H’ugo’s – a famous Munich local Pizza Bar Lounge wins trademark case at the European Union General Court

H’ugo’s – a famous Munich local Pizza Bar Lounge wins trademark case at the European Union General Court

With its decision dated 9 July 2019, the European General Court (T-397/18) confirmed the finding of the previous EUIPO instances regarding the likelihood of confusion between the prior word mark “H’ugo’s” and a younger figurative mark containing the word elements “HUGO’S BURGER BAR” (European Union Trademark Application No. 014608806).

H’ugo’s                             vs.                       

EUTM no. 006706022                                     EUTMA no. 014608806
(word mark)                                                   (figurative mark)

I.    Background of the case

As every Munich local may know, “H’ugo’s” Pizza-Bar-Lounge is one of the city’s places to be. Not so long ago, “H’ugo’s” further improved its sophisticated reputation by opening a second premisis at glamorous Lake Starnberg.

H’ugo’s GmbH, the operating company of both restaurants, is also the owner of European Union Trademark Registration no. 006706022 “H’ugo’s” (word mark), registered for several goods in classes 21, 29, 30, 32 and 33 (inter alia "meat and preserved, frozen, dried and cooked fruits and vegetables") as well as for services in classes 41, 43 and 45. The mark was applied in 2008 and registered in 2012.

On 29 September 2019, a Maltese applicant applied for registration of the following mark as a figurative trademark, claiming protection for goods in classes 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) and 30 (burgers contained in bread rolls; Hotdogs being cooked sausages in bread rolls").
 
II.    Opposition and appeal proceedings before the EUIPO 

H’ugo’s GmbH opposed the above application for a figurative mark based on its EUTM registration no. 006706022 “H’ugo’s” (word mark). Both the EUIPO Opposition Division and the EUIPO Fourth Board of Appeal confirmed that there is a likelihood of confusion between the opposing marks. The opposing goods were considered to be partly identical and for the rest highly similar. Furthermore, the EUIPO instances found a similarity between the word mark “H’ugo’s” and the figurative mark containing the word element “HUGO’S BURGER BAR” due to the dominance of the distinctive word element “HUGO’S” in the latter. According to the EUIPO instances, the additional word elements in the younger sign (“BURGER BAR”) are descriptive and the graphical elements are of mere decorative character, so that they do not suffice to create enough distance to the earlier word mark and, thereby, rule out a likelihood of confusion.

III.    The decision of the General Court (GC)

The GC fully agreed to the findings of the EUIPO instances and rejected the applicant’s claim that the EUIPO Board of Appeal erred in finding that there is a likelihood of confusion between the earlier word mark “H’ugo’s” and the figurative mark applied for. 

The Court confirmed in particular with respect to the opposing goods that:

-    the goods “meat” (covered by the earlier mark) include the goods “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), arguing that “meat” is a broad term which does not only designate raw meat but also encompasses processed meat, such as burgers;

-    the goods “preserved, frozen, dried and cooked fruits and vegetables” (covered by the earlier mark) include the 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), arguing that the broad term contained in the list of goods of the earlier mark designates vegetables and other horticultural comestible products which are prepared for consumption; 

-    the goods “bread” (covered by the earlier mark) include the goods “bread rolls” which are indispensable for the production of “burgers contained in bread rolls; hotdogs being cooked sausages in bread rolls” (covered by the mark applied for) and that these goods are, therefore, complementary;

and with regard to the opposing signs that:

-    the dominant and most distinctive element in the overall impression of the mark applied for is the word “HUGO’S”;

-    the words “BURGER BAR” are descriptive and of secondary importance;

-    the figurative elements have no particular meaning and are decorative – and banal – in character, whereas it is important to point out that the depicted head has no particular features and that it does not refer to any known person;

-    the opposing signs are visually similar to an average degree and phonetically similar to a high degree.

All in all, the GC confirmed the EUIPO’s view that there is a likelihood of confusion between the opposing marks. The applicant’s last approach was the argument that “HUGO” is also a first name and that the proprietor of the earlier mark cannot expect to be able to prevent anyone with the same first name from using that name. In reply to that, the GC outlined very simply that a registered trademark must benefit from the protection, regardless of its components and even if one of them consists of a first name.

Finally, the GC dismissed the applicant’s action.

IV.    Remarks

The GC’s confirmed the strength of registered word marks, which is, on the one hand, to be welcomed. 

However, on the other hand, the strict manner in which the GC talked down the distinctiveness of the figurative elements of the mark applied for give rise for some concerns. The Court’s view that the figurative elements contained in the earlier mark are of “only decorative” and even “banal” character are not fully convincing, considering the graphical features in an overall view. 

Also the Court’s opinion that it is “regardless” if a trademark component that is similarly contained in two opposing marks is a first name or any other word element seems to be too rigorous as it disregards the individuality which may be inherent to a case.

In essence, trademark applicant’s need to be careful. Taking someone else’s trademark and adding some graphic components and descriptive words will not lead out of a similarity or infringement.

For more information, please find the full decision here: http://curia.europa.eu/juris/document/document.jsf;jsessionid=AC65BAF36E...