OPPOSITION No B 2 673 203

Ugo Crocamo, Frauenstr. 24, 80469 Munich, Germany, (opponent), represented by Maiwald Patentanwalts GmbH, Elisenhof, Elisenstr. 3, 80335 Munich, Germany, (professional representative)

a g a i n s t

Hugo's Hotel Ltd, St Augustine's Road, St Julians, STJ3341, Malta, (applicant), represented by Sladden & Sladden Advocates, 12/12, Vincenti Buildings, Strait Street, Valletta 1432, Malta (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 673 203 is upheld for all the contested goods.

2. European Union trade mark application No 14 608 806 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 608 806. The opposition is based on European Union trade mark registration No 6 706 022 in relation to which the opponent invoked Article 8(1)(b) EUTMR and the non-registered trade mark ‘H’ugo’s GmbH’ which the opponent claims to have used in Germany and in relation to which the Article 8(4) EUTMR was invoked.

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.

1. The goods and services

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 43: Services for providing of food and drink; temporary accommodation.

The contested goods are the following:

Class 29: Meat burgers; Meat products being in the form of burgers; Burgers; Meat burgers; Vegetable burgers; Meat products being in the form of burgers; Veggie burger patties; Uncooked hamburger patties; Soy burger patties; Turkey burger patties; Tofu burger patties; Prepared salads; Salads (Vegetable -); Salads (Fruit -); Fruit salads; Vegetable salads; Hotdog sausages.

Class 30: Burgers contained in bread rolls; Hotdogs being cooked sausages in bread rolls.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested meat burgers; meat products being in the form of burgers (listed twice in the list of the contested goods); uncooked hamburger patties; turkey burger patties; burgers; hotdog sausages are included in the broad category of the opponent’s meat. Therefore, they are identical.

The contested Vegetable burgers; Veggie burger patties; Soy burger patties; Tofu burger patties are all patties or burgers which contain the opponent’s preserved, frozen, dried or cooked vegetables as being the main ingredient. There is a degree of competition between the products since consumers may either decide to purchase the finished product or the main ingredients in order to make the goods themselves. The end users are likely to be the same and the goods would be sold in the same establishments, but most likely not side by side. Based on the aforementioned they are similar to a low degree.

The contested prepared salads; salads (vegetable -); salads (fruit -); fruit salads; vegetable salads are included in the broad category of the opponent’s preserved, frozen, dried and cooked fruits and vegetables. Therefore, they are identical.

Contested goods in Class 30

The contested Burgers contained in bread rolls; Hotdogs being cooked sausages in bread rolls are a combination of cooked burgers or hotdogs within bread which are ready to be consumed. They are prepared meals. They are in competition with the earlier meat, are sold in the same sections of the supermarket, are targeted at the same consumers and are produced by the same manufacturers. They are similar to an average degree.

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 or similar are directed at the public at large. Since they are everyday goods which would be purchased by the public at large, the level of care and attention paid upon purchasing the goods is deemed to be average.

3. The signs

H'ugo's H’ugo’s
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 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 word HUGO is a male name, well-known in many territories, including the United Kingdom. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark consisting of the word ‘H’ugo’s’. The Opposition Division finds that at least a significant part of the relevant public will associate the earlier mark with the possessive form of the name Hugo despite the additional apostrophe after the letter ‘H’. As this word is not descriptive, allusive or otherwise weak in relation to the goods at hand, it is distinctive.

The contested sign is figurative mark composed of the word ‘HUGO’S’ below the depiction of a head and above the words ‘BURGER’ and ‘BAR’. Moreover, the sign contains two black banderols, and a white and red background.

Even though the term ‘BURGER’ is written in smaller lettering, it is placed in a central position and, therefore, taking into account the size and position of all the other components, the Opposition Division concludes that the contested mark has no elements which are clearly more dominant than others.

The element ‘HUGO’S’ and the depiction of a head are not descriptive, allusive or otherwise weak in relation to the relevant goods and are therefore distinctive. The expression ‘BURGER BAR’ will be understood as referring to a type of establishment where the relevant goods can be bought or/and consumed. Therefore, contrary to the applicant’s arguments, this expression lacks distinctiveness in relation to the goods at hand. As regards the remaining figurative elements, namely the banderols and the background, they have purely decorative and secondary function. In this regards it is to 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). Taking into account the foregoing, the Opposition Division finds that the word ‘HUGO’S’ is the element with more impact on the consumers in relation to other elements composing the contested sign.

Visually, the signs coincide in the letters H, U, G, O and S and the apostrophe before the letter S. The earlier mark contains an additional apostrophe after the letter H. Further, the signs differ in that the contested sign also includes the words ‘BURGER’ and ‘BAR’ (which form a non distinctive expression), the depiction of a man’s face and additional visual matter. Taking all of the aforementioned into account, the Opposition Division finds that the respective marks are visually similar to a low degree.

Aurally, whilst the earlier mark contains an apostrophe which is grammatically incorrect, since the majority of the consumers will recognise and understand the name Hugo in its possessive form, they are likely to pronounce it as HU/GO’S rather than try to dissect it into H/UGO’S. Therefore, the signs coincide in HUGO’S which would be pronounced in an identical manner. They would, however, differ insofar that the contested sign also includes the expression ‘BURGER BAR’ which has no distinctive character for the goods in question and has no equivalence in the earlier mark. Therefore, the signs are considered to be aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs share the same concept of ‘Hugo’s’ and the remaining elements of the contested sign are either non distinctive or have less impact on the relevant public, the signs are conceptually highly similar.

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 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, some of the contested goods were found to be identical to the earlier relied upon goods, and the remaining ones similar to various degrees. The signs have been deemed to be visually similar to a low degree, and aurally and conceptually similar to a high degree. These similarities are sufficient to counteract the differences between the signs which are mainly due to non-distinctive or secondary elements and aspects. The Opposition Division finds that due to the average degree of attention paid upon purchasing the relevant goods and to the fact that consumers must rely upon imperfect recollection, a sufficient proportion of the relevant public will assume that the goods, even those similar to a low degree, come form the same or economically linked undertakings. Accordingly, consumers will consider the contested sign to be a variant on the earlier mark.

In its observations, the applicant argues that the person behind the applicant’s company is Mr Hugo Chetcuti and according to Article 12(1)(a) EUTMR ‘an EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade the name or address of the third party, where that third party is a natural person’. The Opposition Division notes that Article 12 EUTM does not apply to opposition proceedings in which the proprietor of an earlier mark may prevent others from registering a trade mark.

Furthermore, the applicant argues that the opponent operates and uses his mark principally with respect to pizza and only in Germany. However, the Opposition Division notes that the opponent’s mark is a EUTM, equally valid in all the Member States. Moreover, what matters in the examination of the opposition are not the conditions under which the goods are marketed, but the description of the goods covered by the marks in questions (15/10/2008, T 305/06 - T 307/06, Ferromix, Inomix, Alumix, EU:T:2008:444, § 61).

Under these circumstances, the applicant’s arguments must be set aside.

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 registration No 6 706 022. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Ioana MOISESCU

Zuzanna STOJKOWICZ

Cristina CRESPO MOLTO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.