Fashion Faux Pas – The Battle of the MKs

The General Court has upheld a EUIPO Board of Appeal decision invalidating an EU figurative trade mark featuring the letters “MK” and the words “MICHAEL MICHELE” (shown below on the left) on the basis that it took unfair advantage of a well-known fashion brand’s earlier EU figurative mark featuring the letters “MK” and the words “MICHAEL KORS” (shown below on the right).

The following forms of evidence, amongst others, had been submitted by Michael Kors as demonstrating genuine use of the earlier EU figurative mark:

The Court found that genuine use of the earlier EU figurative mark had been established, confirming that consumers would see the mark as registered and the different use variations shown above as equivalents.

This judgment reminds us that a trade mark proprietor will still be regarded as having put its mark to genuine use where the mark has been used in trade in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.  This is of particular importance in the fashion sector where the key element(s) of registered figurative marks and logos may be used differently according to the type of product to which they are attached, not just serving a decorative function but also constituting a badge of origin.

The decision also illustrates that, although it may be that a surname generally has a higher distinctive character than a forename in parts of the EU, account must nevertheless be taken of the factors specific to the case and, in particular, of whether the surname in question is uncommon or, on the contrary, very widespread, which is likely to affect that distinctive character.  In a composite mark, a surname will not retain an independent distinctive position in all cases, solely because it will be perceived as a surname, because such a finding can only be based on an examination of all the factors relevant to the individual case.  Therefore, it is erroneous to think that, in a mark composed of the first name and surname of a person (real or fictitious), the surname always has a higher distinctive character than the first name.

Case reference: Tecom Master SL v EUIPO (T-1053/23) EU:T:2025:53 (22 January 2025)

Our full article on this case will appear in Entertainment Law Review Issue 4 published in May 2025.