OPPOSITION No B 2 736 265

Engelinus Wolthuis, Hoofdweg 68, 9615 AD, Kolham, The Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative)

a g a i n s t

Ghisa Holding B.V., Monte Viso 25, 1060, PE, Amsterdam, The Netherlands (applicant).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 736 265 is upheld for all of the contested goods and services.

2.        European Union trade mark application No 15 236 854 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 15 236 854.  The opposition is based on, inter alia, its earlier Benelux trade mark registration No 988 783. The opponent invoked Article 8(1)(a) and (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.

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 Benelux trade mark registration no 988 783.

1. The goods and services

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

Class 9: Software for online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals.

Class 42: Hosting electronic platforms.

Class 43: Short-term house rental, rental of condominium and apartments, time-shares (short-term rental of accommodations); online reservation, booking for temporary lodging, temporary accommodations and vacation rentals.

The contested goods and services are the following:

Class 9: Software for online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals.

Class 42: Providing an electronic platform through global computer and mobile networks for users to find temporary lodging, temporary accommodations and vacation rentals.

Class 43: Providing online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals; Rental of short-term houses, condos and apartments, time-shares and temporary accommodations.

Contested goods in class 9

Software for online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals are identically contained in both lists of goods.

Contested services in class 42

The contested Providing an electronic platform through global computer and mobile networks for users to find temporary lodging, temporary accommodations and vacation rentals are included in the broad category of hosting electronic platforms.  Therefore, they are identical.

Contested services in class 43

Providing online reservation, booking for temporary lodging, temporary accommodations and vacation rentals; Rental of short-term houses, condos and apartments, time-shares and temporary accommodations are identically contained in both lists of services.

Providing online search services for temporary lodging, temporary accommodations and vacation rentals are considered to be highly similar to the opponent’s online reservation services. They coincide with end users, will be offered via the same outlets and would be in competition with one another.  Therefore, they are highly similar.

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 goods consist of software for online reservations, booking and search services for various forms of accommodation.  These are goods sought by professionals seeking to start or develop their existing software.  Their level of attention is considered to be high.  With regard to the services, these would be sought by the general public and professionals seeking some form of accommodation.  The general public’s level of attention will be average, whereas the professional public will pay a higher level of attention.

3. The signs

	MI CASA 4 YOU
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French and German-speaking part of the relevant public.    

The contested sign consists exclusively of the words and numeral ‘MI CASA 4 YOU’.  None of the individual words or numeral are considered to be more dominant than the others.  Therefore, the distinctiveness resides in the mark as a whole.  The earlier mark also contains the same words and numeral together with the device of an envelope (it may perceived by some as a house). Neither mark has any element that could be considered clearly more distinctive or dominant than the other elements.

Visually, the signs coincide in ‘MI CASA 4 YOU’. They differ insofar that the earlier trade mark includes the depiction of an envelope or a house.  Whilst the envelope is multi coloured it must be recalled that, 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; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).  However, it is noted that the positioning of the words and numeral in the respective marks differs and, therefore, this does impact the overall visual similiarty between the marks.  They are considered to visually similar to an average degree.

Aurally, the aural comparison resides with the remaining identical elements, namely ‘MI CASA 4 YOU’.  They would be pronounced in an identical manner making the signs aurally identical.  

Conceptually, although the relevant public in the relevant territory will perceive the meaning of the earlier mark as being an envelope (or possibly a house), the other sign does not contain such a device and therefore it evokes no meaning.  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 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 goods and 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

The goods and services are either identical or highly similar to one another.  The marks are visually similar to an average degree and aurally identical.  To those who recognise the envelope (or a house) to some members of the relevant public they are not conceptually similar.  

The words and numeral in the earlier mark, ‘MI CASA 4 YOU’, are reproduced in its entirety in the contested sign.  Whilst the earlier mark also contains the device of an envelope it does not detract from the striking similarities between the respective marks.  In view of this, combined with the goods and services being identical, there is a clear likelihood of confusion for both the general public (whose level of attention will be average) and professionals (whose level of attention is high). 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). 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). This conclusion would also be reached based on the marks being considered conceptually neutral or identical.  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).

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 988 783.  It follows that the contested trade mark application must be rejected for all of the applied for goods and services.  

As the earlier right BX trade mark registration No 988 783 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Erkki MŰNTER

Mark KING

Plamen IVANOV

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.