OPPOSITION No B 2 778 234

 

Sacentro – Comércio de Texteis S.A., Centro Empresarial de Talaide, Estrada Octávio Pato, No. 177, Edificio A, Armazém 3, 2785-723 Cascais, Portugal (opponent), represented by J. Pereira da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

 

a g a i n s t

 

Meci S.r.l., Via A. De Gasperi, 12, 25060 Collebeato (BS), Italy (applicant), represented by Propria S.r.l., Via della Colonna n. 35., 33170 Pordenone, Italy, (professional representative).

 

On 26/09/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 778 234 is partially upheld, namely for the following contested services:

 

Class 43:        Resort hotel services; tourist inns; arranging of accommodation for holiday makers; providing accommodation in hotels and motels; providing temporary accommodation in holiday flats; providing temporary accommodation in holiday homes; providing temporary lodging for guests; provision of hotel accommodation; providing hotel and motel services; hotels; hotels and motels; hotel accommodation services; providing convention facilities; provision of conference, exhibition and meeting facilities; provision of facilities for exhibitions; providing conference rooms; providing exhibition facilities in hotels; provision of conference facilities; accommodation services for meetings; bar services; bistro services; wine bar services; providing food and drink in restaurants and bars; pizza parlors; pubs; café services; beer bar services; snack-bars; hospitality services [food and drink]; restaurants; self-service restaurant services; serving food and drinks; hotel restaurant services; take-out restaurant services; club services for the provision of food and drink; restaurant services provided by hotels; mobile restaurant services; self-service cafeteria services; services for the preparation of food and drink; night club services [provision of food]; serving food and drink in restaurants and bars; tourist restaurants.

 

2.        European Union trade mark application No 15 580 772 is rejected for all the above services. It may proceed for the remaining 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 15 580 772 ‛NAHOOR’. The opposition is based on Portuguese trade mark registration No 427 328 ‛SACOOR’, European Union trade mark registration No 1 409 556  and European Union trade mark registration No 5 345 211 . The opponent invoked Article 8(1)(b) EUTMR.

 

 

PRELIMINARY REMARKS – PROOF OF USE

 

Although the applicant’s observations of 28/03/2017 do not contain an explicit and unambiguous request for proof of use, the Office erroneously requested the opponent to submit proof of use. Therefore, the Opposition Division will not examine proof of use in the present case.

 

 

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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 345 211.

 

 

1. The goods and services

 

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

 

Class 25:        Clothing, footwear and headgear for men, women and children.

 

Class 43:        Providing of food and drink, hotels.

 

The contested services (after a limitation request from the applicant to delete Class 25) are the following:

 

Class 35:        Retail services in relation to lighting; retail services in relation to clothing; retail services in relation to footwear; retail services in relation to furnishings; retail services in relation to furniture; wholesale services in relation to lighting; wholesale services in relation to footwear; wholesale services in relation to furniture; wholesale services in relation to clothing; wholesale services in relation to furnishings; retail services connected with the sale of furniture; retail store services in the field of clothing; retail services connected with the sale of clothing and clothing accessories; assistance in product commercialization, within the framework of a franchise contract; assistance in business management within the framework of a franchise contract; provision of assistance [business] in the establishment of franchises; advisory services (business -) relating to the establishment of franchises; provision of assistance [business] in the operation of franchises; advisory services (business) relating to the operation of franchises; business advertising services relating to franchising; assistance in franchised commercial business management; rental of advertisement space and advertising material; rental of advertising space; advertising, marketing and promotional services.

 

Class 43:        Resort hotel services; tourist inns; arranging of accommodation for holiday makers; providing accommodation in hotels and motels; providing temporary accommodation in holiday flats; providing temporary accommodation in holiday homes; providing temporary lodging for guests; provision of hotel accommodation; providing hotel and motel services; hotels; hotels and motels; hotel accommodation services; providing convention facilities; provision of conference, exhibition and meeting facilities; provision of facilities for exhibitions; providing conference rooms; providing exhibition facilities in hotels; provision of conference facilities; accommodation services for meetings; bar services; bistro services; wine bar services; providing food and drink in restaurants and bars; pizza parlors; pubs; café services; beer bar services; snack-bars; hospitality services [food and drink]; restaurants; self-service restaurant services; serving food and drinks; hotel restaurant services; take-out restaurant services; club services for the provision of food and drink; restaurant services provided by hotels; mobile restaurant services; self-service cafeteria services; services for the preparation of food and drink; night club services [provision of food]; serving food and drink in restaurants and bars; tourist restaurants.

 

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 services in Class 35

 

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T-715/13, EU:T:2015:256, ‘Castello’, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

 

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. The same rule applies to wholesale services.

 

The contested retail services in relation to clothing; retail services in relation to footwear; wholesale services in relation to footwear; wholesale services in relation to clothing; retail store services in the field of clothing; retail services connected with the sale of clothing are similar to a low degree to the opponent’s clothing, footwear for men, women and children. They can have the same produced/provider and are directed at the same public. They are also complementary to each other.

 

Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

 

In the above the contested retail services connected with the sale of clothing accessories are dissimilar to the opponent’s goods, namely clothing, footwear and headgear for men, women and children. This is because the opponent’s goods are at most highly similar to clothing accessories. The rest of the contested services in the field of retail and wholesale services, namely retail services in relation to lighting; retail services in relation to furnishings; retail services in relation to furniture; wholesale services in relation to lighting; wholesale services in relation to furniture; wholesale services in relation to furnishings; retail services connected with the sale of furniture, do not concern clothing, footwear and headgear. Consequently, these contested services are dissimilar to the opponent’s goods. It should be noted that goods are tangible, whereas services are intangible. The nature and purpose of the opponent’s goods and the contested services, their distribution channels, their sales outlets, their producers/providers and their method of use are different. They are neither in competition with each other nor complementary to each other.

 

The contested assistance in product commercialization, within the framework of a franchise contract; assistance in business management within the framework of a franchise contract; provision of assistance [business] in the establishment of franchises; advisory services (business -) relating to the establishment of franchises; provision of assistance [business] in the operation of franchises; advisory services (business -) relating to the operation of franchises; business advertising services relating to franchising; assistance in franchised commercial business management; rental of advertisement space and advertising material; rental of advertising space; advertising, marketing and promotional services are dissimilar to the opponent’s goods. It should be noted that goods are tangible, whereas services are intangible. The nature and purpose of the opponent’s goods and the contested services, their distribution channels, their sales outlets, their producers/providers, their method of use are different. They are neither in competition with each other nor complementary to each other.

 

The aforesaid contested services (not similar to the opponent’s goods) are also dissimilar to the opponent’s services in Class 43, namely providing of food and drink, hotels. Their nature and purpose, their distribution channels and providers as well as their method of use are different. In addition, they are neither in competition with each other nor complementary to each other.

 

Contested services in Class 43

 

Hotels (listed twice in the list of services of the contested mark) are identically included in both lists of services of the signs under comparison.

 

The contested resort hotel services; tourist inns; arranging of accommodation for holiday makers; providing accommodation in hotels and motels; providing temporary accommodation in holiday flats; providing temporary accommodation in holiday homes; providing temporary lodging for guests; provision of hotel accommodation; providing hotel and motel services; motels; hotel accommodation services are included in, or overlap with, the broader category of the opponent’s hotels. Therefore, they are identical.

 

The contested bar services; bistro services; wine bar services; providing food and drink in restaurants and bars; pizza parlors; pubs; café services; beer bar services; snack-bars; hospitality services [food and drink]; restaurants; self-service restaurant services; serving food and drinks; hotel restaurant services; take-out restaurant services; club services for the provision of food and drink; restaurant services provided by hotels; mobile restaurant services; self-service cafeteria services; services for the preparation of food and drink; night club services [provision of food]; serving food and drink in restaurants and bars; tourist restaurants are included in, or overlap with, the broader category of the opponent’s providing of food and drink. Therefore, they are identical.

 

The contested providing convention facilities; provision of conference, exhibition and meeting facilities; provision of facilities for exhibitions; providing conference rooms; providing exhibition facilities in hotels; provision of conference facilities; accommodation services for meetings are at least similar to the opponent’s hotels. It is very common that hotels offer their facilities to organize conferences, exhibitions or meetings. Therefore, the services in question can coincide in providers and end users. Furthermore, they are complementary.

 

 

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 various degrees) are directed at the public at large and, to some extent, at professionals (e.g. with regard to wholesale services in relation to clothing).

 

The degree of attention may vary from average to above average, especially with regard to the services directed at professionals as these services are specialized services.

 

 

3. The signs

 

 

 

	NAHOOR
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

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 figurative sign composed of words ‛SACOOR’ and ‛brothers’, and the figurative element being a representation of a dog, that is, a greyhound. In the middle appears the word ‛SACOOR’ written in slightly stylised letters, above is the aforementioned figurative element and below is the word ‛brothers’.

 

The contested sign is a word mark ‛NAHOOR’. In the case of word marks, the word as such is protected and not its written form. Therefore, the use of upper or lower case letters is immaterial.

 

The words ‛SACOOR’ and ‛NAHOOR’ are meaningless in all official European Union languages. The word ‛brothers’ of the contested sign is meaningful in English (it is plural form of the word ‛brother’, that is, ‛a male who has the same parents as another or one parent in common with another’, definition extracted from Merriam-Webster Dictionary on 18/09/2017 at www.merriam-webster.com/dictionary/brother).   As there is no link between these words and the relevant goods and services, they are distinctive. In addition, the figurative element of the earlier mark has no meaning for the relevant goods and services and is therefore distinctive.

 

Taking into account the central position and its size, the word ‛SACOOR’ will be the dominant (most eye-catching) element of the earlier mark.

 

Visually, the signs coincide in ‘*A*OOR’. However, they differ in their first and third letters (of the words ‛SACOOR’ and ‛NAHOOR’). Although the word ‛SACOOR’ is the most eye-catching element, the other elements of the earlier mark can not be disregarded within the visual comparison. Taking them into account the signs differ in the number of letters (14 and 6 respectively) and the figurative element present in the earlier mark (i.e. the representation of a dog).

 

Therefore, the signs are visually similar to a low degree.

 

Aurally, the pronunciation of the signs coincides in the sound of their second and last three letters ‘*A*OOR’, present identically in both signs. The pronunciation differs in the sound of their first and third letters of the words ‛SACOOR’ and ‛NAHOOR’, that is ‛S’/‛N’ and ‛C’/‛H’ respectively. In addition they differ in the word ‛brothers’ present in the earlier mark. It must be taken into account, although it is not the dominant element of the earlier mark (the figurative element of the earlier mark will not be pronounced).

 

Therefore, the signs are aurally similar to an average degree.

 

Conceptually, although the public in the relevant territory will perceive the meanings of the elements of the earlier mark, as explained above (i.e. the word ‛brothers’ being one of the two verbal elements and the figurative element being a dog), the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

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 claimed that the earlier trade mark ‛SACOOR’ has ‛acquired a certain repute among consumers, which increases the risk of error or confusion and/or erroneous business association on the part of the consumers’. However, it did not file any evidence in order to prove such a claim.

 

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 goods 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

 

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.

 

As concluded above, the contested services are partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s goods and services. The signs are visually similar to a low degree and aurally similar to an average degree. The signs are not conceptually similar. The earlier mark has a normal degree of distinctiveness. Furthermore, the public in question includes the public at large and professionals, whose degree of attention will vary from average to above average.

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

 

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

 

In the present case the services in Class 43 are identical and similar to the opponent’s services. Taking into account the visual and aural similarities between the signs the likelihood of confusion cannot be excluded. However, as far as the services in Class 35 are concerned, they are either similar to a low degree or dissimilar to the opponent’s goods and services. In respect to dissimilar services it should be pointed out that similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR. Therefore, the opposition based on this article and directed at these services cannot be successful. Furthermore, taking into account the aforesaid interdependence rule the likelihood of confusion cannot be found in relation to the rest of the services, namely those found to be similar to a low degree.

It follows from the above that the contested trade mark must be rejected only for the services found to be identical and similar to the services of the earlier trade mark, that is, the services in Class 43.

 

The opponent has also based its opposition on the following earlier trade marks:

 

– European Union trade mark registration No 1 409 556  in Class 25,

– Portuguese trade mark registration No 427 328 ‛SACOOR’ in Class 25.

 

These earlier trade marks do not cover any services. Portuguese trade mark registration No 427 328 ‛SACOOR’ covers the same goods in Class 25 and European Union trade mark registration No 1 409 556 covers a narrower scope of the goods in Class 25. Therefore, the outcome cannot be different with respect to these services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

 

 

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

André Gerd Günther BOSSE

Michal KRUK

Judit NÉMETH

 

 

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.