Word elements count
The ruling shows that according to EUIPO the words Kettler and Nistac play an important role in both figurative marks. The word elements in a mark outweigh the figurative elements when comparing these types of figurative marks, says EUIPO. The consumer’s attention will first be drawn to these words. And because, in this case, those words aren’t alike at all, EUIPO thinks there is hardly any visual similarity. The opposition is rejected.
European case law
I just don’t share this opinion. But as much as you want to disagree with the view that both trademarks are visually dissimilar, the analysis, as such, is in line with case law in Europe. When assessing the similarity between two trademarks that consist of a combination of a word element and a figurative element, the word element generally has more impact than the figurative element.
But how do you, as a trademark owner, prevent yourself from falling into this trap? First, when registering your logo, consider whether certain (image) elements in the logo can function as a separate trademark. Although it’s always easy to say in hindsight, I still believe that Chiever would have advised Kettler to register that coloured K (also) separately as a trademark.
Of course, an additional trademark registration entails additional costs. Still, it’s worth it: it increases the scope of protection of the logo, and there is a good chance that Kettler could have stopped Nistac’s trademark by registering the separate K.