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Are KITCHEN HEROES K and HERO similar? Lithuanian IP office and EUIPO come to different conclusions

The Appeals Division of the Lithuanian State Patent Bureau has rejected an opposition filed by Hero AG against the registration of the figurative mark KITCHEN HEROES K by UAB Kedainiu Konservu Fabrikas. The mark KITCHEN HEROES K contained various verbal and graphic elements which created a different overall impression and outweighed the similarity of the verbal elements ‘hero’/‘heroes’.

Surprisingly, in parallel opposition proceedings between the same parties regarding the same marks, the European Union Intellectual Property Office (EUIPO) came to a different conclusion and upheld the opposition filed by Hero AG. The Opposition Division of the EUIPO stated that, although the mark KITCHEN HEROES K included additional verbal and graphic elements, the fact that both marks contained the similar verbal elements ‘hero’/‘heroes’ outweighed the differences.

Background

On 15 March 2018 the applicant, UAB Kedainiu Konservu Fabrikas, applied to register the figurative trademark KITCHEN HEROES K (No 79056), represented below, in Lithuania for goods in Classes 29 and 30:

On 12 November 2018 Hero AG filed an opposition with the Appeals Division, requesting the invalidation of the trademark KITCHEN HEROES K for all goods in Classes 29 and 30 based on its earlier figurative EU trademark HERO (No 000125765), represented below, which is registered for goods in Classes 29 and 30:

Hero AG stated that the registration of KITCHEN HEROES K would be in breach of Article 7(1)(2) of the Law on Trademarks. Hero AG argued that the mark was confusingly similar to its earlier trademark and would cause a likelihood of confusion due to the verbal element ‘heroes’, which dominated the overall composition of the later mark and was similar to the verbal element ‘hero’ of the earlier mark. The other verbal element, ‘kitchen’, was descriptive in relation to food products and was written in a smaller font size, while the graphic element consisting of a shield with the letter ‘K’ served only decorative purposes. Therefore, the consumers’ attention would be drawn to the element ‘heroes’, which was similar to the verbal element ‘hero’ of the earlier mark. In addition, the goods covered by the marks were similar. Accordingly, the similarity of the marks and the goods would create a risk of confusion.

UAB Kedainiu Konservu Fabrikas disagreed, stating that its mark consisted of a combination of verbal and figurative elements. The verbal element ‘kitchen’ was the first element of the mark and should not be ignored, as it created an indivisible unit with the word ‘heroes’ and both words would be read together as ‘kitchen heroes’. That expression had a different meaning (‘kitchen champions’), which was enhanced by the shield bearing the letter ‘K’. Therefore, the overall impressions of the marks were different and the marks were not similar.

Appeals Division decision

On 20 August 2019 the Appeals Division rejected the opposition based on the following arguments:

– The overall visual impressions created by the compared marks were different. The earlier mark consisted of a short word, ‘hero’, written in a stylised script, with a stylised letter ‘R’ against an oval background. In contrast, the contested mark consisted of various verbal and graphic elements. The shield with the letter ‘K’ was the biggest element of the mark from a visual point of view and was not negligible. The words ‘kitchen heroes’ formed a meaningful expression which did not directly describe the goods. As the average consumer usually perceives a mark as a whole and does not analyse its various details, the marks were dissimilar visually

– The marks would be pronounced differently due to their different beginnings and the fact that the word ‘kitchen’ was placed at the beginning of the contested mark.

– The marks were not similar conceptually, as the words ‘kitchen’ and ‘heroes’, written on two different lines, formed a meaningful expression which would be understood by the average Lithuanian consumer, while the verbal element of the earlier mark had a more abstract meaning, which would not be associated with ‘heroes in the kitchen’.

– Similarity cannot be analysed by taking into account the elements of the marks separately; the significance of each similarity criteria in the overall perception of the mark should be assessed, as well as the perception of the mark as a whole. In summary, the perceived meaning of the marks and the similarities between them were not sufficient to arrive at the conclusion that the contested mark was confusingly similar to the earlier mark.

– As the marks were not similar, it was not necessary to analyse the similarity of the goods.

The Appeals Division thus concluded that there was no likelihood of confusion.

The term to appeal the decision will expire on 20 February 2020. If no appeal is filed, the decision will become final.

EUIPO decision

Surprisingly, on 30 August 2019 the Opposition Division of the EUIPO upheld the opposition and refused to register KITCHEN HEROES K for goods in Classes 29 and 30 based on the following arguments:

– It agreed with the opponent that the verbal element ‘heroes’ was written in large characters, was striking and had a normal level of distinctiveness, while the element ‘kitchen’ was written in smaller characters and had weak distinctiveness in respect of food-related goods in Classes 29 and 30.

– Although the visual similarity may be considered as low due to the presence of the additional verbal element ‘kitchen’ and graphic element with the letter ‘K’ in the contested mark, the marks were considered to be aurally and conceptually similar.

– It was unlikely that the letter ‘K’ would be pronounced by the relevant public. Thus, the marks were aurally similar to an average degree.

– Due to the similar meaning of the elements ‘hero’ and ‘heroes’ and the weakness of the additional element ‘kitchen’ in the contested sign, the marks were conceptually similar to an average degree.

– The goods covered by the marks were identical and similar.

As the compared marks and goods were found to be similar, the Opposition Division concluded that a likelihood of confusion existed. As no appeal has been filed, the decision is now final.

Comment

The fact that two offices can come to different conclusions shows that the criteria for the evaluation of similarity vary depending on the national systems, opposition practices and language issues. This creates challenges for trademark practitioners when estimating the chances of success in potential disputes.

This article first appeared on WTR Daily, part of World Trademark Review, in Dec/2019. For further information, please go to www.worldtrademarkreview.com

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