There is nothing more nourishing and enjoyable on a cold day than a hot bowl of soup. The General Court ("GC") recently handed down a tasty judgment concerning Japanese miso soup, which upheld the decision of the Board of Appeal ("BoA") which found that Hikari Miso Co Ltd's ("Hikari Miso") mark was invalid on the basis that there would be a likelihood of confusion between that mark and Nishimoto Trading Co Ltd's ("Nishimoto") earlier mark.
Hikari Miso filed an application for registration of a Community Trade mark ("CTM") for the sign HIKARI for goods in classes 29 (instant or pre-cooked miso soup) and 30 (Miso (soya bean paste [condiment])). Nishimoto filed a notice of opposition on the basis of the similarity of this sign to its earlier HIKARI marks, registered for goods in class 30 (inter alia rice and five grain cooked rice).
The opposition was rejected by the Opposition Division but the BoA upheld the appeal. In particular, the BoA held that the low degree of similarity of the goods in question was outweighed by the fact that the signs at issue were identical. Moreover, it found that the inherent distinctive character of the earlier mark was average and that there was therefore a likelihood of confusion between the two marks. Hikari Miso cried into its (miso) soup and appealed the decision before the GC.
Regarding the comparison of goods concerned, the GC agreed with the BoA that there were clear links between miso soup and rice, since they are both food products, they may have the same distribution channels, they may, in some circumstances, be available close to each other in supermarkets, and they both form part of Japanese cuisine — miso and miso soups as Japanese specialities and rice as a basic element of Japanese cuisine. Those factors, which are not disputed by Hikari Miso, constitute a similarity between the goods in question. The GC added that those goods are also complementary, since according to the GC a Japanese meal including miso soup is also likely to include rice.
However, according to the GC the BoA also rightly pointed out certain differences between the goods, such as the fact that rice is widely used in Europe and often independently of Asian cuisine. Furthermore, the goods covered by the mark applied for are liquid, powdered or sold as a paste, whereas the rice covered by the earlier mark is solid, and their purpose is not identical, since the goods in class 30 covered by the mark applied for serve to flavour food, whereas the goods covered by the earlier mark serve to nourish the consumer.
In view of the above, the degree of similarity of the goods in question was classified as low.
The global assessment of the likelihood of confusion implies interdependence of the similarity of the signs and the goods involved. The GC confirmed the decision of the BoA and considered that there was a likelihood of confusion in that the consumers interested in both types of goods (i.e. miso soup and rice) might be led to think that the goods originated from the same undertaking. In particular, it must be emphasised that a similarity, even faint, between the goods in question is liable to lead the targeted public to believe that, if the goods bear an identical or similar sign, they have originated under the control of a single undertaking which is responsible for their quality.
This decision confirms that a low degree of similarity between the goods covered may be offset by a high degree of similarity between the marks and vice versa.
(Hikari Miso Co Ltd v OHIM; Nishimoto Trading Co Ltd (GC; T-751/14; 11 December 2015)