OPPOSITION No B 2 559 030

Lilien-Verwaltung GmbH & Co. KG, Pettenkoferstr. 24, 80336 München, Germany (opponent), represented by KSLEX Rechtsanwaltsgesellschaft mbH, Nymphenburger Straße 120, 80636 München, Germany (professional representative)

a g a i n s t

Collinson Group (Trademarks) Limited, Suite 1, International House, 16 Bell Lane, Gibraltar (applicant), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative).

On 02/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 559 030 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 785 381. The opposition is based on European Union trade mark registrations No 11 499 134 and No 10 479 376. 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 10 479 376.

1. The services

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

Class 43:        Providing of food and drink and temporary accommodation; Outside catering; Restaurants, cafeterias or cafés, catering services, bars, snack bars; Rental of temporary accommodation; Hotels; Canteens; Motel services; Boarding house; Boarding house bookings; Self-service restaurants; Renting of chairs, tables, table linen, glasses; Accommodation reservations; Providing hotel accommodation; Party planning (providing of food and drink); Rental of bar installations.

The contested services are the following:

Class 43:        Provision of airport lounge services; provision of temporary accommodation and rest area facilities; provision of catering and refreshment services.

Provision of temporary accommodation is identically contained in both lists of services.

The contested provision of catering and refreshment services is included in the broad category of the opponent’s providing of food and drink. Therefore, they are identical.

The contested provision of airport lounge services is related to hospitality facilities that are operated at some airports, which normally offer comforts beyond those offered in the airport terminal itself, as they could provide comfortable seating, resting areas, catering or other similar services. They are closely related to the opponent’s providing of food and drink, as they can be provided by the same undertakings, to the same users and through the same channels. They can also be in competition. Therefore, they are similar.

The contested provision of rest area facilities comprises services provided in areas next to thoroughfares, normally motorways, where people can stop to rest, use the bathroom, get food, etc. These services and the opponent’s providing of food and drink and temporary accommodation can have the same purpose and distribution channels. Moreover, they could be provided by the same undertakings and target the same end users. Consequently, 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 is average.

3. The signs

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 earlier mark is a figurative mark composed of the letter ‘P’ and the number ‘1’, both of which are stylised and depicted in white on a black rectangular background that has a thin white frame. The rectangular background and the thin white frame have a decorative function and will be, therefore, barely attributed trade mark significance and so have little impact on the assessment of the similarity between the signs. The stem of the letter ‘P’ and the number are composed of two lines; one is very thick and the other is fine and delicate. The elements ‘P’ and ‘1’ will be perceived as a letter and a number with no connection to the services in question. They are considered to have a normal degree of distinctiveness for the services in question.

It is difficult to ascertain readily what consumers will discern in the contested sign, given that the combination of the two vertical lines could be perceived by the public in different ways. The vertical line on the left could be perceived as part of the letter ‘P’ in a stylised typeface. However, another part of the public might perceive one of the vertical lines as a stylised number ‘1’ and the other line as the stem of the letter ‘P’.

Considering these two possible scenarios regarding different perceptions of the contested sign, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that will perceive the contested sign as a stylised depiction of the number and letter combination ‘1P’, as this is a plausible scenario and is the scenario that is most favourable for the examination of the opponent’s case.

The letter and the number are depicted in gold. The vertical line of the number is formed by a thick line, whereas the vertical line forming the stem of the letter ‘P’ is very fine. The typography of both these elements is characteristic of a serif typeface, with small lines attached to the ends of the strokes of the letter and the number. The elements ‘P’ and ‘1’ will be perceived as a letter and a number with no connection to the services in question and, therefore, have a normal degree of distinctiveness.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in that they both comprise a letter ‘P’ and a number ‘1’. However, they differ in the relative positions of the letter and the number, namely ‘P1’ in the earlier mark and ‘1P’ in the contested sign. Furthermore, there are graphic differences between the two signs. Firstly, they are depicted in different colours, the contested sign in gold, whereas the opponent’s mark is composed of a white letter and number on a black background and, although these elements of the earlier mark are not particularly distinctive and have little impact on the comparison, they will be, nevertheless, not completely disregarded by the relevant public. Secondly, although there is a certain visual resemblance between the stylisation of the elements in the signs in that they comprise one very thick vertical line and one thin and delicate line, still the typefaces of the signs are clearly different. Moreover, the space between the letter and the number is visually relevant. In the earlier sign, the space between the letter ‘P’ and the number ‘1’ is obvious. However, in the contested sign, the space between the letter ‘P’ and the number ‘1’ is narrower and is not noticeable at first glance.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to different overall impressions.

Therefore, contrary to the opponent’s argument, the signs are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‘P’ and the number ‘1’. However, they are pronounced in different orders. Consequently, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

According to the opponent, the earlier trade mark has a high degree of distinctiveness as a result of its long-standing and intensive use in Germany in connection with the services on which the opposition is based, namely the services in Class 43.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Exhibit 1: an excerpt from a Wikipedia page for the discotheque P1 in Munich, dated 05/02/2016.
• Exhibit 2: some extracts from German magazines, for example Bunte, and German online newspapers, inter alia Berliner Zeitung and Abendzeitung, dated 07/02/2009 and 25/03/2014.
• Exhibit 3: articles from German newspapers, for example Süddeutsche Zeitung.
• Exhibit 4: one page of unknown origin that includes information on numbers of visitors and advertising costs.
• Exhibit 5: a brochure with the menu offered at the club and a description of the club’s history and the organisation of events at it.

The opponent states that its earlier trade marks are used to designate its merchandising products on the basis of the grant of an exclusive licence. Photographs of examples of some products bearing the opponent’s name are submitted (beverages, shoes, fragrances, phonograms, jewellery and glasses); however, these are not dated.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

With respect to the evidence, it was up to the opponent to submit a translation in the language of the proceedings within the same period that was allowed to substantiate the opposition, as required by Rules 16(1) and 17(3) EUTMIR. In this regard, the evidence submitted was not accompanied by a translation into English, which is the language of the proceedings.

Regarding the evaluation of the evidence, it must be borne in mind that the relevant date for proving enhanced distinctiveness is the filing date of the contested trade mark (or any priority date), which in this case is 24/10/2014. The closer the date of the evidence submitted is to the relevant date, the easier it will be to assume that the earlier mark had acquired enhanced distinctiveness at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Evidence of enhanced distinctiveness with regard to a later point in time than the relevant date might nevertheless allow the drawing of conclusions as to the enhanced distinctiveness of the earlier mark at the relevant date (see, by analogy, 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 82). For this reason, the evidence submitted to prove enhanced distinctiveness must be dated or, at least, there should be a clear indication of when the facts attested to therein took place. Consequently, undated documents or documents bearing a date that was added afterwards (e.g. handwritten dates on printed documents) are not appropriate for providing reliable information about the date of the evidence.

The Wikipedia web page (Exhibit 1) is dated 05/02/2016, that is, after the time of filing of the contested sign.

In some of the extracts and articles (Exhibits 2 and 3), the name of the magazine/newspaper or the date has been handwritten retrospectively and is not part of the document itself. Moreover, some of the extracts and articles are dated more than 10 years before the EUTM application priority date, that is, in 1992, 2002 or 2003.

In addition, some of the materials listed above contain information that is of unknown origin. The page with visitor and advertising numbers and the brochure (Exhibits 4 and 5) come from the opponent itself, so the probative value is lower than for evidence from independent third parties. Therefore, this evidence is insufficient and does not demonstrate that the earlier mark is recognised by the relevant public.

Therefore, in the absence of any further evidence, such as the results of surveys regarding the mark’s recognition, invoices, affidavits, advertisements, statements from chambers of commerce and industry or other trade and professional associations, etc., to prove that the sign enjoys a high degree of distinctiveness in the European Union, the Opposition Division concludes that the opponent has failed to prove that the earlier trade mark has acquired a high degree of distinctiveness through use.

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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The services are identical or similar and the relevant public has an average degree of attention.

The signs in dispute both contain one letter and one number; therefore, both are short marks. The relevant public pays more attention to details when trade marks are very short. Moreover, the fact that they show clear differences is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

The marks are aurally similar to an average degree. However, they have only a low degree of visual similarity, since they coincide only in the letter ‘P’ and the number ‘1’, which are depicted in different orders, and differ in the rest of their figurative elements, as explained in section c) of this decision. These differences counteract, to a large extent, the visual and aural similarities that arise from the fact that both signs contain the same letter and number, so that the Opposition Division is of the view that the relevant public will be able to clearly distinguish the marks in dispute and will perceive them as coming from different undertakings, even with regard to identical services.

As stated above in section c) of this decision, the assessment of the similarity of the signs has been carried out based on the perception of the part of the public that will perceive the contested sign as ‘1P’.

If there is no likelihood of confusion for the consumers that perceive the contested sign as ‘1P’, there is, a fortiori, no likelihood of confusion for those consumers who do not see this number and letter combination (or who perceive only the letter ‘P’), since the signs will be even less similar.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

In addition, the opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous decisions of the Office and previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. The marks compared in those decisions are not short signs; for example, ‘Quellgold’ versus ‘Goldquell’ or ‘Artdeco’ versus ‘Deco Art’.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 11 499 134 for the word mark ‘P1’, based on services in Class 43.

The other earlier right invoked by the opponent is not more similar to the contested sign than the earlier mark that has already been compared. This is because it consists merely of the word mark ‘P1’ and, despite the lack of stylisation or figurative elements in the earlier mark, the degrees of visual, aural and conceptual similarity would not be higher. Consumers are likely to perceive the differences between these short signs, that is, the positioning of the letter ‘P’ and the number ‘1’, the colours, the space between the letter and the number, and the different typeface in the contested sign, as described above. Furthermore, in the case of the earlier word mark there is no resemblance with the particular stylisation of the contested mark, that is the combination of one very thick and one thin and delicate vertical line. Moreover, this earlier mark does not cover a broader scope of services in Class 43 than the earlier mark that has already been compared.

According to the opponent, this earlier mark also has a high degree of distinctiveness. Taking into account that the evidence submitted for the other earlier mark is the same and that it has, therefore, already been assessed in section d), the Opposition Division concludes that the evidence is insufficient to demonstrate that earlier mark No 11 499 134 enjoys recognition among the relevant public. Therefore, the opponent has failed to prove that the earlier trade mark has acquired a high degree of distinctiveness through use and will rest on its distinctiveness per se. Therefore, the outcome cannot be different and no likelihood of confusion exists with respect to this earlier mark.

The opponent refers to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken into consideration this principle and the fact that the services are identical or similar; nevertheless, bearing in mind all the relevant circumstances of the case, the Opposition Division concludes that, contrary to the opponent’s view, the dissimilarities between the marks at issue are sufficiently striking that they will allow the relevant public to avoid the likelihood of confusion, including the likelihood of association. Considering all the above, there is no likelihood of confusion on the part of the public.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna MAKOWSKA

Carlos MATEO PÉREZ

Denitza STOYANOVA-VALCHANOVA

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.