OPPOSITION No B 2 776 238

Markus S.R.L., Via Degli Abeti 24, int.12, 61122 Pesaro, Italy (opponent), represented by Bugnion S.P.A., Via A. Valentini, 11/15, 47922 Rimini, Italy (professional representative)

a g a i n s t

Movement Holding Limited, Level 5, The Mall Complex The Mall, Floriana FRN 1470, Malta (applicant).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 776 238 is partially upheld, namely for the following contested services:  

Class 43: Hospitality services [food and drink]; Restaurant services              provided by hotels; Hotel restaurant services; Agency services for the reservation of temporary accommodation; Operating membership accommodation; Provision of information relating to the booking of accommodation; Temporary accommodation reservations; Booking of temporary accommodation; Providing information about temporary accommodation services.

 

2. European Union trade mark application No 15 741 317 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 15 741 317  . The opposition is based on Italian trade mark registration No 922 529 and international trade mark registration No 825 076 , designating Czech Republic, Spain, Ireland, Austria, Benelux, Slovenia, Portugal, Denmark, Poland, Hungary, Greece, Croatia, Finland, France. The opponent invoked Article 8(1)(b) CTMR.

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 Italian trade mark registration No 922 529.

1. The services

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

Class 39: Services provided by travel agencies and tourist offices; booking services concerning travel; organization of travel, cruises and sightseeing; air transport services; rental of means of transport.

Class 41:        Providing of education; training; entertainment; sporting and recreational activities; organization of exhibitions and competitions; organization of exhibitions for cultural or educational purposes; organization and conducting of congresses and conferences; providing recreation and entertainment facilities in holiday camps or clubs.

Class 43:        Restaurants, bars services; hotel services; hotel and holiday villages reservations; services of lodging in holiday camps.

The contested services are the following:

Class  35:        Hotel management service [for others].

Class 43:        Hospitality services [food and drink]; Restaurant services provided by hotels; Hotel restaurant services; Agency services for the reservation of temporary accommodation; Operating membership accommodation; Provision of information relating to the booking of accommodation; Temporary accommodation reservations; Booking of temporary accommodation; Providing information about temporary accommodation services.

As a preliminary remark, 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 35

The contested hotel management service [for others) are dissimilar to the opponent’s services in Class 43 as such services are directed at different publics, namely a business public versus a general public. They do have different purposes and also a different nature.  Furthermore, they are generally provided by different companies.

The same holds true concerning the opponent’s services in Classes 39 and 41 which do not have any common link with the contested services in Class 35.

Contested services in Class 43

The contested agency services for the reservation of temporary accommodation; operating membership accommodation; provision of information relating to the booking of accommodation; temporary accommodation reservations; booking of temporary accommodation; providing information about temporary accommodation services overlap with or are included in the broad categories of the opponent’s hotel services; hotel and holiday villages reservations; services of lodging in holiday camps. Therefore, they are considered identical.

The contested hospitality services [food and drink]; restaurant services provided by hotels; hotel restaurant services include, as broader categories, or overlap with the opponent’s restaurants, bars services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

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 considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both signs are figurative marks. The earlier right consists of the upper case white letters ‘EDEN’ written in a black rectangle which resembles a label. Before the letter ‘E’, a stylized apple is placed.

The contested sign consists in its upper part of the lower case letter ‘d’ and attached to the right upper part of the letter a green leaf is depicted. Below this letter, the words ‘EdenLifestyle’ are put, written as one word, whereby the letter ‘d’ repeats  the same design as is shown in the upper part of the sign. Due to the fact that the word element ‘Lifestyle’ is separated with a capital ‘L’ from the first four letters, it is clearly set apart from the foregoing word ‘Eden’. All parts of the contested mark are in light green.

Hence, the verbal element of the contested sign is clearly composed of two words, namely ‘Eden’ and ‘Lifestyle’, written as one single word. It should be taken into account that a consumer, perceiving a verbal sign, will break it down into elements which suggests a concrete meaning or which resembles words known to him. In the case at hand, the Italian-speaking public would therefore perceive this verbal element of the contested mark as being composed of two elements. Concerning the element ‘Eden’, the public in the relevant territory will perceive it in both signs as referring to an ‘Earthly Paradise’, in a Biblical sense. The element ‘Lifestyle’ contained only in the contested sign, is a composed word of the English language and will most likely not be understood by the Italian public. The stylized letter ‘d’ will be recognised as such. The further figurative elements, namely the stylised image of an apple in the earlier mark is perceived as such, and the same holds true for the green leaf of the contested sign. The stylized apple however is less distinctive with respect to the restaurant services in Class 43 as it will be most likely perceived by the relevant public as an allusion to food.

The element ‘Eden’ contained in both signs, might be understood as referring to paradise on earth by the relevant public as explained above. However as it is not descriptive, allusive or otherwise weak for the relevant services, it is considered to be distinctive.

As regards the earlier sign, it is composed of a distinctive verbal element and less distinctive figurative elements, namely the apple and the depiction of a black label of a purely decorative nature. The apple has less impact because it is a figurative element in a mark composed of verbal and figurative elements – but for temporary accommodation however  it has an average distinctiveness. Therefore, the verbal element is more distinctive than the figurative elements.

Similarly, as regards the figurative elements of the contested sign (such as the slight stylisation of the letters, the leaf and colours), account must be taken that 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).

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements. As regards the contested sign, in spite of the smaller size of the words ‘EdenLifestyle’ as compared to the other elements within the mark, it cannot be said that this element is overshadowed by the element ‘d plus leaf’, as it remains clearly visible and legible due to its length.

 

Visually, the signs coincide in the word ‘Eden’, which is the only verbal element of the earlier mark and a distinctive verbal element within the contested sign. As mentioned above, the graphical elements in the earlier mark are either less distinctive or purely decorative. As regards the contested sign, its layout is more complex than the earlier mark. Although the letter ‘d’ appears stylised due to the leaf, their visual role cannot be underestimated in view of their size and positioning. At the same time, in spite of its ‘last-line’ positioning, the verbal element ‘EdenLifstyle’ is also an important trade identifier within the contested sign and has an independent distinctive role therein. Consequently, in view of all these findings, taking into account the distinctive and figurative elements of the signs and their respective weight, it is concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‘Eden’ and differs in the sound of the letters ‘Lifestyle’ in the contested sign, which have no counterpart in the earlier sign. Figurative elements are not pronounced. The figurative letter ‘d with leaf’ will most likely not be pronounced. As the identical words ‘Eden’ appear in the beginning of the contested sign, bearing in mind also that ‘Eden’ is the only verbal element of the earlier mark, it is considered that the signs are aurally similar to at least an average degree.

The concepts of the signs have been defined above. To the extent that ‘Eden’ will be understood, the signs are conceptually highly similar. The stylised image of an apple in the earlier mark and the ‘d with leaf’ are perceived as such. Regarding the additional verbal element of ‘Lifestyle’ in the contested sign, it will most likely not be associated with any meaning by the Italian public. To that extent, the signs are not conceptually 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 contested services are partly identical and partly dissimilar to the opponent’s services. The relevant services are directed at the public at large and the level of attention is average.

The signs are visually similar to a low degree and aurally similar to at least an average degree. The signs are conceptually highly similar for a part of the public inasmuch as both refer to ‘Eden’.

The similarities between the signs are on account of the common and normally distinctive element ‘Eden’, which constitutes the only verbal and the most distinctive element of the earlier mark and is an element with an independent distinctive role within the contested sign. While it is indeed true that the signs differ in certain aspects, especially from a visual point of view, this difference is not of decisive importance. As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In the present case, the coincidence between the signs is in the distinctive element ‘Eden’, which is a ‘relevant’ coincidence from the perspective of the consumer – this element is the distinctive verbal element of the earlier mark and an element with an independent distinctive role within the contested sign.

Bearing in mind that the 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), it is considered that there is a risk of likelihood of confusion/association between the marks in relation to identical and similar services. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of services designated by the trade mark applied for.

Considering all the above, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17), the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is well-founded on the basis of the opponent’s Italian trade mark registration No 922 529.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

However, concerning the contested dissimilar services, 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.

The other earlier right invoked by the opponent covers the identical services as the earlier Italian trade mark. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

.

The Opposition Division

Julia SCHRADER

Karin KLÜPFEL

Sigrid DICKMANNS

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.