OPPOSITION No B 3 060 037

HI Limited Partnership, 1815 The Exchange, 30339-2040 Atlanta, United States of America (opponent), represented by Gill Jennings & Every Llp, The Broadgate Tower 20 Primrose Street, EC2A 2ES London, United Kingdom (professional representative)

a g a i n s t

Inversiones Melke 55 S.L., C/ Ortembach, 13-J, 03570, Calpe (Alicante). Spain (applicant), represented by Ars Privilegium S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 037 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 867 901 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 867 901 for the word mark ‘HOOT’. The opposition is based on, inter alia, European Union trade mark registrations No 15 198 121 for the figurative mark and No 5 845 961 for the word mark ‘HOOTERS’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 15 198 121 and No 5 845 961.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

European Union trade mark No 15 198 121 (earlier mark 1)

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; coffee essences; cereals; flour and preparations made from cereals; bakery products; bread; pastry; pastry cases; confectionery; non-medicated confectionery; ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; seasonings; flavourings; ice; breading mix and sauces; rice; pasta; prepared meals; pizzas; snack foods; pies; enchiladas, burritos and tacos; desserts; chocolate sauces; fruit sauces; frozen yoghurt; dressings for salads; sauces; savoury sauces; savoury pastes, powders and mixes; pastes, powders and mixes being bases for sauces and casseroles; pie mixes; cereal preparations; cornflour; starch; pepper; sauce mixes; preparations for making sauces, marinades and coatings; gravies, gravy mixes and preparations for making gravies; aromatic preparations for food; thickening agents for cooking foodstuffs; gravies and preparations for making gravies; rice-based snack foods; cereal-based snack foods; wheat-based snack foods; pasta-based snack foods; rice-based snack foods; snack foods prepared from maize; snack foods made from corn; snack foods made from potato flour; snack foods consisting principally of confectionery; snack foods consisting principally of grain; snack foods consisting principally of bread; snack foods consisting principally of maize flour; snack foods consisting principally of rice flour.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; cocktail lounge, cocktail bar and wine bar services; supply of ready-made prepared dishes or beverages for immediate use; information, advisory and consultancy services relating to all the aforesaid services.

European Union trade mark No 5 845 961 ‘HOOTERS’ (earlier mark 2)

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; shandy; de-alcoholised drinks; non-alcoholic beers and wines.

The contested goods and services are the following:

Class 30: Coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; flour; cereal preparations; bread; pastries; confectionery; edible ices; sugar; honey; golden syrup; yeast; baking powder; salt; mustard; vinegar; savory sauces used as condiments; spices; ice.

Class 32: Beer; mineral water (beverages); carbonated mineral water; non-alcoholic beverages; fruit-based beverages; juices; syrups for making beverages; preparations for making beverages.

Class 43: Hotels, hostels and boarding houses, holiday and tourist accommodation; boarding houses; holiday camps (accommodation); serving food and drink in restaurants and bars; carry out restaurant, and take out restaurant services; canteens; cafeteria services; self-service restaurant services; rental of temporary accommodation; temporary accommodation reservations; hotels and motels.

Contested goods in Class 30

Coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; flour; cereal preparations; bread; confectionery; edible ices; sugar; honey; yeast; baking powder; salt; mustard; vinegar; savory sauces used as condiments; spices; ice are identically contained in the lists of goods of the applicant and the opponent’s Mark 1 (including synonyms).

The contested pastries includes, as a broader category, the opponent’s pies of Mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested golden syrup is included in the broad category of the opponent’s treacle of Mark 1. Therefore, they are identical.

Contested goods in Class 32

Beer; juices; syrups for making beverages; preparations for making beverages are identically contained in the lists of goods of the applicant and the opponent’s Mark 2 (including synonyms).

The contested mineral water (beverages); carbonated mineral water; non-alcoholic beverages; fruit-based beverages are included in the broad category of the opponent’s mineral and aerated waters and other non-alcoholic drinks in Mark 2. Therefore, they are identical.

Contested services in Class 43

The contested hotels, hostels and boarding houses, holiday and tourist accommodation; boarding houses; holiday camps (accommodation); rental of temporary accommodation; temporary accommodation reservations; hotels and motels are included in the broad category of the opponent’s temporary accommodation in Mark 1. Therefore, they are identical.

The contested serving food and drink in restaurants and bars; carry out restaurant, and take out restaurant services; canteens; cafeteria services; self-service restaurant services are included in the broad category of the opponent’s services for providing food and drink in Mark 1.Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical target the public at large. The degree of attention is average.

3. The signs

Mark 1 HOOTERS 2) Mark 2	HOOT
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs will be understood in certain territories, in particular in those countries where English is understood. To take into account the semantic content of the elements in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in the United Kingdom, Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

The word of the contested sign ‘HOOT’ will be likely perceived as ‘the sound an owl makes’. This element is distinctive to an average degree, as it has no connection to the relevant goods and services or any of their essential characteristics.

The word ‘HOOTERS’, present in the earlier marks, will be perceived by the relevant public as, inter alia, ‘a person or thing that hoots, that is, that reproduces the sound that owls make’. Particularly in the case of Mark 1 which includes the depiction of an owl. As this word has no meaning for the relevant goods and services, it is distinctive to an average degree.

The figurative element of earlier mark 1, depicting an owl, will be perceived as such and will reinforce the perception of the word element as a reference to the sound that this animal produces. It has an average degree of distinctiveness in relation to the goods and services at issue. The graphic depiction of the letters of this mark is rather standard and will not distract the consumers’ attention away from the words it merely serves to embellish. Therefore, its degree of distinctiveness is limited.

Nevertheless, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Neither the earlier marks nor the contested sign have any elements that could be considered clearly more dominant than other elements. Indeed, one of the earlier marks and the contested sign are word marks which have no dominant elements because by definition they are written in standard typeface, while the remaining earlier figurative mark has no elements which could be considered clearly visually outstanding in comparison to the other elements in the marks.

However, it is important to note that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the contested sign ‘HOOT’ is entirely reproduced at the beginning of the earlier marks is very significant in the present case.

Visually, the signs coincide in the string of letters ‘HOOT’, the first four letters of the earlier mark and the whole verbal element of the contested sign. However, they differ in the last three letters ‘-ERS’ of the earlier mark. In the case of the earlier mark 1, the signs also differ in its figurative elements the impact of which, as noted above, is lesser.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HOOT’’, present identically in both signs. The pronunciation differs in the additional syllable and sound of the letters ‛ERS’ of the earlier mark, which have no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning (i.e. the sound of the owl and someone/something that perform that sound), the signs are conceptually similar to an average degree. The figurative element of earlier mark 1 only reinforces that perception.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are identical. They target the public at large and the degree of attention is average. The distinctiveness of the earlier marks is average.

The signs are visually, aurally and conceptually similar to an average degree inasmuch as the contested sign is entirely included at the beginning of the earlier marks and only differ in their suffix, where consumers pay less attention. Moreover, the verbal elements have the same root (i.e. hoot) which will trigger similar semantic associations. The figurative element (of earlier mark 1) merely reinforces the concept conveyed by its verbal element.

Therefore, on the basis of all the foregoing and taking into account that the average consumer only rarely has the chance to make a direct comparison between the marks, it must be concluded that the differences between the marks are not sufficient to counterbalance the similarity between them.

Moreover, the concept of likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings. It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image. In the present case, although the relevant public may detect the suffix of the earlier marks ‘ERS’, the likelihood that the public may associate the signs with each other is very real.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 15 198 121 and No 5 845 961. It follows that the contested trade mark must be rejected for all the contested goods and services. As these earlier rights leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michele M. BENEDETTI - ALOISI	Birgit FILTENBORG	Keeva DOHERTY

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.