EU General Court Affirms English Trade Marks Must Pass A1–A2 Bar

In Karneolis LTD v. EU Intellectual Property Office and Match Group LLC,[1] the EU General Court ruled in favour of Match Group LLC, the dating app conglomerate that owns and operates, among others, Tinder, Hinge, and OkCupid, in a trademark opposition brought against Cypriot company Karneolis LTD’s EU trademark application for KINKYSWIPE, on the basis of Match Group’s earlier Italian trademark registration for SWIPE. While “swipe” has been deemed descriptive of dating services at the EU level due to its meaning in English and Dutch, the court held that it is not a “basic English word” likely to be understood by the Italian public, for whom SWIPE is therefore distinctive.

BACKGROUND

In 2022, Match Group opposed Karneolis’ EU trademark application for KINKYSWIPE for dating services on the grounds of, among other things, the likelihood of confusion with its earlier Italian trademark registration for SWIPE. As a defense, Karneolis submitted that both “swipe” and “kinky” were “basic English words.” The former would be understood by the Italian public as merely descriptive of dating services; the latter, as a reference to “an aesthetic and cultural movement,” having gained popularity in Berlin.

The applicant argued that the opposition should be rejected, the marks at stake sharing only the descriptive term “swipe.” The EU Intellectual Property Office’s (EUIPO’s) Opposition Division and Board of Appeal rejected this reasoning and upheld the opposition.

DECISION

The EU General Court confirmed the Board of Appeal’s assessment and dismissed Karneolis’ action.

The court found that neither “swipe” nor “kinky” are “basic English words,” since neither are classified by the Oxford English Dictionary or the Oxford Learner’s Dictionary in categories A1 or A2 of the Common European Framework of Reference for Languages (CEFR), corresponding to the basic level of English.[2]

The applicant did not provide evidence demonstrating that the Italian public would nonetheless understand the meaning of these terms, nor showing “swipe” being used in Italy without its Italian translation “scorri.”[3] Notwithstanding the applicant’s argument that 44% of EU citizens can converse in English,[4] and while parts of the Italian public, including the under-35, tech-savvy Italian users of Tinder, or the “swinger” or “kinky” communities, might understand either of these terms, the court concluded that a non-negligible part of the Italian public would perceive them as meaningless.[5]

The court recalled that, according to settled case law, a validly registered earlier right has a minimum degree of inherent distinctiveness by mere virtue of its registration.[6] While previous EUIPO decisions have found “swipe” not to be distinctive in relation to dating services, none were based on the perception of the Italian-speaking public.[7]

COMMENT

The Council of Europe’s CEFR classifies language proficiency into three categories: Basic User (A1–A2), Independent User (B1–B2), and Proficient User (C1–C2). Dictionaries label certain words accordingly. By way of example, the Oxford 3000 lists the 3,000 most important (i.e., most frequently used) English words, using the CEFR classification (900 are classified as A1 and 872 as A2). Words with multiple meanings may span across different CEFR levels, with a commonly understood meaning being classified A1–A2 and a more specialized meaning, B1–C2.

In recent decisions, the EUIPO has relied on online dictionaries’ labels to conclude that EU consumers whose national language is not English may be presumed to understand only A1–A2 English words—but not B1 to C2 words. For English words with multiple meanings, only basic A1–A2-level meanings may be presumed to be understood by non-English-speaking EU consumers.

The General Court has confirmed this approach, providing a useful framework to assess EU consumers’ understanding of English for parties seeking to register or enforce trademarks for or including English words in the EU. This framework may be nuanced, however, in consideration of the relevant public’s particularities, where applicable. The judgment also suggests that the presumption may be reversed by providing evidence that a non-basic English word will be understood nonetheless—for example, if it is used without a translation in the concerned member state. Providing such evidence may prove challenging for France, where the Loi Toubon requires that all English words used in communications be accompanied by a legible French translation.  

PRACTICAL IMPLICATIONS

Businesses relying on English-language EU marks should assess whether online dictionaries label them as A1 or A2 words based on the CEFR. English words outside the A1–A2 categories cannot be presumed to be understood by non-English-speaking EU consumers. For brand owners, this opens avenues to defend national distinctiveness as part of a robust European trademark enforcement strategy, from filing conversion applications where an EU mark is found descriptive for part of the EU only to basing an opposition on an earlier national mark holding a greater degree of distinctiveness in a specific member state.

KEY TAKEAWAYS

• The European Union Courts and Offices assess the distinctiveness, descriptiveness, or conceptual meaning of a trademark containing word elements by reference to the relevant public’s understanding, based on the official language(s) of their home country. In the European Union, a mark held descriptive in one member state may be found meaningless—and thus distinctive—in another.
• Regardless of their primary language, EU consumers are presumed to be familiar with, and to understand the meaning of, “basic English words.” According to the European Commission, 47% of Europeans claim they can converse in English.
• The EU General Court has defined “basic English words” as those classified by online dictionaries in categories A1 or A2 of the Common European Framework of Reference for Languages, providing a useful framework for identifying which English words will likely be understood by EU consumers and which will not.