Hugo's Hotel v EUIPO - H'ugo's (HUGO'S BURGER Bar) (EU trade mark - Judgment) [2019] EUECJ T-397/18 (09 July 2019)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

(EU trade mark — Opposition proceedings — Application for EU figurative mark HUGO’S BURGER Bar — Earlier EU word mark H’ugo’s — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Hugo’s Hotel Ltd, established in St. Julians (Malta), represented by R. Sladden, lawyer,

European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and J. Ivanauskas, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 May 2018 (Case R 1879/2017‑4), relating to opposition proceedings between H’ugo’s and Hugo’s Hotel,

composed of I. Pelikánová, President, P. Nihoul (Rapporteur) and J. Svenningsen, Judges,

having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 29 September 2015, the applicant, Hugo’s Hotel Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– 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’.

4 The trade mark application was published in Community Trade Marks Bulletin No 240/2015 of 17 December 2015.

5 On 15 March 2016, Mr Ugo Crocamo, H’ugo’s GmbH’s predecessor in title, filed a notice of opposition to registration of the mark applied for pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).

6 The opposition was based on the earlier EU word mark H’ugo’s, filed on 27 February 2008 and registered on 27 June 2012 under No 6706022, which covers, inter alia, goods and services in Classes 29, 30 and 43 corresponding, for each of those classes, to the following description:

– 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’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Regulation No 207/2009 (now Article 8(1)(b) and (4) of Regulation 2017/1001).

8 By decision of 3 July 2017, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the signs at issue on the part of the English-speaking public. It therefore did not examine the second ground for opposition, based on the use in the course of trade of a sign of more than merely local significance, that is to say, in the present case, the company name H’ugo’s GmbH.

9 On 16 August 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 2 May 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

11 In the context of the assessment of the likelihood of confusion, first, the Board of Appeal took the view that the relevant territory was that of the European Union and of all its Member States and that the relevant public consisted of average consumers, whose level of attention for the goods at issue was average.

12 Second, the Board of Appeal found that the goods covered by the signs at issue were identical for those in Class 29 and similar for those in Class 30.

13 Third, the Board of Appeal found that the visual similarity of the signs at issue was average, that there was a high degree of phonetic similarity and that the comparison between those signs was conceptually neutral.

14 Fourth, the Board of Appeal concluded that, taking into account the identity or average similarity of the goods, the average visual similarity of the signs and their high phonetic similarity, the normal distinctiveness of the earlier mark and the average level of attention of consumers, there was a likelihood of confusion on the part of the relevant public.

15 As regards the applicant’s argument that the visual comparison should have been given preference over the phonetic comparison, the Board of Appeal found that that argument lacked relevance since the signs at issue also displayed a visual similarity.

18 By its second head of claim, the applicant seeks a declaratory judgment stating that the mark applied for may be registered.

19 Pursuant to Article 72(3) of Regulation 2017/1001, the General Court has jurisdiction only to annul or alter the decisions adopted by the Boards of Appeal.

20 Consequently, the Court has no jurisdiction to deliver declaratory judgments and the second head of claim must be rejected as inadmissible.

21 In support of its first head of claim, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

22 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

23 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

24 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

25 The more distinctive the earlier mark, the greater will be the likelihood of confusion, either per se or because of the reputation that that earlier mark enjoys with the public (see, to that effect, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

26 In the present case, the applicant takes the view that the Board of Appeal erred in finding that there is a likelihood of confusion between the earlier mark and the mark applied for, and it submits that registration of the latter does not infringe Article 8(1)(b) of Regulation 2017/1001. More specifically, it disputes the findings of the Board of Appeal relating to the public’s level of attention, to the comparison of the goods, to the analysis of the signs and to their visual and phonetic comparison as well as to the assessment of the likelihood of confusion.

27 In paragraphs 11 and 27 of its decision, the Board of Appeal took the view that the relevant consumer is the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect.

28 The applicant maintains, without providing reasons, that in the food and catering sectors consumers are more attentive in their choices between brands.

29 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect.

30 It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

31 In the present case, the goods at issue are everyday consumer goods, with the result that the relevant consumer is the average consumer, a fact which, moreover, is not disputed by the applicant, and that the average consumer’s level of attention must be found to be average.

32 The Board of Appeal thus acted correctly in taking the view that the level of attention of the relevant public is average.

34 First, in paragraphs 13 and 14 of the contested decision, in respect of the comparison of the goods in Class 29, the Board of Appeal found that, first, the goods covered by the mark applied for consisting of ‘meat burgers; meat products being in the form of burgers; burgers; uncooked hamburger patties; turkey burger patties; hotdog sausages’, are identical to the broad category of ‘meat’ used by the earlier mark and, second, that the other goods ‘vegetable burgers; veggie burger patties; soy burger patties; tofu burger patties; prepared salads; salads (vegetable ‑); salads (fruit -); fruit salads; vegetable salads’ covered by the mark applied for are identical to ‘preserved, frozen, dried and cooked fruits and vegetables’ covered by the earlier mark.

35 Second, in paragraph 15 of the contested decision, the Board of Appeal held that ‘burgers contained in bread rolls; hotdogs being cooked sausages in bread rolls’ covered by the mark applied for and in Class 30 are similar to an average degree to ‘bread’ covered by the earlier mark, since that latter category includes bread rolls, which makes those goods complementary. The Board of Appeal added that, despite the fact that burgers and hotdogs in bread rolls are prepared meals, bread rolls constitute an important part of those meals.

36 In the first place, as regards the goods covered by Class 29, the applicant disputes the finding that ‘meat burgers; meat products being in the form of burgers; burgers; uncooked hamburger patties; turkey burger patties; hotdog sausages’ covered by the mark applied for are identical to ‘meat’ covered by the earlier mark.

37 According to the case-law, in assessing the similarity between the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

38 In addition, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 7 July 2005, Miles International v OHIM — Biker Miles (Biker Miles), T‑385/03, EU:T:2005:276, paragraph 32 and the case-law cited).

39 In the present case, it must be noted that the term ‘meat’ is a broad term which does not only designate raw meat but also encompasses processed meat, such as hamburgers.

40 The Board of Appeal was therefore correct in finding that ‘meat burgers; meat products being in the form of burgers; burgers; uncooked hamburger patties; turkey burger patties; hotdog sausages’ covered by the mark applied for are identical to the goods covered by the earlier mark.

41 In the second place, still as regards the goods covered by Class 29, the applicant takes the view that ‘vegetable burgers; veggie burger patties; soy burger patties; tofu burger patties; prepared salads; salads (vegetable -); salads (fruit -); fruit salads; vegetable salads’ covered by the mark applied for are not identical to ‘preserved, frozen, dried and cooked fruits and vegetables’ covered by the earlier mark.

42 In that respect, suffice it to state that the goods covered by the mark applied for are different types of finished fruit or vegetable goods and that they are, on that basis, included in the broader category ‘preserved, frozen, dried and cooked fruits and vegetables’ of the earlier mark, which, according to the explanatory notes to Class 29, designates ‘vegetables and other horticultural comestible products which are prepared for consumption’.

43 Pursuant to the case-law set out in paragraph 38 above, it must therefore be held, as the Board of Appeal found, that ‘vegetable burgers; veggie burger patties; soy burger patties; tofu burger patties; prepared salads; salads (vegetable -); salads (fruit ‑); fruit salads; vegetable salads’ covered by the mark applied for are identical to ‘preserved, frozen, dried and cooked fruits and vegetables’ covered by the earlier mark.

44 In the third place, as regards the goods in Class 30, the applicant submits that there is no similarity between ‘burgers contained in bread rolls; hotdogs being cooked sausages in bread rolls’ covered by the mark applied for and ‘bread’ covered by the earlier mark.

45 Goods or services which are complementary, within the meaning of the case-law set out in paragraph 37 above, are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or the provision of those services lies with the same undertaking (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).

46 In the present case, the category ‘bread’ covered by the earlier mark includes bread rolls, which are indispensable for the production of the burgers covered by the mark applied for.

47 As they are complementary, those goods must, as the Board of Appeal decided, be regarded as similar.

48 Having regard to all of the foregoing, the assessment of the Board of Appeal, according to which the goods concerned by the signs at issue are identical or similar, must be regarded as being well founded.

49 In respect of the analysis of the contested sign, the Board of Appeal held, in paragraphs 18 and 19 of the contested decision, that the dominant and most distinctive element in the overall impression of the mark applied for is the word ‘hugo’s’, which has no descriptive meaning in relation to the goods covered by the mark applied for. The word ‘burger’, it found, is understood as a hamburger made from minced meat or vegetables and, therefore, the expression ‘burger bar’, in relation to the various types of ‘burgers’ covered by the mark applied for, is understood as a reference to a bar where burgers are sold. That element is therefore descriptive and of secondary importance. As regards the graphic elements, they will be perceived as being mainly decorative.

50 With regard to the comparison of the signs, the Board of Appeal noted, in paragraph 21 of the contested decision, that, visually, taking into account the fact that the earlier sign is the word ‘h’ugo’s’, the signs at issue coincide in the dominant and most distinctive element of the contested sign, which differs from the earlier mark only with regard to the apostrophe inserted between the first two letters. As the differences concern elements of secondary importance in the overall impression, the Board of Appeal concluded that the visual similarity between those signs is average.

51 Phonetically, the Board of Appeal concluded, in paragraph 22 of the contested decision, that there is a high degree of similarity because (i) the dominant and distinctive element of the contested sign is pronounced in the same manner as the earlier mark, (ii) the signs differ only in the expression ‘burger bar’, which lacks distinctiveness, and (iii) the figurative elements play no part.

52 In the first place, the applicant submits that, since the mark is perceived as a whole by the consumer, the Board of Appeal could not take into account only one of the elements of the mark applied for to the exclusion of its other elements, in particular its figurative elements.

53 It is true that the assessment of the similarity between two trade marks cannot confine itself to taking into consideration only one component of a composite mark and comparing that component with another mark, and that the comparison must, on the contrary, as is clear from the case-law cited in paragraph 23 above, be made by examining each of the signs in question as a whole.

54 However, that principle does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). If all the other components of the mark are negligible, the assessment of the similarity can even be carried out on the basis of the dominant element alone (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).

55 In the present case, contrary to the applicant’s claim, the Board of Appeal did not take into account one of the elements of the mark applied for to the exclusion of its other elements. As regards those other elements, it simply concluded that, owing to their non-distinctive, weak and decorative character, their impact was limited.

56 The argument that the Board of Appeal took into account only one of the elements of the mark applied for must therefore be rejected.

57 In the second place, the applicant disputes the finding that the element ‘hugo’s’ is the dominant and distinctive element of the mark applied for.

58 In that regard, it must be noted that the contested sign is a figurative mark consisting of the element ‘hugo’s’ located below the depiction of a head and above the elements ‘burger’ and ‘bar’. In addition, the sign contains two black stripes and a red and white background.

59 The word ‘hugo’s’ is written in capital letters, in contrast to the element ‘bar’ which appears two levels below. Furthermore, the size of its script is bigger than that of the script used for the element ‘burger’.

60 As regards the figurative elements, consisting of the depiction of a head, two black stripes and a red and white background, they have no particular meaning and are decorative in character. In that context, it is important to point out that the depicted head has no particular features and that it does not refer to any known person.

61 Owing to its central position and the size of its script, as well as to the banal character of the figurative elements, the word ‘hugo’s’ constitutes, as the Board of Appeal found, the dominant element of the mark.

62 Moreover, as it consists essentially of a first name and does not correspond to any concept, it also displays a distinctive character.

63 By contrast, this is not the case for the words ‘burger’ and ‘bar’, which, as the Board of Appeal noted, will be understood by the public as referring to a place where goods covered by the mark applied for are bought or consumed and thus display a descriptive character.

64 In those circumstances, the Board of Appeal correctly took the view that, in the mark applied for, the term ‘hugo’s’ displays a dominant and distinctive character.

65 In the third place, the applicant maintains that the Board of Appeal erred in holding that, in the mark applied for, the word element ‘hugo’s’ is more important than the figurative elements because, in the food and catering sectors, word elements have no more importance than figurative elements.

66 In that regard, it should be recalled that, according to the case-law, where a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more easily refer to the goods or services in question by name rather than by describing the figurative element of the mark (see judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 22 and the case-law cited).

67 The applicant does not set out the reasons why that principle is not applicable in the food or catering sector.

69 In any event, it must be concluded that, as noted by EUIPO, on the contrary, in that sector those goods are often ordered orally in restaurants or in butcher’s shops, which requires reference to the verbal elements of the signs. Thus, in the judgment of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM — Harry’s New York Bar and Harrys Pubar (HARRY’S NEW YORK BAR) (T‑84/14 and T‑97/14, not published, EU:T:2016:83, paragraph 86), which concerned goods in the food and catering sector, the Court found that word elements have a greater impact than figurative elements.

70 In the fourth place, the applicant contests the finding that the signs at issue are visually similar to an average degree and phonetically similar to a high degree.

71 It follows from paragraphs 58 to 64 above that the dominant and distinctive element of the mark applied for is the term ‘hugo’s’.

72 In view of the fact that that element coincides with the earlier mark, the Board of Appeal was also able to find that, contrary to the applicant’s assertions, the signs display an average degree of visual similarity. In that comparison, the apostrophe between the ‘h’ and the ‘u’ in the earlier mark is a negligible element.

74 According to the case-law, when two signs which include word elements are compared phonetically, those word elements alone are to be taken into account, whereas any figurative elements they may have fall more within the scope of the visual analysis of the signs (see, to that effect, judgment of 23 April 2015, Iglotex v OHIM — Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 72 and the case-law cited).

75 In the present case, the earlier sign H’ugo’s must therefore be compared with the words ‘hugo’s burger bar’ of the mark applied for.

76 In that latter mark, the words ‘burger bar’ play a secondary role on account of their descriptive character, examined in paragraph 63 above.

77 The Board of Appeal was therefore also correct in finding that, phonetically, the signs at issue are highly similar.

78 In its global assessment, the Board of Appeal concluded, in paragraph 29 of the contested decision, that, taking into account the identity and average similarity of the goods, the average visual similarity and high phonetic similarity of the signs, the normal distinctiveness of the earlier mark and the average attentiveness of consumers, the differences resulting from the further word and figurative elements were insufficient safely to prevent a likelihood of confusion. The Board of Appeal added that, in view of the fact that the element ‘hugo’s’ constitutes the dominant and most distinctive element of the mark applied for and is identical, or almost identical, to the earlier mark, the graphic design and the additional descriptive word elements of the mark applied for are not sufficient to make it possible for consumers to distinguish the trade marks reliably when they encounter them on identical or similar goods.

79 In the first place, the applicant disputes that view on the ground that, in the food and catering sector, visual similarity should have a greater impact than phonetic similarity.

80 In that respect, it must be held that the argument is ineffective since the Board of Appeal held, in paragraph 21 of the contested decision, that, visually, there is an average degree of similarity between the signs at issue and that such a similarity, combined with the other evidence admitted by the Board of Appeal and recalled in paragraph 78 above, is sufficient to give rise to the likelihood of confusion.

81 In the second place, the applicant submits that the Board of Appeal contradicted itself by finding, on the one hand, that the distinctive character of the earlier mark is normal and, on the other, that it is high. In any event, taking into account that the distinctive character of the earlier mark should be regarded as normal, the likelihood of confusion should, it submits, be lower.

82 In that regard, it should be noted first of all that, in paragraph 29 of the contested decision, the Board of Appeal held that the distinctive character of the earlier mark is normal and that the Board of Appeal did not state anywhere else in its decision that it is high. The contested decision is therefore not vitiated by any contradiction in that regard.

83 Next, it should be recalled that, according to settled case-law, the more distinctive the character of the earlier mark, the greater the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528). It does not, however, follow from the foregoing that that likelihood does not exist in the case where the earlier trade mark has an average distinctive character.

84 In the present case, the Board of Appeal was able to consider, in view of the average distinctive character of the earlier mark and the other evidence recalled in paragraph 78 above, that there is a likelihood of confusion between the two signs at issue.

85 In the third place, the applicant submits that, taking account of the fact that it is not common in the food and catering sector to create sub-brands consisting of the combination of a main brand and other sub-brands, it is unlikely that consumers would expect the proprietor of the trade mark H’ugo’s to combine its trade mark with another element and therefore that the public will establish a link between those two signs.

86 In that respect, suffice it to state that the applicant has not put forward any evidence capable of demonstrating that such a particular feature exists in the food sector.

87 As it is a mere assertion, not substantiated or demonstrated, the argument must be rejected.

88 In the fourth place, the applicant claims that the proprietor of the earlier mark cannot expect to be able to prevent anyone with the same first name from using that first name, particularly since, in the course of the proceedings, that trade mark was transferred to another undertaking.

89 In that respect, the answer must be that, provided that it has been registered, a trade mark must benefit from the protection provided for by Regulation 2017/1001, and in particular from that established by Article 8(1)(b) thereof, regardless of its components and even if one of them consists of a first name.

90 In the light of the foregoing, it must be held that the Board of Appeal was justified in finding that there is a likelihood of confusion between the two signs at issue, and the action must consequently be dismissed as being unfounded.

91 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

92 Since the applicant has been unsuccessful, it must be ordered to pay the costs, including those incurred by EUIPO, in accordance with the form of order sought by the latter.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Hugo's Hotel v EUIPO - H'ugo's (HUGO'S BURGER Bar) (EU trade mark - Judgment) [2019] EUECJ T-397/18 (09 July 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T39718.html Cite as: [2019] EUECJ T-397/18, ECLI:EU:T:2019:489, EU:T:2019:489

Court of Justice of the European Communities (including Court of First Instance Decisions)