OPPOSITION No B 2 709 437

Eindhovense Toeristen Service B.V. h.o.d.n. Solmar Tours, Den Engelsman 2 a, 6026 RB Maarheeze, The Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative)

a g a i n s t

Solmar Villas Ltd, 13 Faraday, Court First Avenue, Burton upon Trent, Staffordshire DE14 2WX, United Kingdom (applicant), represented by Williams Powell, Staple Court 11, Staple Inn Buildings, London WC1V 7QH, United Kingdom (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 437 is upheld for all the contested services.

2.        European Union trade mark application No 15 139 546 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 15 139 546. The opposition is based on Benelux trade mark registration No 911 613. 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 services

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

Class 39: Transport; packaging and storage of goods; travel arrangement.

The contested services are the following:

Class 39: Travel organisation; Car hire; Car hire services; Arranging of car hire; Booking of hire cars; Booking agency services for car hire; Arranging car hire as part of package holidays; Hire of cars; Organization of holidays; Arranging of holiday transport; Holiday travel reservation services; Organisation of holiday travel.

Class 43: Accommodation services; Arranging holiday accommodation; Holiday accommodation services; Rental of holiday homes; Rental of holiday accommodation; Arranging of holiday accommodation; Letting of holiday accommodation; Accommodation reservations; Accommodation reservation services.

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 39

The contested travel organisation and the opponent’s travel arrangement refer to the same services despite a slight difference in their wording. Furthermore, the contested organization of holidays, holiday travel reservation services and organisation of holiday travel are included in or overlap with the opponent’s travel arrangements. Therefore, these services are identical.

The contested car hire, car hire services, arranging of car hire, booking of hire cars, booking agency services for car hire, arranging car hire as part of package holidays, hire of cars, arranging of holiday transport are included in the broad category of the opponent’s transport. Therefore, they are identical.

Contested services in Class 43

Contrary to the applicant’s observations, the Opposition Division finds that the contested accommodation services, arranging holiday accommodation, holiday accommodation service, rental of holiday homes, rental of holiday accommodation, arranging of holiday accommodation, letting of holiday accommodation, accommodation reservations, accommodation reservation services have the same providers and distribution channels as the opponent’s travel arrangement. These services also target the same public. Therefore, they are 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 services found to be identical or similar are directed at the public at large. The degree of attention will be average.

3. The signs

	Solmar Villas
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 element ‘Beste prijs, goede reis!’ is meaningful only in Dutch. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

The earlier mark is a figurative mark. The sign is composed of a three-coloured (orange, yellow and turquoise) crescent and the verbal elements ‘Solmar’ in dark blue letters and ‘Tours’ in turquoise letters, with the Dutch expression ‘Beste prijs, goede reis!’ in small dark blue letters below these verbal elements.

The element ‘Solmar’ has no meaning for the relevant public and is, therefore, distinctive. The Dutch-speaking public is not familiar with Spanish and, contrary to the applicant’s arguments, would definitely not be able to recognise the combination of the Spanish words ‘sol’ and ‘mar’.

However, the relevant public will understand the English word ‘Tours’, since the Dutch-speaking public is familiar with English and ‘Tours’ is a very basic English word referring to an extended journey, usually taken for pleasure, visiting places of interest along the route. Furthermore, the Dutch expression ‘Beste prijs, goede reis!’ means ‘Best price, enjoy your journey’. Consequently, bearing in mind that the relevant services are related to travel and tourism, which include making accommodation reservations, these elements are non-distinctive for all the relevant services, given that the element ‘tours’ merely refers to the kind of services provided and the expression ‘Beste prijs, goede reis!’ is a mere promotional slogan.

Contrary to the parties’ observations, the Opposition Division finds that the earlier mark has no elements that could be considered clearly more dominant than other elements. Neither the decorative crescent nor the word ‘Solmar’ is the most eye-catching. However, the slogan ‘Beste prijs, goede reis!’, because it is in a secondary position and in much smaller characters, is considered the element that will attract the least attention.

The contested sign is a word mark made up of two elements, ‘Solmar’ and ‘Villas’. The element ‘Solmar’ is distinctive, as explained above, whereas the word ‘Villas’ has a meaning and will be understood. The word ‘villa’ is defined as a fairly large house, especially one that is used for holidays in Mediterranean countries (Collins Dictionary on 15/06/2017 at  https://www.collinsdictionary.com/dictionary/english/villa); therefore, it is non-distinctive for the contested services in Class 43 and at least weak in relation to the remaining services, which are all travel and holiday-related.

Visually, the signs coincide in the verbal element ‘Solmar’. They differ in the additional elements, that is, the crescent, the non-distinctive/weak elements ‘Villas’ and ‘Tours’ and the non-distinctive slogan ‘Beste prijs, goede reis!’. 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). Therefore, the fact that the signs have a verbal element in common is particularly important, especially given that the coinciding element, ‘Solmar’, is the first word element of the signs and that 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.

Overall, the signs are visually similar to an average degree.

Aurally, the slogan ‘Beste prijs, goedede reis!’ will most probably not be pronounced, because of its smaller lettering and its non-distinctive character, as explained above. The elements that will be pronounced are ‘Solmar’ and ‘Tours’ in the earlier mark and the whole contested sign, SOL/MAR/VIL/LAS. Therefore, the signs coincide in two syllables, ‘SOL’ and ‘MAR’, out of three syllables in the earlier mark and four syllables in the contested sign.

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

Conceptually, neither of the signs has a meaning as a whole. Although the elements ‘Tours’, ‘Villas’ and ‘Beste prijs, goede reis!’ will evoke concepts as detailed above, they are non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the fanciful verbal element ‘Solmar’, which has no meaning. Therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

In the present case, the services are identical or similar to an average degree. The signs are visually and aurally similar to an average degree. The differences between the signs are confined to non-distinctive or secondary elements, namely the elements ‘Villas’, ‘Tours’, ‘Beste prijs, geode reis!’ and the colourful crescent, which, as explained above, has less impact on the consumers than the verbal elements.

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). That is particularly important when, as in the present case, the earlier mark enjoys an average degree of distinctiveness and the degree of attention of the relevant public is also average.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-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 Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 911 613. It follows that the contested trade mark must be rejected for all the contested 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.

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

Zuzanna STOJKOWICZ

Birgit Holst FILTENBORG

Ioana MOISESCU

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.