HCAPITAL v H/2 CAPITAL

HCAPITAL v H/2 CAPITAL: new judgment from the General Court on likelihood of confusion

• The court confirmed that there was a likelihood of confusion between H/2 CAPITAL PARTNERS and the earlier figurative mark HCAPITAL, both covering financial services
• Where the services are intended for a public comprising both the general public and professionals, the public with the lowest attention level must be taken into consideration
• The signs had a certain conceptual similarity on account of the presence of the word ‘capital’

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In a recent case before the General Court (Case T‑656/21, 12 October 2022), the criteria and principles for the global assessment of the likelihood of confusion between trademarks were once again under consideration.

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Background

In 2017 H/2 Credit Manager LP applied for the registration of the word mark H/2 CAPITAL PARTNERS as an EU trademark for various financial services in Class 36. Hcapital Partners SCR SA filed an opposition based on, among others, the earlier EU trademark shown below, also covering various financial services:

The opposition was upheld based on a likelihood of confusion, which was subsequently confirmed by the Board of Appeal of the EUIPO.

H/2 Credit Manager brought the matter before the General Court, claiming infringement of Article 8(1)(b) of Regulation 2017/1001 regarding the likelihood of confusion. The plea comprised two parts, namely that the board had:

• erred in its definition of the relevant public; and
• failed to examine the signs at issue as respective wholes.

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General Court decision

The relevant public

H/2 Credit Manager submitted that some of the services covered by the application were provided only to a professional public, and that the board had committed an error by conflating the perception of the general public with that of the professional public.

Moreover, H/2 Credit Manager submitted that the board had erroneously adopted the point of view of the least careful and attentive consumer - namely, that of the general public - and failed to take account of the fact that the professional public was likely to have specific knowledge of the services at issue and displayed a high level of attentiveness.

The court disagreed, pointing out that, in accordance with settled case law, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and that, where the relevant services are intended for a public comprising both the general public and professionals, the public with the lowest attention level must be taken into consideration.

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Distinctive and dominant elements

H/2 Credit Manager claimed that the board had failed to take into consideration the marks as respective wholes, but had instead removed some parts of the marks and ignored others.

The court mentioned that the global assessment of the likelihood of confusion must, concerning the visual, phonetic or conceptual similarity, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. Verbal elements are, in principle, more distinctive than figurative elements, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element.

The board had found that the word element of the earlier figurative mark would be perceived as the combination of the letter ‘H’ and the word ‘capital’. Even though the word ‘capital’ was descriptive, it was nevertheless considered relevant for the comparison of the signs on account of its length. The letter ‘H’ had no meaning and was the most distinctive element of the earlier mark.

H/2 Credit Manager claimed that the board should have regarded the element ‘HCapital’ as a single element and not as two separate elements. The court disagreed, saying that ‘capital’ was descriptive of the services and would be understood by the relevant public.

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How to make the global assessment

According to H/2 Credit Manager, the board had erred in taking into consideration a separate ‘H’ element in the earlier figurative mark, and not taking account of the fact that ‘H/2’ was a separate element in the mark applied for. The court disagreed, confirming that there was a visual and phonetical similarity.

As for the conceptual similarity, the court confirmed that the signs at issue had a certain conceptual similarity on account of the presence of the word ‘capital’.

The court held that there was a likelihood of confusion, adding that even a highly attentive public might believe, without directly confusing the signs at issue, that the mark applied for concerned a sub-brand of the earlier mark.

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Comment

Whereas it is understandable that the shared word ‘capital’ may lead to a conceptual similarity between the marks in this case, there seems to be a risk that purely descriptive elements may be given too much weight in comparison, instead of being kept completely free for all traders.

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Lisbet Andersen

Author | Partner

lan@aumento.dk

Aumento Law Firm

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