Who: The Smiley Company SPRL v Office for Harmonisation in the Internal Market (OHIM)
Where: The EU General Court
When: 15 July 2015
Law stated as at: 6 August 2015
The EU General Court upheld a decision of the OHIM Board of Appeal to allow an opposition to an application for a trade mark registration for HAPPY TIME, based on an earlier registration of HAPPY HOURS.
The Smiley Company (applicant) filed an application for HAPPY TIME for:
Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;
Class 35: ‘Advertising; business management; business administration; office functions
The Swatch Group Management Services AG filed an opposition based on their earlier mark HAPPY HOURS, registered for:
Class 35: ‘Retailing of timepieces and jewellery; retailing of timepieces and jewellery via global computer networks (Internet)’;
Class 37: ‘Repair and maintenance of timepieces and jewellery’
The opposition Division (OD) partially upheld the opposition in relation to:
Class 14: ‘Goods in precious metals or coated therewith, not included in other classes; jewellery; horological and chronometric instruments’;
Class 35: ‘Auctioneering’.
The applicant appealed the decision to the First Board of Appeal (BoA), but the appeal was dismissed. The BoA held that that there was a likelihood of confusion between the marks with respect to the class 14 goods.
Undeterred, the applicant appealed again, to the EU General Court. The applicant asked that the BoA decision be annulled, that the opposition should be rejected and that OHIM pay the costs incurred.
The General Court agreed with the BoA.
The BoA was right, the General Court held, to find that the goods covered by the HAPPY HOURS registration were identical to the goods covered by the HAPPY HOURS mark applied for and also that the services at issue were offered in the same places as those in which the goods in question would be offered for sale.
The Court considered the visual, phonetic and conceptual similarities and held that given the goods and services were similar, the marks were similar and the conceptual identities had a very strong similarity, held that the BoA did not err in finding that there was a likelihood of confusion.
Why this matters:
This case is a reminder that when considering goods and services, even though trade mark specifications may cover particular goods, it does not mean that a finding of similarity will not be found if the earlier mark is registered for services. Goods or services are considered complementary where there is a close connection between them.
The decision also underlines that “conceptual similarity” between competing marks as a whole may well override arguably secondary differences such as, in this case, the difference between the second word in each mark (i.e “HOURS” and “TIMES”)