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Happy Sandwich confusingly similar to happy says OHIM (but is either of them distinctive?)

OHIM’s cancellation division declared invalid in its entirety the CTM “Happy Sandwich” depicted right and registered for liquid cheese (cl. 29) and retail services for liquid cheese (cl. 35) holding it to be confusingly similar to the earlier Benelux word trademark registration “Happy” for cheese and cheese products (cl. 29 and 30). According to the core of the Office’s decision

(42) Despite the fact that the trade marks under comparison only share a low degree of visual and aural similarity in an objective comparison, the Office nevertheless notes that the differing word element “Sandwich” is a descriptive and therefore weak element within the CTM registration. “Sandwich” in relation to the claimed goods liquid cheese describes the purpose of these goods, namely to serve as “Sandwich cheese”. “Sandwich cheese” is a commonly used term and describes cheese that is particularly suited to be put on a sandwich, be it because of its special form, its special taste or its special consistency. Due to this descriptive component and regarding the minimalist figurative elements, the CTM registration mainly receives the required degree of distinctiveness on account of its word component “Happy” at the beginning of the sign.

Accordingly, the - common in both marks - indication “Happy” renders the later CTM confusingly similar to the earlier Benelux registration.
For those who see “happy” or “happy + descriptive” and hear the distinctiveness alarm sounding, the Office held that

(39) …. the word “Happy” is frequently used as a component within trade marks and that therefore a considerable number of “Happy“- trademark registrations exist in the CTM registry. The Office also concludes with the CTM proprietor’s observations that, on account of this frequent use and “…due to the association that can be made between meaning of joy or gladness and the positive characteristics of the products sold”, the word “Happy” does not enjoy a particularly strong distinctiveness.
(40) However, it has to be noted that “Happy” is not descriptive for the products in question, as cheese usually can not be happy. Due to the fact that the word element “Sandwich” of the CTM registration is purely descriptive, the component “Happy” is the only element within the contested trade mark that conveys some degree of distinctiveness. The relevant public, when observing and memorizing the CTM registration, will therefore focus its attention on the word element “Happy”, which is identical in both signs.

Another interesting point is the Division’s answer to the CTM proprietor’s citation of previous “analogous” decisions of the Office in support of his claims.

(43) …the Office would like to point out that it is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court of First Instance which stated that it is settled case-law that the Community trade mark system is autonomous and, second, that the legality of decisions is to be assessed purely by reference to
Regulation No 40/94, and not the Office’s practice in earlier decisions. Accordingly, the Office is bound neither by national registrations nor by its own previous decisions [Judgment of 30 June 2004, Case T-281/02, NormaLebensmittelfilialbetrieb GmbH & Co. KG v OHIM, (MEHR FÜR IHR GELD), ECR II-1915, paragraph 35].

The Cancellation Division further stated that the particular case also differed factually with the previous decisions of OHIM cited by the CTM proprietor.

This Class46er would be willing to agree that ‘happy’ is not a descriptive term – however, it is a laudatory one and, for this reason, probably incapable of distinguishing any type of product or service, particularly in the form of a mere word indication.
Whether happy or not, I must say cheese

Posted by: Nikos Prentoulis @ 17.19
Tags: Community trade mark cancellation, descriptiveness, lack of distinctive character, likelihood of confusion, OHIM,
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