent’s reputation, there was a strong and distinct possibility that consumers would automatically link the opponent’s reputed furniture goods with all of the applicant’s goods:
"[A]lthough the signs are aurally only similar to a low degree and their conceptual comparison remains neutral, this is not sufficient to exclude a possible ‘link’. Even though the verbal elements ‘IKEA’ versus ‘IKIKI’ differ in terms of letters and sounds, their backgrounds, typeface and arrangement of colours entirely coincide. Furthermore, the earlier mark has an exceptional reputation."
The opposition was upheld in its entirety under Article 8(5).
Comment
The case serves as an important reminder of the importance of protecting the logo elements in a brand. In practice, emphasis is still often placed on the words used, but filing to protect the mark that is actually in use, particularly if the mark consists of words and logo elements, is crucial – even if the logo elements are not particularly creative or imaginative (being relatively simple geometric shapes in the case of IKEA’s earlier mark).
Here, the fact that the figurative elements in the applicant’s mark were essentially identical to the figurative elements in the opponent’s mark significantly influenced the finding that the marks were sufficiently similar for the opponent to invoke Article 8(5)and in concluding that the relevant public would establish a link between the marks.
