OPPOSITION No B 2 775 099

Omega Enterprises Sàrl, 6 Rue Eugene Ruppert, 2453 Luxembourg, Luxembourg (opponent), represented by Petosevic B.V.B.A., Avenue Louise 523, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Sandro Marco Paolino, Via Zavaritt 100, 24020 Gorle, Italy (applicant), represented by Rosa Egea Castro, Caridad, 4 Bajo, Molina de Segura, 30500 Murcia, Spain (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 775 099 is upheld for all the contested services.

2.        European Union trade mark application No 15 513 906 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 513 906. The opposition is based on, inter alia, European Union trade mark registration No 13 257 142. 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 European Union trade mark registration No 13 257 142.

1. The services

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

Class 43:        Services for providing food and drink; temporary accommodation; hotel services for preferred customers; hotel, motel, resort, bar and restaurant services; hotels; resort hotels; hotel reservations; motels; restaurants; carry-out restaurants; cafés; cafeterias; canteens; food and drink catering; self-service restaurants; snack-bars; delicatessens [restaurants]; fast food and non-stop restaurant services; fast-food restaurants; wine bars; juice bar and cocktail lounge services; accommodation bureaux [hotels, boarding houses]; boarding house bookings; providing information about temporary accommodation services; providing advice to tourists and business travelers on hotel and restaurant destinations; providing temporary lodging services in the nature of a condominium hotel; reservation of hotel rooms for travelers; reservation of restaurants; reservation and booking services for hotels, restaurants and holiday accommodation; temporary accommodation reservations; providing temporary accommodation in hotels, motels and boarding houses; rental of banquet and social function facilities for special occasions; rental of conference rooms; rental of function rooms for wedding receptions; rental of temporary accommodation; rental of meeting rooms; bartending services; consultancy services in the field of culinary arts; personal chef services; providing on-line advice and information services relating to beverage and food pairings; tourist homes; providing information on restaurants, cuisine and others regarding providing foods and beverages; extended-stay hotels; guest house services; providing temporary accommodation in vacation homes; food sculpting; salad bars; tavern services; pubs; consultancy services in the field of food and drink catering; rental of chairs, tables, table linen, glassware; rental of vacation cabins; boarding for pets; providing Mexican cuisine, Caribbean cuisine, Moroccan cuisine, Asian Cuisine, Thai cuisine, India cuisine, European cuisine, Spanish cuisine, Italian cuisine, French cuisine, Greek cuisine, Turkish cuisine, Cypriot cuisine, Croatian cuisine, cuisine of the Americas, Fusion cuisine; buffet services; butler services..

The contested services are the following:

Class 43:        Temporary accommodation; services for providing food and drink; providing temporary accommodation; provision of food and drink.

Temporary accommodation; services for providing food and drink; providing temporary accommodation; provision of food and drink are identically contained in both lists of services, albeit using slightly different wording (providing temporary accommodation versus temporary accommodation and provision of food and drink versus services for providing food and drink).

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 are directed at the public at large. The degree of attention is average.

3. The signs

EPICUREAN LOUNGE	EPIKUREAN HOTELES VILLAS HIDEOUTS RESORTS
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word mark ‘EPICUREAN LOUNGE’. The element ‘EPICUREAN’ lacks any precise meaning for the great majority of the relevant public and is, therefore, distinctive. It cannot be ruled out that the part of the public familiar with the ancient Greek philosopher Epicurus, will establish a link between the meaning of the word ‘epicurean’ and the contested services in the light of a basic knowledge of the Epicurean doctrine (according to which pleasure is the true scope of life). For this part of the public, the word alludes to the idea of luxury and extravagance and is, therefore, considered to be of limited distinctive character.

The element ‘LOUNGE’ will be perceived as indicating a place where people sit and relax. Bearing in mind that the relevant services consist of the provision of food, drink and temporary accommodation, this element is non-distinctive, since it refers to the nature or place of provision of the services. Consequently, this element has limited significance in the present comparison.

The contested sign is the word mark ‘EPIKUREAN HOTELES VILLAS HIDEOUTS RESORTS’. The element ‘EPIKUREAN’ will be understood as a misspelling of ‘EPICUREAN’, and reference is made to the considerations set out above regarding the distinctive character of that word.

The element ‘HOTELES’ will be perceived as a misspelling of the English word ‘HOTELS’, indicating establishments providing accommodation. The remaining components, namely ‘VILLAS HIDEOUTS RESORTS’, refer to a certain type of house, a hiding place (indicating accommodation not placed in a particularly well-known location) and a type of holiday accommodation. Given the nature of the relevant services, these elements are non-distinctive, since they refer to the nature or place of provision of the services. Therefore, all the elements mentioned above have limited significance in the present comparison.

Due to their verbal nature, neither of the marks has any element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in ‘EPI*UREAN’, that is, in eight out of nine letters of their most distinctive parts. They differ in non-distinctive, and therefore less relevant, elements, and in their fourth letters, namely ‘C’ in the earlier mark and ‘K’ in the contested sign. However, those letters have an identical sound for the relevant public.

Consumers, generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the elements in common in the first and most distinctive words of the marks are particularly relevant for the present comparison.

In view of the above, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs, even if they are not spelled identically, evoke the concept of ‘EPICUREAN’. Although the remaining differing words will also evoke a concept, this is not sufficient to establish any conceptual dissimilarity, as these elements are non-distinctive and are unable to indicate the commercial origin of the marks. The attention of the relevant public will be drawn to the remaining verbal elements ‘EPICUREAN’/‘EPIKUREAN’.

Therefore, the marks are conceptually highly 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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The relevant services are identical. They target the public at large, whose degree of attention is average. The earlier trade mark enjoys a normal degree of distinctiveness.

The signs in dispute are visually and aurally similar to an average degree, as they coincide in the letters ‘EPI*UREAN’, that is, in eight out of nine letters of the first and most distinctive parts of the signs. The differences between the signs lie merely in the fourth letters of the words ‘EPICUREAN’/’EPIKUREAN’, which are, however, aurally identical, and in non-distinctive and therefore less significant elements. Moreover, the signs are conceptually similar to a high degree.

In addition, account must 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).

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 relevant services outweighs the differences between the signs, which are of limited significance.

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. 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 services that it designates, namely the type of accommodation where the relevant services are provided (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that those similarities might lead the relevant public, even with a high degree of attention, to believe that the contested services and the opponent’s services were provided by the same undertaking.

In his observations of 31/03/2017, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘EPICUREAN’ and that trade marks containing this element can coexist in the market. In support of his argument, the applicant refers to a number of unidentified national and European Union trade mark registrations, which would also demonstrate the ‘pacific¡ coexistence of the marks containing said elements on the market.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘EPICUREAN’. Under these circumstances, the applicant’s claims must be set aside.

Regarding the claim relating to the coexistence of the marks, the Opposition Division observes that, according to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market. However, the applicant did not provide any evidence regarding said issue. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Finally, it is noted that the existence of other European Union trade mark registrations in the name of the applicant (i.e. No 6 167 894 ‘EPIKUREAN HOTELS, VILLAS & HIDEOUTS’ and 9 223 025 ‘EPIKUREAN VILLAS HOTELS HIDEOUTS’), contrary to what argued by him, is irrelevant for the present assessment, which exclusively refer to the earlier and contested trade marks, as mentioned in the notice of opposition.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

This conclusion also stands for the part of the public that will perceive in the word ‘EPICUREAN’ an allusion to the luxuriousness or extravagance of the relevant services, since a finding that an element that the marks have in common has a low degree of distinctive character does not automatically prevent a finding of likelihood of confusion. Although the distinctive character of the elements that the marks have in common must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered. In the present case, consumers will not overlook the letters that the signs have in common (eight out of nine letters) in elements that have a degree of distinctive character, in contrast to the differing elements, which have no distinctive character and cannot function as an indication of origin.

Moreover, as a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to base the analysis on the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 257 142. It follows that the contested trade mark must be rejected for all the contested services.

As European Union trade mark registration No 13 257 142 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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, he 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

María Clara IBÁÑEZ FIORILLO

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.