General Court swipes left on KinkySwipe trade mark

Proving that consumers know a specific word from a foreign language can be one of the most challenging endeavours in trade mark proceedings. In a recent decision of the General Court, the Match Group successfully enforced its ‘SWIPE’ trade mark against ‘KinkySwipe’ because the applicant could not establish that the Italian public understood ‘swipe’ as a descriptive term.

Background

In 2021, Karneolis LTD (‘Karneolis’) filed for registration of the word ‘KinkySwipe’ as an EU trade mark. The application covered services in classes 38 and 45, including ‘electronic transmission of data and documents among users of computers; chatroom services for social networking; dating services provided through social networking’.

Match Group LLC, the owner of dating apps such as Tinder, OkCupid and Hinge, was not amused and filed an opposition on the basis of its Italian trade mark ‘SWIPE’. It was registered for ‘dating services; internet based social networking, introduction and dating services’ in class 45.

The Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) upheld the opposition on the basis of a likelihood of confusion. The EUIPO’s Board of Appeal (‘BoA’) rejected the appeal.

Karneolis filed an action with the General Court.

The General Court's Decision

The judges dismissed the action.

They confirmed that the relevant public consisted of professionals and the public at large in Italy with an at least average level of attention.

The Court also confirmed that the services in question were either identical or similar to an at least average degree. Karneolis’ argument that the goods were dissimilar on account of the trade marks’ actual use in different sectors and because they addressed a different segment of consumers was rejected. In opposition proceedings only the registered services are relevant and not the actual use of the marks.

Regarding the similarity of the signs, the Court found that the marks in question do not have dominant elements. Word marks consist entirely of letters, words or associations of words, which are written in printed characters in a normal font without any specific graphic element. Such marks do not have a dominant element since no element has a particular graphic or stylistic aspect.

As to the distinctive elements, the General Court concurred with Karneolis that ‘Kinky’ and ‘Swipe’ are English words that will be understood by the English-speaking public. However, the relevant public consists of Italian consumers and knowledge of a foreign language may not be assumed.

Karneolis argued that 44 % of EU citizens consider themselves able to have a conversation in English. The judges concluded that a non-negligible part, including Italians, does not understand English.

The words ‘kinky’ and ‘swipe’ do not exist in Italian and do not resemble their equivalents in that language. They are also not part of the basic English vocabulary as evidenced by the fact that they are not categorized as part of the basic level of English according to the Common European Framework of Reference for Languages (levels A1 and A2).

Karneolis submitted evidence on the use of ‘kinky’ and ‘swipe’, inter alia, on websites and in articles. The judges were not convinced because the evidence did not contain data on the understanding of the Italian public of those words.

The Court argued that even if it were accepted that ‘swipe’ has become commonplace in the field of technology or on the market for touchscreen devices, it could still not be established with certainty that it would also be understood by Italian-speaking consumers who do not understand English.

As a consequence, the Court confirmed that the terms ‘kinky’ and ‘swipe’ had no meaning for the relevant public and were of average distinctive character.

On that basis, the judges found that the signs ‘SWIPE’ and ‘KinkySwipe’ had an average level of visual and phonetic similarity due to the common element ‘swipe’. This was supported by consistent case law, according to which the inclusion of the entire earlier mark in the contested sign creates at least some similarity. Even though ‘Kinky’ is placed in the beginning of the later mark, the common element ‘swipe’ will not go unnoticed.

Taking into account an average level of distinctiveness of the earlier mark the judges found that there was a likelihood of confusion.

Comment

The decision shows the legal challenges in a diverse and multilingual territory such as the EU. It is fair to assume that the term ‘swipe’ has been adopted by a large part of the consumers but the decisive questions are: Can you prove it and is there a non-negligible part that still does not know that word?

Establishing that a part of the public – even a large part – knows a specific word will not be sufficient to defend against an opposition because for an opposition to succeed it is enough if a likelihood of confusion exists for a non- negligible part of the public. The only solution in such cases is an invalidity application against the earlier mark. To be successful, a non-negligible part of the public must understand the sign as descriptive – the same public that is not enough to defend an opposition. The issue with this solution is that the lack of distinctiveness/descriptiveness must be established for a different point in time: In opposition proceedings, the descriptiveness must be established for the filing/priority date of the contested trade mark (or, depending on the outcome of the EUIPO v Nowhere proceedings before the Court of Justice of the EU (IPKat here), the decision date). The descriptiveness in invalidity proceedings must be established for the filing/priority date of the earlier mark, which can be decades in the past. While evidence for the former is usually easy to find, evidence for the latter date might be very challenging to obtain.

The General Court’s case law on the understanding of foreign languages was summarized as follows in another recent decision (T-1154/23; case law citations omitted):

As EUIPO’s representative pointed out at the hearing, the case-law has recognised four types of situations in which linguistic knowledge of a foreign language, in the present case English, may be regarded as a well-known fact.

First, a basic understanding of English on the part of the general public in certain Member States, such as, for example, the Scandinavian countries, is a well-known fact […].

Second, if the English terms have an equivalent in the language of the non-English-speaking public and a link may be established by that public between those terms and their translation into the language concerned, then that public must be held to understand their meaning […].

Third, many consumers in the European Union know basic English vocabulary, from which it can be assumed that that public understands terms forming part of basic English vocabulary […].

Fourth, knowledge of a term in the English language may be assumed on account of the specific knowledge available to the consumers targeted by the goods and services concerned, in accordance with the use of English in certain sectors […].

 

The picture is by Sami Abdullah and used under the licensing terms of pexels.com.