OPPOSITION No B 2 396 417

Marriott Worldwide Corporation, 10400 Fernwood Road, Bethesda, Maryland 20817,

United States of America (opponent), represented by Sandro Corona, Via Santa Margherita al Colle, 20, 40136 Bologna, Italy (professional representative)

a g a i n s t

A.C. Milan S.P.A., Via Aldo Rossi 8, 20149 Milano, Italy (holder), represented by Perani & Partners Spa, Piazza San Babila 5, 20122 Milano,  Italy (professional representative).

On 26/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 396 417 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 182 615, namely against all the services in Class 43. The opposition is based on  European Union trade mark registrations No 10 032 829, 10 026 871 and 11 594 281. 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 signs

No 11 594 281-    AC No 10 032 829 – AC HOTELS BY MARRIOTT No 10 026 871
Earlier trade marks	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 a) is a word mark composed of two letters. The mark has no meaning. The mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The earlier mark b) is a word mark composed of four words. The element AC has no meaning. The element HOTELS is perceived by the public throughout the relevant territory as a simple English word referring to an establishment of temporary accommodation. The word BY is perceived by the English speaking public as a preposition indicating that the word that follows refers to the person or entity that offers or to whom something belongs. The word MARRIOTT is a word with no specific meaning. The mark has no dominant elements.

The earlier mark c) is a figurative mark composed of three words. The element AC has no meaning. The element HOTELS is perceived by the public throughout the relevant territory as a simple English word referring to an establishment of temporary accommodation. The word MARRIOTT is a word with no specific meaning. The words are written on three lines, in white, and placed on a black rectangular background. The words AC HOTELS and MARRIOTT are separated by a thin white horizontal line. The mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative sign. It contains a device element composed of semi-vertical asymmetrical slightly curved lines of black and red with golden outline, forming altogether a round shaped object. Underneath it, there is a letter sequence   MILACAN in very stylised golden upper case letters. In the middle of the mark, between the letters L and A, in a slightly raised position not exceeding the other letters, are two letters AC in a very small highly stylised typeface. In case it is seen, the letters MIL and AN, forming a word MILAN, can be perceived as a city in Italy. AC has no meaning. The device element is perceived as such.

The figurative element of the circular object in the trade mark overshadows the other elements of the mark by virtue of its central position and size together with the letters MILAN. The letters AC are a negligible element due to their minuscular size and placement.  

Exceptionally, as is the case here, in the event of negligible elements, the Office may decide not to take such elements into consideration for the purposes of the actual comparison (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 42).

Visually, the signs have been described above. The earlier marks b) and c) are clearly dissimilar to the contested mark, as the earlier marks contain many different words (sign b) and word/device elements (c), and due to the completely different set up of the contested mark, which contains a visually outstanding distinctive and dominant device element and word elements, which differ significantly from those of the earlier mark in their entirety

In respect of the earlier sign a), it is noted that the only coincidence between the signs is the presence of letters AC in the contested sign, placed in the middle of other letters MIL and AN, in much smaller and highly stylised typeface. However, as explained above, the letters AC are negligible elements due to their minuscular size and position in the middle of the other letters in the contested sign, and are not noticeable at first sight, considering also that this complex sign has other visually outstanding elements and, therefore, it is very likely that the letters AC are being disregarded by the relevant public.

It must be emphasized that the comparison must cover signs in their entirety. It should be noted that ‘(…) assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components’ (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, §  41).

As the signs visually only coincide in irrelevant aspects, namely an element which is negligible in the contested sign, it is concluded that the signs are not visually similar.

Aurally, the earlier mark a) is pronounced AC, the earlier mark b) as AC HOTELS BY MARRIOTT and earlier mark c) as AC HOTELS MARRIOTT according to the pronunciation rules of respective languages in the relevant territory.

In the contested sign the letters MILAN are the only ones that will be pronounced. As mentioned in the visual comparison, the letters AC in the contested sign are considered negligible due to their size and placement. The same reasoning as above applies also for aural comparison.

Therefore, the signs are not aurally similar.

Conceptually, while the public in the relevant territory will perceive the contested mark as explained above, the earlier sign a) lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

In respect of earlier marks b) and c), and the contested sign, the meaning of all of which is explained above, it is concluded that the signs will be associated with dissimilar meanings (as the letter sequence AC has no meaning as such), and therefore these signs are not conceptually similar.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

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

The Opposition Division

Justyna GBYL

Erkki MÜNTER

Begoña URIARTE VALIENTE

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.