The recent ruling by the EU General Court in Karneolis LTD v. EU Intellectual Property Office and Match Group LLC underscores the complexities of trademark law, particularly concerning issues of trademark confusability and monitoring for businesses operating within the European Union (EU). The case involves a dating app conglomerate and a Cypriot company, Karneolis LTD, contesting the distinctiveness of the term "SWIPE" as a trademark for dating services.
Background: The Case at Hand
In 2022, Match Group opposed Karneolis’ EU trademark application for "KINKYSWIPE," arguing that it would cause confusion with its pre-existing Italian trademark registration for "SWIPE." Match Group contended that "swipe" is a descriptive term commonly associated with dating services due to its widespread usage in English and Dutch. However, the court ruled in favor of Match Group, determining that "swipe" was not considered a "basic English word" likely to be understood by the Italian public.
The Nuances of Basic English Words
The ruling hinges on the definition of "basic English words," as outlined in the Common European Framework of Reference for Languages (CEFR). According to this framework, proficiency is categorized into three levels: Basic User (A1 - A2), Independent User (B1 - B2), and Proficient User (C1 - C2). Words classified as A1 or A2 are considered "basic English words" and are typically understood by the majority of EU consumers.
The court emphasized that while 47% of Europeans claim proficiency in English, non-English speaking member states like Italy may struggle to understand more nuanced meanings of certain terms. For instance, "kinky" was argued by Karneolis to be associated with a cultural movement in Berlin, but the court found no substantial evidence to support its understanding by the Italian public.
CEFR and EU Courts: A Framework for Understanding
The EU General Court has adopted the CEFR classification as a guideline for determining which English words are likely to be understood by EU consumers. Words classified as A1 or A2 are presumed to be familiar to non-English speakers, while those in higher categories (B1 - C2) may not be. This framework provides a practical approach for businesses seeking to register or enforce trademarks containing English terms.
However, the court acknowledged that this presumption may not hold for specific member states with unique linguistic or cultural contexts. For example, France’s Loi Toubon requires all English words in commercial communications to be translated into French, complicating the assessment of trademark distinctiveness.
Practical Implications for Businesses
The ruling underscores the importance of assessing the distinctiveness of English terms within the EU. Businesses relying on English-language trademarks should evaluate whether these terms fall into the A1 - A2 category based on online dictionaries and CEFR guidelines.
Additionally, companies may need to consider filing conversion applications or leveraging earlier registered marks with higher levels of distinctiveness in specific member states. This strategic approach ensures compliance with EU trademark laws while protecting brand identity.
Key Takeaways
European Trademark Law: The EU General Court’s decision reaffirms the importance of understanding linguistic nuances when registering trademarks across member states.
Basic English Words: Terms classified as A1 or A2 under CEFR are presumed to be understood by most EU consumers, while higher categories may not.
Monitoring and Strategy: Businesses should conduct thorough assessments of their trademarks using CEFR guidelines and consider regional differences when developing enforcement strategies.
Evidence and Compliance: Providing evidence of how non-English speaking populations understand specific terms can challenge or strengthen trademark oppositions, as seen in the Karneolis case.
Legal Considerations: For member states with unique linguistic requirements, such as France, businesses must navigate additional legal frameworks like Loi Toubon to ensure compliance and protect their trademarks.
Conclusion
The Karneolis v. Match Group ruling highlights the intricate balance between trademark protection and linguistic understanding in the EU. As businesses continue to operate within this complex legal landscape, a deeper understanding of CEFR classifications and regional differences will be crucial for maintaining brand integrity while complying with EU intellectual property laws.