Is this kangaroo jumping too close to another brand?

KangaROOS has been an established name in the world of sports footwear and apparel for decades.

The brand is inseparably linked to the stylised kangaroo that is registered as a figurative mark in numerous countries. When a surf-oriented clothing brand sought to register a new kangaroo holding a surfboard as a European trademark, the question arose how far the room for manoeuvre for using a kangaroo within the clothing and footwear sector actually extends.

The applicant opted for a side-view kangaroo with a surfboard under its arm, depicted as a simple black silhouette. At first glance, the addition of the surfboard appears to create a clear variation. However, despite this extra element, the overall impression was still considered similar.

In comparing the signs, the European Union Intellectual Property Office (EUIPO) found that the kangaroo itself is a distinctive element for these goods. The animal has no descriptive meaning and forms the visual focal point in both marks. The surfboard was taken into account, but only as a weak element that merely alludes to a surf or lifestyle theme. Minor differences in posture and design of the kangaroo were regarded as insufficient to create real distance between the marks.

As the similarities prevailed and the goods were identical, the EUIPO considered there to be a likelihood of confusion. Arguments referring to other existing registrations or to the reputation of the younger mark did not alter that assessment. Without concrete evidence that such marks genuinely coexist peacefully on the market, such claims remain abstract.

This decision shows that adding an extra detail to a mark is usually not enough where the core elements of the logos largely coincide. For fashion brands in particular, this remains an important consideration when developing and registering a strong and sustainable trademark strategy.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.