No likelihood of confusion between HIP BABY and HIPP

In Kinahan v Hipp & Co, the hearing officer has dismissed an opposition against the registration of the trademark HIP BABY.

On November 11 2009 Leona Kinahan applied to register the device mark HIP BABY, depicted below, in Class 35 of the Nice Classification:

On advertisement, the application was opposed by Hipp & Co. Evidence was filed by the applicant and the opponent under Rules 20, 21 and 22 of the Trademarks Rules 1996.

The hearing officer, acting on behalf of the controller, dismissed the opposition.

The opponent relied on its Community trademarks (CTMs) for HIPP (word and device) and also its CTM for HIPP BABY SANFT in this opposition.

The hearing officer noted that a number of grounds claimed in the notice of opposition were not pursued during the opposition and cautioned opponents of the following:

“The applicant is required to defend its application against all the grounds of the opposition and is put to unnecessary expense in defending grounds which are not pursued, or ever likely to be pursued. I can understand, for tactical reasons, opponents may adopt (sic) a blanket approach in their notice of opposition. But, by the evidence filing stage, the opponent knows precisely the grounds on which it will fight its case and directs its evidence towards those specific grounds. Therefore, grounds raised in notices of opposition but not supported by evidence at Rule 20 stage should be formally abandoned, failing which, in my opinion, the controller should consider appropriate penalties when awarding costs, irrespective of which party is successful”.

In relation to the opponent’s assertion that the word 'hip' was the dominant element of the application, the hearing officer disagreed with the opponent’s argument that the word 'baby' is a common term used in respect of the goods for which the applicant claimed to use its marks and therefore had limited, if any, distinctive character in the application. The hearing officer stated:

“The assessment of whether the mark contains words that describe the goods or services, or words that are common in the trade, can only be made against the goods and services for which the applicant seeks protection, not against the goods and services the applicant claims to use the mark on.”

Accordingly, as the application was filed in respect of “retail purposes (presentation of goods on communication media for - ); sales promotion for others”, the hearing officer held that the application “must be considered to be in respect of general retail services covering all manner of goods... As such the mark applied for cannot be deemed to be descriptive or in common usage in the trade”. Accordingly, the hearing officer held that neither the word 'hip' or 'baby' could be singled out as the distinctive or dominant element of the applicant’s mark.

In carrying out an assessment of the respective marks on the basis of aural, visual and conceptual similarity, the hearing officer noted that, in his opinion, in using the word 'hip', the applicant “was using the word in its normal spelling and for its normal meaning” (ie, “trendy, fashionable or cool”), while the word 'hipp' was a made up word with no meaning. The hearing officer stated that:

“if the tables were turned, in the sense that if the opponent’s mark contained the word 'hip' and the applicant was attempting to use 'hipp', then 'hipp' would not be a word with a natural meaning and it could be argued that the applicant was seeking to attach its mark in some way with the marks of the opponent.”

However, as that was not the case in this opposition, the hearing officer held that the applicant was not seeking to copy, or link its mark in any way with, the marks of the opponent.

The hearing officer held that the differences between the opponent’s HIPP marks and applicant’s mark “are so manifestly stark that, even if the marks were applied to identical goods or service”, he was satisfied that there was no likelihood that consumers would be confused or believe that the marks emanate from economically-linked undertakings.

In relation to whether the application took unfair advantage of, or was detrimental to, the opponent’s marks, the hearing officer held that, on the basis of the evidence submitted to him in the opposition, he could not hold that a reputation exists, either in Ireland or a Community level in respect of the marks the opponent relied upon. Accordingly, the opposition was dismissed and the application proceeded to registration.  

Colette Brady, DFMG Solicitors, Dublin