Swatch Group prevents registration of HAPPY TIME based on HAPPY HOURS mark

In The Smiley Company SPRL v Office for Harmonisation in the Internal Market (OHIM) (Case T-352/14, July 15 2015), the General Court has considered the likelihood of confusion between the Community trademark (CTM) application for HAPPY TIME and the earlier international registration (designating the European Union) for HAPPY HOURS.

The Swatch Group Management Services AG challenged the CTM application for HAPPY TIME in respect of all goods and services in Classes 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") and 35 ("advertising, business management, business administration, office functions") on the basis of its earlier trademark HAPPY HOURS, which covered services in Classes 35 ("retailing of timepieces and jewellery, retailing of timepieces and jewellery via global computer networks (Internet)") and 37 ("repair and maintenance of timepieces and jewellery").

The Opposition Division of OHIM partially upheld the opposition with respect to "goods in precious metals or coated therewith, jewellery, horological and chronometric instruments" in Class 14 and "auctioneering" in Class 35. The First Board of Appeal of OHIM dismissed the applicant’s appeal, ruling that there was a likelihood of confusion as regards the goods in Class 14, since the marks under comparison shared a low degree of visual and phonetic similarity and were conceptually identical.

On appeal, the General Court first compared the goods and services involved. As expected, it confirmed the assessment of the Board of Appeal that the goods (in Class 14) covered by the contested mark were similar to the retail services (in Class 35) covered by the earlier mark involving the same goods.

The General Court then examined the visual, phonetic and conceptual similarity of the marks in question, based on their overall impression. In its assessment of the visual and phonetic similarity, the General Court took into account:

1. the fact that the first word, ‘happy’, was common to both marks; and
2. the overall length of the marks (ie, identity in the number of syllables and near identity in the numbers of letters).

Based on the above, the General Court held that the marks in question had a certain degree of visual and phonetic similarity.

Regarding the conceptual comparison, the General Court held that the Board of Appeal had correctly stated that there was a conceptual identity between the marks in question, since they both referred to the state of being happy over an unspecified period. Interestingly, the General Court, highlighting the unitary character of the CTM, held that the perception of consumers in part of the Community only was sufficient to create a conceptual identity between the marks under comparison.

In view of the above, the General Court found that there was a likelihood of confusion between the CTM application for HAPPY TIME and the earlier international trademark HAPPY HOURS due mainly to:

1. the similarity of the goods and services in question in Classes 14 and 35; and
2. the conceptual identity of the marks at issue.

Finally, in response to the applicant’s argument that the earlier mark HAPPY HOURS had a very weak distinctive character, the General Court noted that the distinctive character of the earlier mark is only one of the factors that must be taken into account when assessing the likelihood of confusion. In the present case, the General Court concluded, the similarity of the marks, on the one hand, and the similarity of the goods and services, on the other, counteracted the potentially weak distinctive character of the earlier mark.

Nicolas K Dontas, Dontas Law, Luxembourg