HUBERT opposition turns sour for dairy product manufacturer

In Vedial SA v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld a decision dismissing the plaintiff's opposition to the registration of HUBERT for, among other things, milk and milk products. It concluded that there was no likelihood of confusion with the plaintiff's earlier SAINT-HUBERT 41 mark for similar goods.

A company called France Distribution filed an application to register HUBERT as a Community word and figurative mark for goods and services in Classes 29, 30 and 42 of the Nice Classification. Vedial SA, a company based in France, filed a notice of opposition based on its earlier French registration for the word mark SAINT-HUBERT 41 protected for some products in Classes 29 and 30.

The Opposition Division of the OHIM rejected the opposition. Vedial appealed submitting further documentation intended to establish the reputation of its mark in France. The Board of Appeal held that although (i) there was a high degree of similarity between the goods in question, and (ii) it was possible to take account of the reputation of the earlier mark demonstrated by Vedial, "there was no likelihood of confusion in the mind of the public concerned since the conflicting marks did not display strong similarities". Vedial appealed to the Court of First Instance (CFI).

The CFI established, among other things, that:

"as regards visual comparison, the earlier mark SAINT-HUBERT 41 consists of a sequence of two words joined together by a hyphen and the number 41. The contested ... application consists of a composite sign comprising the name HUBERT in stylized black characters outlined in white, in which the letters are in upper case and surmounted by the bust of a chef, beaming and with his right arm raised and thumb turned up."

The CFI observed that the fact that the two signs share the word HUBERT is of little relevance in the visual comparison as a result of:

• the addition of the adjective SAINT and a hyphen before HUBERT in the earlier mark;
  
  
• the figure 41 following the words SAINT-HUBERT in the earlier mark; and
  
  
• the figurative component in the mark under opposition.

The CFI held that these factors, among others, meant that the overall visual impression conveyed by the earlier mark was different from that conveyed by France Distribution's mark.

The ECJ upheld the CFI's ruling on appeal. After considering a number of procedural issues, it stated that the conditions on similarity of marks and goods as laid down in Article 8(1)(b) of the Community Trademark Regulation are cumulative and that the CFI correctly concluded that there was no likelihood of confusion.

Alexander Vida, Danubia Patent & Trademark Attorneys, Budapest