The Hut.com Ltd. v. Office for Harmonisation in the Internal Market (Case T-330/12, June 24, 2014)
On June 24, 2014, the General Court (Second Chamber) affirmed the April 2012 decision of the Second Board of Appeal of OHIM, finding a likelihood of confusion between THE HUT in Class 35 and LA HUTTE in Classes 3, 5, 18, 22, 25 and 28 under Article 8(1)(b) of Community Trade Mark Regulation No. 207/2009.
The Hut.com Ltd., a U.K.-based ecommerce retailer, applied to register THE HUT as a Community Trade Mark for, inter alia, “procurement of goods on behalf of others; retail services in connection with the sale of electronic products, cosmetics products, perfumes, clothing, footwear, headgear, toys, games, foodstuffs, drinks; advice and consultancy services in connection with all the aforesaid services; provision of the aforementioned services by a customer care unit” in International Class 35.
Intersport France opposed on the basis of its 2003 French registration for LA HUTTE, which opposition was rejected in its entirety in the first instance. The Second Board of Appeal of OHIM annulled, in part, the Opposition Division’s rejection with respect to “retail services in connection with the sale of cosmetics products, perfumes, clothing, footwear, headgear, toys, games, advice and consultancy services in connection with all the aforesaid services; provision of the aforementioned services by a customer care unit” in Class 35. Specifically, the Board of Appeal held that there is a “certain degree of similarity” between these services and the goods covered by the prior registration, namely, “perfumes, essential oils, cosmetics” in Class 3; “clothing, footwear, headgear” in Class 25; and “games and playthings” in Class 28. Additionally, the Board of Appeal found that LA HUTTE and THE HUT are conceptually identical, as well as phonetically and visually similar. Accordingly, the Board of Appeal upheld the opposition on the ground of likelihood of confusion among the relevant public–in this case, the French general public.
On appeal to the General Court, The Hut.com argued that the Board of Appeal’s finding of a “certain degree of similarity” between the goods and services at issue meant, in fact, a “low degree of similarity.” The General Court rejected this argument, holding that the “retail” and “advice and consultancy” services and “provision of the aforementioned services by a customer care unit” all expressly correspond to goods that are identical to those covered in Intersport France’s earlier registration (perfumes, essential oils, cosmetics, clothing, footwear, headgear, games and playthings). Accordingly, these goods are indispensable to, or at the very least important for, the provision of The Hut.com’s services. The goods and services are complementary and, consequently, bear a certain degree of similarity, which the General Court held is not “low.”
The Hut.com next argued against the visual and phonetic similarity and conceptual identity of the marks, claiming first that there could be no visual similarity where the beginnings and endings are different, where less than 50% of LA HUTTE is included in THE HUT, and where the number of letters in the two elements of the marks are different. The General Court held that, notwithstanding these admitted differences, the marks are comprised each of two short words, and that the word element HUT constitutes the first three letters of the second element of Intersport France’s LA HUTTE. Thus, the General Court agreed with the Board of Appeal that the marks are “visually similar, albeit to a low degree”. That low degree of similarity, however, was held to be offset by the phonetic similarity and conceptual identity of the marks.
Regarding phonetic similarity, the General Court held that, although “la” and “the” are different, a not insignificant part of the general French public may pronounce the English word “hut” in the same way as the French word “hutte,” and, therefore, the marks in their entireties should be considered phonetically similar.
In its conceptual analysis, the General Court held that LA HUTTE and THE HUT are conceptually identical where the relevant general French public would readily understand “the” to refer to the French definite article “le” or “la,” both in meaning as well as in grammatical function. Even more important, the General Court concluded that a not-insignificant part of the general French public, unaware of the meaning in French of the English word “hut,” would nevertheless be able to deduce its correct meaning as a result of the French rules of pronunciation, articulating English “hut” the same way as French “hutte,” both of which indeed refer to a shelter or shack.
This decision is significant not only for its holding of conceptual identity between marks in different languages, but also for its finding of complementarity, and corresponding similarity, between the goods and services at issue. This decision represents a notable exception to OHIM’s position that goods and services are, by their nature, generally dissimilar. Accordingly, parties wishing to register a service mark in the European Union that pertains to specific goods may face rejections or oppositions not only on the basis of prior marks for similar services, but also on the basis of prior marks for corresponding goods, in the various goods classes. Conversely, parties registering a trademark for goods will need to be aware of potential obstacles by prior registrations for services that specifically correspond to those goods.
The decision is appealable, on points of law, to the Court of Justice of the European Union.