A kiss against a kiss

10 May 2019

Finding an available trademark is a big hurdle for many companies. The first step is conducting availability searches. For this reason Knijff developed Multisearch®, availability searches conducted by local agents but all in one format and with an overall opinion. In order to come to a practical and legal advice, we not only look at the legal risk but also focus on the business risk: is it likely that a trademark owner will take some action?

With these tools, you can predict the risks of a trademark. Sometimes, you just want to try and see whether an opposition is filed. Even known companies sometimes take the risk. In case of The Body Shop however, this had a negative outcome: the application of STRAWBERRY KISS was opposed by Dm-Drogerie Markt based on the earlier mark SUNNY KISS.

A kiss against a kiss. Which kiss will win? Both brands have the word KISS in them. On the other hand, SUNNY and STRAWBERRY differ. Are these trademarks similar?

Yes, says the EUIPO. KISS is the dominant word in both brands. SUNNY and STRAWBERRY say something about KISS. Now that KISS is a distinctive word and the brands each consist of two words, there is an average similarity in a visual and aural manner. Now that the products are similar too, there is reason to believe that confusion may occur.

And so, despite the fact that the trademark STRAWBERRY KISS seems to be used already, the application is canceled. Quite problematic for The Body Shop because acting against third parties who misuse the STRAWBERRY KISS name is very difficult without trademark rights.

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