OPPOSITION No B 3 127 339

Hasan Ismaik, P.O. Box 9275, Dubai, United Arab Emirates (opponent), represented by Taylor Wessing, Hanseatic Trade Center Am Sandtorkai 41, 20457, Hamburg, Germany (professional representative)

a g a i n s t

Guy R. Cloutier, 11 quai de la Gironde, 75019, Paris, France (applicant).

On 21/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 127 339 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

On 03/08/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 240 507 , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 18 155 873 ‘HI HI’ (word mark). 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.

a) The goods

The goods on which the opposition is based are the following:

Class 25: Clothing; Footwear; Headgear; Coats; Waistcoats; Trench coats; Jackets [clothing]; Blazers; Sports jackets; Sweaters; Sleeveless jerseys; Sweat shirts; Shirts; Trousers; Shorts; Denim jeans; Pants; Skirts; Ladies' dresses; Suits; Bathing suits; Bath robes; Scarves; Headbands [clothing]; Belts [clothing]; Neckties; Shawls; Bandanas [neckerchiefs]; Knitted caps; Gloves [clothing]; Underwear; Lingerie; Socks and stockings; Pyjamas; Knitwear [clothing]; Rainwear; Hats; Caps being headwear; Shoes; Boots; Ankle boots; Sports shoes; Sneakers; Pumps [footwear]; High-heeled shoes; Sandals; Wooden shoes; Slippers.

The contested goods are the following:

Class 25: Clothing.

Clothing are identically contained in both lists of goods.

b) 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 found to be identical are directed at the public at large whose degree of attention is considered to be average.

c) The signs

HI HI
Earlier trade mark	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 earlier mark is a word mark which consists of the elements ‘HI HI’ which has no dominant elements because, by definition, word marks are written in standard typeface. Where a mark is registered as a word mark, the typeface actually used by the office concerned in the official publication is immaterial.

Although for a part of the public the element ‘HI HI’ is meaningless, it cannot be denied that for the English-speaking part of the public or for those relevant consumers of the European Union which perceives the basic English word ‘HI’, this element ‘HI’, repeated twice, refers to an informal way to greet someone or an informal word for ‘hello’. Furthermore, another part of the public might perceive the verbal element ‘HI HI’ included in the earlier mark as an interjection of laughter. In any case, since ‘HI HI’ has no relation to the relevant goods, it has an average degree of distinctive character.

The contested mark is a figurative mark which consists of the representation of a cartoon of what seems to be an animated jellyfish depicted in pale blue and green colours surrounded by a blue emanation and a pale blue tail. It includes a friendly face with eyes and a big smile occupying a central position within the sign. Below this element and in a much smaller size, the word ‘Hi’ is written in slightly stylised blue letters. All these elements are placed against a background representing the universe space with stars and, at the bottom of the sign, there are traces in pale blue.

The figurative element representing the cartoon of the animated friendly jellyfish included in the contested trade mark overshadows the verbal element ‘Hi’ of the mark, by virtue of its central position and size. Therefore, in this case, the central figurative element is the visually dominant element of the contested trade mark.

As regards the term ‘Hi’, as stated above, a part of the public might perceive it as the informal way to greet someone or the informal word for hello, whereas for another part of the public this term is fanciful. Be that it may be, since it has no relation to the relevant goods in Class 25, it is therefore distinctive.

As regards the figurative element of the animated friendly jellyfish placed against the universe space, it has no meaning in relation to the relevant goods and it is also normally distinctive.

Visually, the signs merely coincide in the letters ‘Hi’ however they differ in the double ‘HI’ included in the earlier mark. The signs also differ in the figurative element of the contested mark representing an animated friendly jellyfish, which is the dominant element, as well as in the colours, stylisation and graphical representation of the elements within the contested mark, which are striking, and will not be overlooked by the relevant consumers. Therefore, the signs are visually similar to a very low degree, contrary to the opponent’s arguments.

Aurally, for the English-speaking part of the public, the earlier mark will be pronounced as /haɪ-haɪ/ whereas the contested mark will be pronounced as /haɪ/. For those consumers, the pronunciation of the signs coincides in the sound of the letters /hi/ nevertheless it differs by the fact that the earlier mark includes the same repeated sound of the letters /hi/.

For the remaining part of the public, the earlier mark will be pronounced as /i-i/ whereas the contested mark will be pronounced as /i/ since the letter /h/ is almost mute when pronounced by that part of the public. In such a case, the pronunciation of the signs coincides in the sound of the letter /i/ whereas it differs in the repeated sound of the letter /i/ included in the earlier mark.

Although the signs share the same sound of letters /hi/, the fact remains that the earlier mark contains double the sound of these letters which has an impact in the rhythm and intonation of the signs under comparison. Therefore, the Opposition Division considers that, contrary to the opponent’s observations, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public that will not perceive the meaning of the verbal elements included in both marks, the earlier mark lacks any meaning whereas it will perceive the image of the animated friendly jellyfish included in the contested mark. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For another part of the public, since it will understand the verbal elements included in both signs respectively as the greeting as well as the concept of the cartoon representing an animated jellyfish, the signs are, at least, similar to an average degree.

For those consumers that will understand the element of the earlier mark as an interjection of laughter whereas they will perceive the image of the animated friendly jellyfish and, if it is the case, the greeting included in the contested mark, the signs will be conceptually dissimilar.

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

d) Distinctiveness of the earlier mark

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 mark is particularly distinctive by virtue of intensive use or reputation.

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

e) Global assessment, other arguments and conclusion

The contested goods are identical to the goods of the earlier mark and the distinctiveness of the earlier mark is normal. The degree of attention of the relevant public is average.

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

As stated above, the signs are visually and aurally similar to a very low degree and conceptually not similar for a part of the public and similar to, at least, an average degree for another part of the public. In the present case, it is considered that the differences between the signs are enough to counteract the similarities between them. The fact that they merely share the string of letters ‘Hi’, which is repeated in the earlier mark, is insufficient to conclude a likelihood of confusion between the marks in comparison, when seen as a whole, despite the identity of the goods at issue. There exist important visual, aural and conceptual differences between the signs on account of the central figurative element of the contested mark, which clearly dominates the sign, and of the repetition of the term ‘HI’ in the earlier mark as well as in the striking arrangement of the elements, colours and graphical representation of them within the contested mark which make the consumers notice the said differences and consequently to distinguish the signs. The overall impression of the signs is sufficiently different so as to safely set them apart.

It has to be also noted that the relevant goods are clothing and, generally, in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by figurative elements of the contested mark are particularly relevant when assessing the likelihood of confusion between them in this case.

In its submissions, the opponent refers to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken this principle into consideration. Nevertheless, bearing in mind all the relevant circumstances of the case, the Opposition Division finds that, contrary to the opponent’s view, the dissimilarities between the signs at issue are sufficient to exclude a likelihood of confusion.

The opponent also refers to the principle of interdependence which was stated above. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods are identical cannot offset the differences between the signs since these are clearly perceptible and will not go unnoticed.

Considering all the above, there is no likelihood of confusion on the part of the public, even if the goods were found to be identical. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

Richard BIANCHI

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.