OPPOSITION No B 2 665 811

The Provost, Fellows, Foundation Scholars, and the Other Members of the Board of the College of the Holy and Undivided Trinity of Queen Elizabeth near Dublin, College Green, Dublin 2, Ireland (opponent), represented by Maclachlan & Donaldson, 2b Clonskeagh Square, Clonskeagh Road, Dublin D14 V0N2, Ireland (professional representative)

a g a i n s t

Trinity Hotels, Slnečné jazerá – sever 2561, 90301 Senec, Slovakia (applicant).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 811 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 517 163 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 517 163. The opposition is based on, inter alia, Irish trade mark registration No 247 051. 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.

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 Irish trade mark registration No 247 051.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter, bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; printed publications; albums; almanacs; bags of paper or plastic for packaging; wrapping paper; binders, binding strips; book-ends, booklets, book markers and books; brochures; boxes of cardboard or paper; envelopes or wrappers of cardboard or paper; diaries and calendars; cardboard articles; catalogues and charts; chromolithographs; coasters of paper or cardboard; covers; paper cutters and knives; drawing instruments and materials; engravings and prints; erasing products and rulers; etchings; files and folders; paper flags; printed forms and pamphlets; periodicals and magazines; manuals and newsletters; advertising and promotional materials; webpages downloaded from the Internet in the form of printed matter; non-textile labels; lithographic works of art and lithographs; fountain pens, pens, pencils, pencil sharpeners, pencil and pen holders and writing materials; graphic prints and reproductions; paper weights; tickets; notebooks and pads; scrap-books; office requisites other than furniture; packing paper; pictures; instructional and teaching material other than apparatus; paper placemats, cloths and napkins; postcards and posters; signs of paper or cardboard; stencils, stickers and transfers; photographs and photo engravings; stationery; but not including printed matter, publications, instructional and teaching material relating to computers and computer programmes.

Class 35: Advertising; business management; business administration; office functions; publishing services; publication of publicity texts; rental of advertising space; business consultancy and information; organisation of exhibitions, events and conferences (for commercial and advertising purposes); marketing and market analysis, none being provided via mobile; mobile phone systems; research and studies; data processing and database services (for business); business research and studies; economic forecasting; document reproduction and secretarial services; business information services all provided on-line from a computer database or the Internet; compilation of advertisements for use as web pages on the Internet; provision of space on websites for advertising; compilation of information on all the aforesaid services available via the Internet or the world wide web; database, on-line and Internet consultancy, advisory and information services; consultancy, advisory and information services relating to all the aforesaid services; but not including business administration and management relating to the maintenance of vehicle fleets or any services relating to commodities trading or risk management solutions.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; arrangement, conducting and organisation of exhibitions, events and conferences; publication of books and texts; electronic publication in the field of education and training; educational services and information; educational examination; entertainment services and information; sporting and cultural activities; instruction and training services; presentation of live performances; providing museum facilities; provision of information on and access to sports facilities, cultural facilities and educational facilities; organisation of competitions; providing sports facilities; providing recreation and cultural facilities and information; arranging and conducting of seminars, workshops and symposia; teaching and practical training; theatre productions; information relating to sporting, entertainment and cultural activities, education, instruction and training provided on-line from a computer database or from facilities provided on the Internet and other similar information networks; organisation, production and presentation of on-line training and education provided on-line from a computer database or from facilities provided on the Internet and other similar information networks; translation services; advisory, consultancy and information services relating to the aforesaid.

Class 43: Services for providing food and drink; temporary accommodation; rental of temporary accommodation; accommodation reservations; hotel, restaurant, café and catering services; providing facilities for exhibitions.

The contested goods and services are the following:

Class 16: Advertising material of paper or cardboard.

Class 35: Business consultancy in the field of hotels; business management of hotels; administrative processing of purchase orders; invoicing; public relations; commercial information agencies; rental of advertising space; organisation of exhibitions for advertising or commercial purposes; demonstration of goods; commercial brokering of hotel services; commercial brokering of rehabilitation and conditioning services.

Class 41: Arranging and conducting of conferences, congresses, colloquiums, seminars, symposiums, courses and training; organisation of receptions, discotheques, live performances; arranging presentations (other than commercial and advertising); arranging cultural, educational and sporting and entertainment events, contests and competitions; production of theatre, film, concert and other shows for cultural and entertainment purposes; party planning (entertainment); organization of balls; slot machine (gaming machine) services; leisure and entertainment information; rental of sports equipment, except vehicles; golf facilities (providing -); sport camp services.

Class 43: Bar services; services for providing food and drink; cafés; hotels; accommodation bureaus [hotels, boarding houses]; rental of meeting rooms; rental of chairs, tables, tablecloths and glassware; reservation of hotel accommodation and reservation of boarding house accommodation; temporary accommodation reservations.

Contested goods in Class 16

The contested advertising material of paper or cardboard is included in the broad category of the opponent’s advertising materials. Therefore, they are identical.

Contested services in Class 35

Organisation of exhibitions for advertising or commercial purposes is identically contained in both lists of services.

The contested business management of hotels is included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested business consultancy in the field of hotels; commercial information agencies; commercial brokering of hotel services; commercial brokering of rehabilitation and conditioning services are included in the broad category of the opponent’s business consultancy. Therefore, they are identical.

The contested administrative processing of purchase orders; invoicing are included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested public relations; rental of advertising space; demonstration of goods are included in the broad category of the opponent’s advertising. Therefore, they are identical.

Contested services in Class 41

Arranging and conducting of conferences, seminars, symposiums are identically contained in both lists of services (including synonyms).

The contested arranging and conducting of congresses, colloquiums, courses and training; arranging cultural, educational and sporting, contests and competitions; arranging presentations (other than commercial and advertising) are included in the broad category of the opponent’s arrangement, conducting of events. Therefore, they are identical.

The contested organisation of receptions is included in the broad category of the opponent’s organisation of events. Therefore, they are identical.

The contested organisation of discotheques, live performances; arranging entertainment events are included in the broad category of the opponent’s organisation of events. Therefore, they are identical.

The contested production of theatre, film, concert and other shows for cultural and entertainment purposes; party planning (entertainment); organization of balls; slot machine (gaming machine) services; leisure and entertainment information are included in the broad category of the opponent’s entertainment and cultural activities. Therefore, they are identical.

The contested rental of sports equipment, except vehicles; golf facilities (providing -); sport camp services are included in the broad category of the opponent’s sporting activities. Therefore, they are identical.

Contested services in Class 43

Services for providing food and drink; hotels; cafés are identically contained in both lists of services.

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

The contested accommodation bureaus [hotels, boarding houses]; rental of meeting rooms are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.

The contested rental of chairs, tables, tablecloths and glassware are included in the broad category of, or overlap with, the opponent’s providing facilities for exhibitions. Therefore, they are identical.

The contested reservation of hotel accommodation and reservation of boarding house accommodation; temporary accommodation reservations are included in the broad category of the opponent’s accommodation reservations. 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 goods and services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high; for example, it will be high for services such as business consultancy and business management of hotels.

3. The signs

TRINITY
Earlier trade mark	Contested sign

The relevant territory is Ireland.

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, ‘TRINITY’, whereas the contested mark is a figurative mark composed of the words ‘BOUTIQUE EVENTS’ in upper case letters above the words ‘by TRINITY HOTELS’, in smaller letters. There is a red, blue and green figurative element, which depicts a ratchet, to the right of this combination of words.

The word ‘TRINITY’, contained in both marks, will be understood by the relevant public as ‘a group of three; the state of being threefold’ and will be associated with the Holy Trinity, which is ‘God the Father, God the Son and God the Holy Spirit’ (information extracted from Collins English Dictionary on 07/03/2017 at https://www.collinsdictionary.com/dictionary/english/trinity). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The figurative elements will be perceived as a ratchet with three blades.

The element ‘BOUTIQUE’ of the contested sign will be associated with ‘something of or denoting a small specialized producer or business’ (information extracted from Collins English Dictionary on 07/03/2017 at https://www.collinsdictionary.com/dictionary/english/boutique). Moreover, the element ‘EVENTS’ of the contested sign will be associated with ‘all the things that are happening in a particular situation’ (information extracted from Collins English Dictionary on 07/03/2017 at https://www.collinsdictionary.com/dictionary/english/event). The element ‘by’ of the contested sign will be perceived as a preposition used to describe something done ‘with the help of somebody’ (information extracted from Collins English Dictionary on 07/03/2017 at https://www.collinsdictionary.com/dictionary/english/by_1). In addition, the element ‘HOTELS’ of the contested sign will be associated with ‘a building where people stay, for example on holiday, paying for their rooms and meals’ (information extracted from Collins English Dictionary on 07/03/2017 at https://www.collinsdictionary.com/dictionary/english/hotel). All these elements are weak or non-distinctive for all the relevant goods and services, as they could lead the public to believe that the relevant goods and services are offered at events organised by a small specialised producer or business in a hotel.

Therefore, the contested sign is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Consequently, the verbal element of the contested sign is its most distinctive element.

The verbal element ‘BOUTIQUE EVENTS’ and the figurative element in the contested sign are the dominant elements as they are the most eye-catching.

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).

Visually, the signs coincide in the word ‘TRINITY’. However, they differ in the additional words ‘BOUTIQUE’, ‘EVENTS’, ‘BY’ and ‘HOTELS’, the figurative element and the stylisation of the contested sign. These elements were all found to be weak or non-distinctive, as explained above, and therefore do not affect the visual comparison. The signs also differ in the colours of the contested mark.

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

Aurally, the pronunciation of the signs coincides in the syllables /TRI/NI/TY/, present identically in both signs. The pronunciation differs in the sound of the additional words ‘BOUTIQUE’, ‘EVENTS’, ‘BY’ and ‘HOTELS’ of the contested mark, which have no counterparts in the earlier sign and were found to be weak or non-distinctive, as explained above, and therefore do not affect to aural comparison.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are similar to an average degree.

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 identical and target the public at large and the business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

From the point of view of the relevant public, the signs are visually, aurally and conceptually similar, inasmuch as they have in common the verbal element ‘TRINITY’, which is the only verbal element of the earlier mark and the most distinctive element of the contested mark. The signs differ in the additional words ‘BOUTIQUE’, ‘EVENTS’, ‘BY’ and ‘HOTELS’, which were found to be weak or non-distinctive for all the relevant goods and services, and in the figurative element, which has a decorative nature, the stylisation and the colours of the contested mark.

In addition, account should be 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).

The fact that the earlier mark is entirely included in the contested sign may lead the public to believe that the goods and services at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31, 32). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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).

In the present case, the identity between the goods and services offsets any lesser degree of similarity between the signs.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Irish trade mark registration No 247 051. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier Irish trade mark registration No 247 051 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).

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

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.