This article first appeared on WTR Daily, part of World Trademark Review, in May, 2019. For further information, please go to www.worldtrademarkreview.com
- Kona USA Inc opposed registration of Hyundai’s mark KONA for “automobiles” based on earlier mark KONA for “bicycles”
- Intellectual Property Office upheld opposition, finding that goods fell within same general category
- Court of Appeal confirmed that goods belonging to same general category can be considered as similar
The French Court of Appeal has issued its decision in Hyundai Motor Company v Director General of the French Intellectual Property Office (30 October 2018), which concerned two identical KONA marks.
On 9 October 2017 the French Intellectual Property Office upheld the opposition upheled by Kona USA Inc against Hyundai Motor Company’s international trademark registration KONA (No 1331235), covering “automobiles”, on the basis of the EU trademark (EUTM) KONA (No 311449), covering “bicycles and
structural parts thereof”, thereby refusing protection to Hyundai’s international registration designating France.
Hyundai then formed an appeal, contesting the opposition decision issued by the Intellectual Property Office. It considered that the conclusion that the goods in question formed part of the same general category, namely “apparatus for locomotion by land”, was insufficient to find a similarity between the
Court of Appeal decision
However, the court found that goods belonging to the same category can be considered as similar. The “automobiles” covered by the contested trademark application and the “bicycles” covered by the EUTM have the shared purpose of transporting people. Moreover, the evolution of bicycles into the field of
electric bicycles further increased the similarities between the goods. The court also held that “bicycles”
and “automobiles” can both be distributed by the same companies.
The court further noted that, even if the relevant public possesses a high degree of attention when purchasing automobiles (more so than when purchasing bicycles), there nevertheless existed a risk that the relevant consumers would attribute a common origin to products bearing an identical trademark possessing distinctive character.
As such, the court decided that there was a risk of confusion between the two signs and dismissed the appeal.
Through this decision, the court reiterated that different products falling within the same general category can be considered as similar, with the risk of confusion being reinforced when the signs in question are identical and possess distinctive character. The judgment highlights the importance of
considering the nature of the goods and the relevant general category to ensure that a risk of confusion does not exist, particularly where the trademark owner is capable of capitalising on its rights in numerous related fields. In addition, the commercial dimension of the risk for Hyundai was further increased as it had failed to take into consideration the fact that the owner of the EUTM KONA exploited
the mark under the name Kona.
Automobile manufacturers should take note of this decision, as it demonstrates that the judges are willing to apply an abstract vision of the market by finding that automobiles and bicycles are similar. The decision shows that automobile manufacturers should exercise caution when carrying out trademark
searches, and take into consideration the similarities identified in the judgment between bicycles (and structural parts thereof) and automobiles.
Franck SOUTOUL, European Trademark Inlex Africa
Marianna Kull, IP Lawyer Inlex IP Expertise