OPPOSITION No B 2 703 208
Lmnext UK Limited, 77 Hatton Garden, London EC1N 8JS, United Kingdom (opponent), represented by Studio Legale Bird & Bird, Via Borgogna, 8, 20122 Milano, Italy (professional representative)
a g a i n s t
Escala Project S.L., Calle Apuntadores 34 entlo, 07012 Palma de Mallorca, Spain (applicant).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 703 208 is partially upheld, namely for the following contested services:
Class 41: Sports; Sporting activities.
Class 43: Restaurants; Temporary accommodation; Hotel reservations; Resort hotel services.
Class 44: Hygienic and beauty care; Tanning salons; Solarium services; Services for the provision of sauna facilities; Turkish baths; Health spa services; Massage; Hydrotherapy; Physical therapy.
2. European Union trade mark application No 15 005 796 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 005 796. The opposition is based on European Union trade mark registration No 7 561 591. 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 services
The services on which the opposition is based are the following:
Class 38: Providing access to online information; providing access to and leasing access time to computer databases and computer networks; information, advisory and consultancy services relating to the aforesaid, including such services provided on-line from a computer database or from the Internet.
Class 39: Transport; travel agency services; travel arrangement; booking and reservation services for travel; holiday travel reservation services; provision of information relating to travel; information, advisory and consultancy services relating to the aforesaid, including such services provided on-line from a computer database or from the Internet.
Class 42: Design, drawing and commissioned writing, all for the compilation of web pages and web sites on the Internet; design and development of computer hardware and software; information, advisory and consultancy services relating to the aforesaid, including such services provided on-line from a computer database or from the Internet.
Class 43: Temporary accommodation services; hotel services, motel services, provision of accommodation, reservation services for temporary accommodation; holiday information and planning relating to accommodation; bar services, public houses services, cafe services, restaurant and snack bar services; catering services for the provision of food and drink; health resort services; information, advisory and consultancy services relating to the aforesaid, including such services provided on-line from a computer database or from the Internet.
Class 44: Health spa services; information, advisory and consultancy services relating to the aforesaid, including such services provided on-line from a computer database or from the Internet.
The contested services are the following:
Class 41: Education, entertainment and sports; Sporting and cultural activities; Performance of dance, music and drama; Training.
Class 43: Restaurants; Temporary accommodation; Hotel reservations; Resort hotel services.
Class 44: Hygienic and beauty care; Tanning salons; Solarium services; Services for the provision of sauna facilities; Turkish baths; Health spa services; Massage; Hydrotherapy; Physical therapy.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
It is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 41
Sporting activities and sports are often offered as activities in thermal and health spas as a way to exercise and keep fit and complete various health treatments. Accordingly, the services have the same distribution channels and purposes and they target the same consumers. Therefore, the contested sports; sporting activities are similar to the opponent’s health spa services of Class 44.
However, the contested education, entertainment; cultural activities; performance of dance, music and drama; training are dissimilar to the opponent’s services. They have a different method of use and a different nature and purpose. They do not coincide in their distribution channels, are not interchangeable and do not have the same commercial origin either. Although the opponent is right that services in Class 43 such as restaurants and hotels can provide on-site entertainment and cultural activities, they are merely ancillary and are not indispensable for the use of each other. For example, restaurants do not necessarily need entertainment services to exist and vice versa, although the services may target the same public.
Contested services in Class 43
Restaurants; temporary accommodation are identically contained in both lists of services, albeit with slightly different wording.
The contested resort hotel services are included in the broad category of the opponent’s hotel services. Therefore, they are identical.
The contested hotel reservations are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.
Contested services in Class 44
Health spa services are identically contained in both lists of services.
The contested hygienic and beauty care ; tanning salons; solarium services; services for the provision of sauna facilities; Turkish baths; massage; hydrotherapy overlap with the opponent’s health spa services to the extent that the applicant’s services are offered in a health spa. Therefore, they are identical.
The contested physical therapy is similar to the opponent’s health spa. All these services can have the same distribution channels and end users. They also have the same purpose, namely to achieve a healthy body. They are in competition and sometimes are complementary. Therefore, they are similar.
- 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 public’s degree of attentiveness may vary from average to high, depending on the price and the consequences for the user’s appearance or health.
- The signs
| TOP SECRET HOTELS | |
|
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 element ‘HOTELS’ that the signs have in common, the element ‘SECRET’ of the earlier mark and the plural form of this element in the contested mark 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.
Neither of the signs has any element that could be considered clearly more dominant than other elements, since the earlier mark is a word mark and the horizontal line and the verbal elements of the contested sign will be perceived as a whole.
The earlier mark is a word mark consisting of three verbal elements, ‘TOP’, ‘SECRET’ and ‘HOTELS’. The element ‘TOP’ will be understood by the relevant public as meaning ‘to say that you think something is excellent’ (information extracted from Collins English Dictionary on 05/04/2017 at https://www.collinsdictionary.com/dictionary/english/top_1). The relevant public will perceive this word as indicating the high quality of the relevant services; therefore, they will not pay much attention to this weak laudatory element. The element ‘HOTELS’ of the contested sign will be understood as ‘an establishment providing lodging, meals, and various services such as beauty care, spa and entertainment services’ (information extracted from Collins English Dictionary on 05/04/2017 at https://www.collinsdictionary.com/dictionary/english/hotel). Bearing in mind that the relevant services are all related to hotels, this element is weak for the services that may be offered in a hotel, such as spa services, and non-distinctive for accommodation services in Class 43. The element ‘SECRET’ will be understood by the relevant public as something that ‘is known about by only a small number of people, and is not told or shown to anyone else’ (information extracted from Collins English Dictionary on 05/04/2017 at https://www.collinsdictionary.com/dictionary/english/secret). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. The English-speaking public will understand the standard expression ‘TOP SECRET’ as meaning ‘of the highest level of confidentiality’. This expression is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The contested mark is a figurative mark containing two verbal elements, ‘Secrets’ and ‘hotels’, in a slightly stylised blue typeface. Both elements will be associated by the relevant public with the meanings explained above. Bearing in mind the relevant services, the element ‘HOTELS’ is non-distinctive for the services in Classes 43 and weak for the services in Classes 41 and 44. The contested sign is also composed of a non-distinctive figurative element, namely a blue line underlining the verbal elements, which is purely decorative. Therefore, the element ‘SECRETS’ is the most distinctive element in the contested sign.
Visually, the signs coincide in the elements ‘SECRET*’ and ‘HOTELS’. They differ in the additional and laudatory element of the earlier mark, ‘TOP’, and in the additional and final letter, ‘S’, in the second element of the contested sign, as well as in the figurative aspects of the contested sign. However, considering that both the word ‘TOP’ of the earlier mark and the graphic depiction of the contested sign are weak, these differences and the difference in the single letter ‘S’ in the middle of the contested sign cannot counterbalance the similarities residing in the words ‘SECRET HOTEL’ that the signs have in common.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SECRET*-HOTELS’, present in both signs. The pronunciation differs in the sound of the letters ‘TOP’ of the laudatory element of the earlier mark, and in the additional final letter in the second element of the contested sign, ‘S’. However, bearing in mind that this single letter will hardly be noticed, as it is located at the end of the word ‘SECRET’, and that the weak element ‘TOP’ has less impact on the overall impression created by the marks, the signs are aurally highly similar.
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 they are conceptually similar, since the difference is due to a laudatory element, which merely emphasises the degree of secrecy (‘TOP SECRET’), which is the more distinctive and therefore the more memorable element 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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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/weak elements in the mark as stated above in section c) of this decision.
- 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 good/services covered are from the same or economically linked undertakings.
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 signs are visually and conceptually similar to an average degree and aurally similar to a high degree. The services at issue are partly identical, partly similar and partly dissimilar. They target the public at large and the degree of attention varies from average to high.
The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that identical and similar goods come from the same undertaking or at least economically linked undertakings.
Considering all the above and taking into account 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), there is a likelihood of confusion, including a likelihood of association, because the differences between the signs are confined to a laudatory element. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union, in this case the English-speaking part of the public, is sufficient to reject the contested application.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 7 561 591. It follows that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
| Justyna GBYL
|
Alexandra APOSTOLAKIS | Adriana VAN ROODEN |
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.