OPPOSITION No B 2 658 782

Atrapalo, S.L., C/ Aribau, n° 185, 08021 Barcelona, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Restobookings Group, Rue de Merl 63-65, 2146 Luxembourg (applicant), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 658 782 is partially upheld, namely for the following contested services:

Class 35:        Advertising mediation, including via the Internet; Advertising, including via the Internet; Marketing consultancy; Dissemination of advertising matter; Trade information, including via the internet; Market prospecting, research and analysis; Providing commercial and publicity information, including information about restaurants, pubs, bistros and cafés, contained in a databases, to be consulted via the internet; Processing of commercial and publicity data, to be consulted via the internet.

Class 43:        Catering industry services; Hotel reservations.

2.        European Union trade mark application No 14 588 347 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 588 347. The opposition is based on Spanish trade mark registration No 2 773 718. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The services on which the opposition is based are the following:

Class 35:        Business promotion services; advertising and business management; import, export, commercial representation and exclusive sales services.

Class 43:        Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 16:        Books, weekly publications, monthly publications, leaflets, brochures, magazines and guides containing information about restaurants, pubs, bistros and cafés; Photographs.

Class 35:        Advertising mediation, including via the Internet; Advertising, including via the Internet; Marketing consultancy; Dissemination of advertising matter; Trade information, including via the internet; Market prospecting, research and analysis; Providing commercial and publicity information, including information about restaurants, pubs, bistros and cafés, contained in a databases, to be consulted via the internet; Processing of commercial and publicity data, to be consulted via the internet; Administrative processing of restaurant reservations by telephone, fax and email.

Class 41:        Writing reviews and assessments of restaurants, pubs, bistros and cafés; Organization of cultural events; Organisation of educational events; organisation of educational fairs; Publishing, lending and distribution of books, weekly publications, monthly publications, leaflets, brochures, magazines and guides containing information about restaurants, pubs, bistros and cafés, whether or not via electronic means.

Class 43:        Catering industry services; Hotel reservations.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘including’ and ‘containing’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 16

The contested books, weekly publications, monthly publications, leaflets, brochures, magazines and guides containing information about restaurants, pubs, bistros and cafés; photographs have nothing in common with the opponent’s services in Classes 35 and 43. By their nature, goods are generally dissimilar to services. They have different origins, natures and intended purposes. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 35

Advertising, including via the internet is identically included in both lists of services.

The contested advertising mediation, including via the internet; marketing consultancy; dissemination of advertising matter are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested trade information, including via the internet; market prospecting, research and analysis; providing commercial and publicity information, including information about restaurants, pubs, bistros and cafés, contained in a databases, to be consulted via the internet; processing of commercial and publicity data, to be consulted via the internet are business analysis, research and information services, which are identical to the opponent’s business management.

The contested administrative processing of restaurant reservations by telephone, fax and email are office functions that are similar to a low degree to the opponent’s business management. These services contribute to the same purpose, namely the proper running and success of an undertaking. Furthermore, they can have the same producers and end users.

Contested services in Class 41

The contested writing reviews and assessments of restaurants, pubs, bistros and cafés; organization of cultural events; organisation of educational events; organisation of educational fairs; publishing, lending and distribution of books, weekly publications, monthly publications, leaflets, brochures, magazines and guides containing information about restaurants, pubs, bistros and cafés, whether or not via electronic means are services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage their attention. They have nothing relevant in common with the opponent’s business promotion services; advertising and business management; import, export, commercial representation and exclusive sales services in Class 35 and services for providing food and drink; temporary accommodation in Class 43. They are different in nature and purpose and are neither in competition nor complementary. Moreover, the fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the contested services are considered dissimilar.

Contested services in Class 43

The contested catering industry services are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are identical.

The contested hotel reservations are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

Depending on the nature or price of the services, the degree of attention is likely to vary from average (e.g. for hotel reservations in Class 43) to high (e.g. for marketing consultancy in Class 35).

3. The signs

TABLEBOOKING
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark consisting of the word ‘TABLEBOOKING’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two.

The word ‘TABLEBOOKING’ has no meaning in the relevant territory and is therefore distinctive.

The contested sign is a figurative mark composed of several elements, namely a red square containing a symbol constituted by three white lines, one horizontal and two vertical, followed by the word ‘TABLEBOOKER’, in which ‘TABLE’ is bold. The word ‘TABLEBOOKER’ has no meaning in the relevant territory and is therefore distinctive.

The red square with the white symbol is not descriptive, allusive or otherwise weak for the relevant goods and services and it is therefore distinctive.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element ‘TABLEBOOKER’ will have a stronger impact on the overall impression of the earlier sign than the figurative device.

The contested sign has no element that could be considered more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘TABLEBOOK’, which is included in its entirety in both signs. This means that the signs have 9 letters in common out of 12 in the earlier sign and 11 in the contested sign. However, they differ in their final letters, namely ‘ING’ in the earlier mark and ‘ER’ in the contested sign, and also, as explained above, in the figurative element and the depiction in bold of the letters ‘TABLE’ of the contested mark. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TABLEBOOK’, present identically in both signs. The pronunciation differs in the signs’ final letters, namely ‘ING’ in the earlier sign and ‘ER’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

In the present case, the contested goods are dissimilar and the contested services are partly identical, partly similar to a low degree and partly dissimilar to the opponent’s services. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally highly similar.

In this regard, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Bearing in mind the fact that both signs contain the identical distinctive sequence of letters ‘TABLEBOOK’, consumers (even those displaying a higher than average degree of attention) are likely to believe that the identical or similar services at issue originate from the same manufacturer or from economically-linked manufacturers.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar, even to a low degree, to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.