Goodbye HelloFruity

1st Sep 2020

Nick Bowie explains why not all elements are created equal. R 119/2020-4, Importaco SA v HelloFresh SE, EUIPO, 3rd June 2020

This decision concerns an appeal filed by Importaco SA (the Applicant) in connection with Opposition Proceedings No. B3067365, in which the EUIPO held that the Applicant’s EU trade mark application No. 17910200 for the HELLO FRUITY logo (the Applicant’s Sign) should be refused based on a likelihood of confusion with earlier EU Registration No. 13716311 for HelloFresh, held by HelloFresh SE (the Opponent).

The Applicant sought to overturn the decision of the Opposition Division (OD) in its entirety. It argued that the OD had erred in finding that the HELLO element present in the conflicting trade marks formed the most distinctive element of the Opponent’s earlier registration. It contended that this led to an incorrect finding of similarity between the Applicant’s Sign and the Opponent’s mark and, consequently, a finding of likelihood of confusion.

Equal importance

Specifically, the Applicant argued that the verbal elements HELLO and FRUITY present in its sign are of equal importance and that the OD was incorrect to assign disproportionate importance to the distinctive character of the term HELLO. The HELLO element of the Applicant’s Sign gave emphasis to the spelling of the English word FRUITY, whereas the Opponent’s mark (HELLOFRESH) is a coined term. As a result, the marks are dissimilar in their respective concepts.

Further, the stylised nature of the Applicant’s Sign is such that the overall impression it conveys – when combined with the conceptual dissimilarities – is sufficiently distinguishable from the Opponent’s mark to avoid confusion.

In response, the Opponent agreed with the OD’s decision. Its arguments can be distilled as follows:

1. The Applicant did not dispute a finding of identity between the conflicting goods in classes 29 and 31.
2. Aurally, the Applicant’s Sign and the Opponent’s mark are similar inasmuch as the first seven characters are present in both marks, as is the prefix HELLO.
3. Visually, the figurative element of the Applicant’s sign does not convey any additional distinctive character that counteracts the common verbal elements.
4. Conceptually, the marks are highly similar insofar as they are comprised of the word “hello” and an adjective. Any conceptual differences do not outweigh the visual or phonetic similarities, nor do they outweigh identity between goods.

Accordingly, there is a likelihood of confusion.

Agreement with the OD

The Fourth Board of Appeal (BoA) agreed with the OD’s decision. Specifically, the BoA held that the common term “hello” is distinctive in connection with foodstuffs in classes 29 and 31. The distinguishable elements present in the Applicant’s Sign (namely, the figurative elements and the term “fruity”), while visually relevant, are insufficient to counterbalance the overall impression of visual and aural similarity created by the common element HELLO.

The BoA found an average degree of visual similarity, an above-average degree of aural similarity, and a high degree of conceptual similarity and identity between the goods, ultimately resulting in a likelihood of confusion.

Accordingly, the BoA rejected the appeal in its entirety and made an award of costs of €1,170 in favour of the Opponent.

Key points

• This case serves as reminder that appeals are designed to address material misapplications of law
• Appeals that seek to address reasoned judgment calls made by the Opposition Division are likely to fail

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