NOKIA v Kokiya: the letters of the law
The applicant, Shenzhen Road Zhengtong Trading Co. Ltd., filed to register an EU trade mark (EUTM) for the figurative mark, shown below, consisting of the word element “Kokiya” and a figurative element depicting a feminine silhouette. The application covers various goods in class 9, including “cell phones”. Nokia Corporation filed an opposition against the application based on a likelihood of confusion with its earlier trade mark registrations for “NOKIA”.
Comparison of goods and services
In relation to the comparison of the goods and services, the opposition division found that some of the goods covered by the application are identical or similar to the goods and services on which the opposition is based in classes 9, 38 and 42.
Comparison of signs
Turning to the comparison of the signs, the opposition division found that the signs are aurally similar to an average degree and visually similar to a low degree. Although the earlier mark “NOKIA” and the word element “Kokiya” both contain the string “O-K-I” and the final letter “A”, it was held that the different first letters “N” and “K” will have a stronger impact on the public. This is because consumers generally tend to focus on the first/initial element of a sign when being confronted with a trade mark.
The opposition division went on to note that although in principle when a sign consists of both verbal and figurative elements, the verbal element usually has a stronger impact on the consumer, in the present case, the figurative element in the contested sign is particularly striking due to its position, size and highly stylised depiction of a feminine silhouette. It was therefore held that the figurative element and the word element “Kokiya” are equally distinctive and important, and will equally catch the attention of the relevant public.
With regards the conceptual comparison, it was found that since the earlier mark “NOKIA” does not convey any meaning, the signs cannot be considered conceptually similar.
Likelihood of confusion
Nokia claimed that the earlier mark “NOKIA” has been extensively used and enjoys an enhanced scope of protection. For reasons of procedural economy, the opposition division did not examine the evidence provided, but proceeded on the assumption that the mark NOKIA has enhanced distinctiveness. Despite this and the identity of the goods and services in question, the opposition division concluded that in view of the notable differences between the signs, there was no likelihood of confusion. Consequently, the opposition was rejected in its entirety.
The opposition division noted that it is natural for brands to introduce new marks which incorporate the original “house” brand together with new verbal elements or stylisation. Interestingly it went on to comment that in the present case, the earlier mark “NOKIA” is not included in the contested sign, and so there is no reason for consumers to believe that the contested sign is a new version or an extension of the earlier mark, since there is no independent element being reproduced, but only isolated and scattered letters.
This decision shows that likelihood of confusion is assessed globally, taking account of several factors. Aural and visual similarity may not be sufficient for an overall finding of a likelihood of confusion, especially where the mark at issue contains other distinctive elements. The same outcome arguably may not have been reached if the contested sign consisted of the word element only without the figurative element.
Case details at a glance
Jurisdiction: European Union
Decision level: Opposition division
Parties: Nokia Corporation v Shenzhen Road Zhengtong Trading Co Ltd
Date: 05 March 2020