OPPOSITION No B 2 750 233

Caribbean Investments B.V., Herengracht 458, 1017 CA Amsterdam, the Netherlands (opponent), represented by Durán – Corretjer S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Oceanic Holding AB, Manufakturgatan 4, 41707 Göteborg, Sweden  (applicant)

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 750 233 is upheld for all the contested services, namely 

Class 36: Rental of apartments; estate management.

Class 43: Rental of temporary accommodation.

2.        European Union trade mark application No 15 195 704 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 195 704  namely against some of the services in Class 36 and all the services in Class 43. The opposition is based on, inter alia, European Union trade mark registration No 6 377 287. 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 6 377 287.

1. The services

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

Class 43: Services for providing food and drink; temporary accommodation.

The contested services are the following:

Class 36: Rental of apartments; estate management.

Class 43: Rental of temporary accommodation.

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 36

The opponent’s services of temporary accommodation share the same purpose with the contested services covered by rental of apartments and estate management even if the renting is not permanent. These services can target the same public. Consequently, they are similar to a low degree.

Contested services in Class 43

The rental of temporary accommodation is covered by the opponent’s broader category of temporary accommodation. Consequently, these services 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 services found to be identical and similar to a low degree are directed at the public at large (such as rental of temporary accommodation) and at business customers with specific professional knowledge or expertise in the field of estate management. Therefore, the degree of attention of the public may vary from average to high.

3. The signs

OCEAN HOTELS BY H10	OCEAN CAMPUS
Earlier trade mark	Contested sign

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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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, and for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is the word mark composed of ‘OCEAN HOTELS BY H10’ and the contested sign is a word mark composed of two words ‘OCEAN CAMPUS’.

The coinciding element ‘OCEAN’ will be perceived by the relevant public as referring to ‘a body of saline water that composes much of a planet's hydrosphere’. However, as the word is not sufficiently direct in relation to the relevant services, it is not descriptive or otherwise weak and therefore enjoys a normal degree of distinctiveness.

On the other hand the element ‘HOTELS’ of the earlier mark is clearly non-distinctive in relation to services in the field of temporary accommodation. In addition the elements ‘BY H10’, although not directly descriptive of the relevant services, will have less of an impact on the assessment of the likelihood of confusion since it is not only placed at the end of the mark, but will be merely perceived by the relevant public as a promotional reference to the name of the company (‘H10’) providing (‘BY’) the services under the earlier mark.

The element ‘CAMPUS’ of the contested sign will be perceived by the relevant public as referring to the land on which a college or university and related institutional buildings are situated and, as such, in relation to the relevant services, as a reference to the subject of the services and therefore this element is weak.

Visually and aurally, the signs coincide in the word ‘OCEAN’, and they differ in elements that will be attributed no or less attention by the relevant public either due to their descriptive or weak character or their position in the mark.

It should be borne in mind that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 signs are visually and aurally similar to an average degree.

Conceptually, the element ‘OCEAN’, included in both signs, will be associated with the meaning explained above and to that extent, the signs are conceptually similar. This meaning is not altered by the additional concepts carried by the additional word elements in both trade marks (‘HOTEL’ and ‘BY H10’ as previously detailed).

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 claimed that the earlier trade mark enjoys high distinctiveness but did not file evidence in order to prove such a claim.

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 non-distinctive, weak and elements of a lower impact in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case the services are identical and similar to a low degree. The degree of attention paid by the relevant public varies from average to high.

The signs are, on all levels, similar to an average degree.

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). 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).

Under these circumstances, the differences between the signs, resulting from the verbal elements ‘HOTELS BY H10’ of the earlier mark and ‘CAMPUS’ of the contested sign, are not sufficient to rule out a likelihood of confusion on the part of the relevant public, taking into account that the element in which the marks coincide is the most distinctive in both signs and will consequently have a greater impact on the consumer.

The Opposition Division considers that the similarity between the signs might lead at least part of the relevant public to think that the contested services and the opponent’s services are provided by the same undertaking or from economically-linked undertakings and that the contested sign is a sub-brand of goods connected to the earlier mark, for example targeting mainly students.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public in the European Union, which even outweighs the low degree of similarity between the some of the services.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 6 377 287. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to a low degree.

As the above mentioned earlier right lead 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 (see judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

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

Ioana MOISESCU

Cynthia DEN DEKKER

Jessica LEWIS

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.