Lost in translation: EU General Court swipes left on “KinkySwipe” EU trade mark application
The EU General Court has dismissed a claim by the Cypriot company Karneolis LTD against the rejection of its EU trade mark application for the word sign “KinkySwipe”, on the basis of likelihood of confusion with online dating giant Match Group’s earlier Italian trade mark “SWIPE”.
Match Group had filed an opposition against an EUTM application by Karneolis for the word sign “KinkySwipe” covering communication services, including, amongst others, provision of access to internet platforms for the purpose of exchanging digital photographs and chatroom services for social networking in Class 38, and dating services provided through social networking in Class 45.
The opposition was based on Article 8(1)(b) of the EU Trade Mark Regulation (2017/1001) (EUTMR), claiming a likelihood of confusion with the earlier registration for SWIPE, registered in Italy for identical services in Class 45.
The General Court agreed with the EUIPO Board of Appeal that the relevant public was the general public and/or professionals with at least an average level of attention, and that the relevant territory was Italy, as this was the country in which Match Group LLC’s earlier trade mark for SWIPE had been registered.
After assessing the overall impression produced by the signs, the General Court agreed with the Board that there was a likelihood of confusion.
On its way to that decision, the General Court found that at least a non-negligible part of the relevant public in Italy would perceive the terms “kinky” and “swipe” as meaningless and that the presence of the “kinky” element, despite its position at the beginning of Karneolis’ mark, was not sufficient to exclude any risk that the relevant public might believe that the services in question originated from the same undertaking or from economically linked undertakings.
This decision shows the importance of considering how specific words in a trade mark would be understood by the relevant public, and highlights the challenge faced by applicants when it comes to establishing that the relevant public in the various EU Member States understand the sematic content of marks.
It is established case-law that the relevant public in the various EU Member States mainly speak the languages that are predominant in their respective territories (See Case T‑6/01 Matratzen Concord EU:T:2002:261, at [27]).
The EUIPO guidelines give some examples of scenarios in which languages other than the predominant one can be considered by Examiners, as set out below:
- When the word in another language is very close to the equivalent word in the official language of the relevant territory, e.g. the English word “bicycle” would be understood in Spain because it is very close to the Spanish equivalent word “Bicicleta”.
- When the word in a foreign language is commonly used in the relevant territory, e.g. the Spanish word “bravo” is commonly used as a term denoting praise, in the sense of “well done” in Germany.
- When it is known that the relevant public is familiar with a foreign language, e.g. the General Court has confirmed that the general public in the Scandinavian countries, the Netherlands and Finland, has at least a basic understanding of the English language (See Case T-435/07 New Look EU:T:2008:534 at [23]).
- When it is known that the relevant public is familiar with a language for certain classes of goods and/or services, e.g. English IT terms are normally understood by the relevant public for IT goods and services, irrespective of territory.
- Very basic words, which will be understood in all Member States because they have become internationally used, such as “baby”, “love”, “one”, “surf”, the Italian word “pizza”, etc.
- Finally, when any one of the parties submits evidence that a word is known by a relevant portion of the relevant public.
Karneolis submitted that the term “swipe” had become commonplace in the field of technology; in particular, in relation to touchscreen devices. However, the General Court said even if it accepted that submission, the evidence did not establish with certainty that the term would also be understood by Italian-speaking consumers who did not understand the English language.
Karneolis also claimed that the meaning of the word “swipe” would be understood by Italian-speaking consumers because it was used as a technological term in the context of the Tinder dating application, an argument presumably based on scenario (v) listed above. However, as the General Court noted, the perception of the respective signs had to be examined considering the services covered by those signs, whereas the specific conditions under which those services were provided were not relevant to that examination: in the current case, the description of the services covered by the earlier mark SWIPE were not limited to the services provided by the “Tinder” dating application.
Case reference: Case T-332/24 Karneolis LTD v EUIPO EU:T:2025:489 (14 May 2025)
Our full article on this case will appear in Entertainment Law Review Issue 7 published in August 2025
