OPPOSITION No B 2 137 076

Grupo Posadas, S.A. B. de C.V., Paseo de la Reforma Nº 155 PH-B, Col. Lomas de Chapultepec (Mexico DF) 11000, Mexico (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Motel One GmbH, Tegernseer Landstrasse 165, 81539 Munich, Germany (holder), represented by Weickmann & Weickmann Patentanwälte – Rechtsanwalt PartmbB, Richard-Strauss Str. 80, 81679 Munich, Germany (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 137 076 is partially upheld, namely for the following contested services:

Class 41:        Entertainment; cultural activities.

2.        International registration No 1 113 373 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 113 373, ‘Hostel One’, for Classes 39, 41 and 43. The opposition is based on European Union trade mark registration No 6 982 748, . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the course of the current proceedings, the opposition was based on European Union trade mark registration No 6 982 748 for which, on 23/10/2013, a request for invalidity was filed. Consequently, on 29/10/2013, the Office suspended the opposition proceedings until a final decision was taken by the Cancellation Division.

On 17/12/2014, the Cancellation Division declared the earlier trade mark registration partially invalid and restricted its scope of protection. After the decision of the Boards of Appeal of 22/01/2016, the Cancellation Division’s decision was confirmed and became final.

Consequently, the scope of protection of the European Union trade mark registration was restricted in compliance with the Cancellation Division’s decision to read as follows:

Class 39        Packaging and storage of goods; storage of goods in a warehouse or other building for their preservation or guarding; packaging and parcelling of goods before dispatch; rental of diving bells and rental of diving suits.

Class 41        Calligraphy services; dubbing; electronic desktop publishing; layout services, other than for advertising purposes sign language interpretation; subtitling; translation.

Therefore, the Opposition Division will now resume the opposition proceedings and examine likelihood of confusion under Article 8(1)(b) EUTMR in relation to the remaining services of European Union trade mark registration No 6 982 748.

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        Packaging and storage of goods; storage of goods in a warehouse or other building for their preservation or guarding; packaging and parcelling of goods before dispatch; rental of diving bells and rental of diving suits.

Class 41        Calligraphy services; dubbing; electronic desktop publishing; layout services, other than for advertising purposes sign language interpretation; subtitling; translation.

The contested services are the following:

Class 39        Travel arrangement.

Class 41        Providing of training; entertainment; sporting and cultural activities.

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

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 services include, inter alia, the nature and purpose of the 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 service travel arrangement typically includes arranging of holiday travel, tourist excursions and tours and/or providing information about journeys. The opponent’s services packaging and storage of goods; storage of goods in a warehouse or other building for their preservation or guarding; packaging and parcelling of goods before dispatch are connected with the packing and storing of goods for preservation and dispatch. The opponent’s rental of diving bells and rental of diving suits are services provided to diving professionals related to the highly technical, specialised and expensive diving gear used for professional diving in extreme conditions. None of these services of the opponent in Class 39 consists in the transport of goods or the arrangement of recreational scuba-diving excursions. Therefore, the contested services have different natures and purposes from the opponent’s services. These services are not normally provided by the same undertakings and they are not complementary or in competition. Therefore, they are considered dissimilar.

The opponent’s services in Class 41 are all services relating to entertainment or cultural activities. Therefore, they have different purposes from the holder’s services in Class 39. These services are not normally provided by the same undertakings, nor are they complementary or in competition. Therefore they are considered dissimilar.

Contested services in Class 41

According to recent case-law, the contested service entertainment includes the broadcasting of films and radio and television programmes for entertainment purposes, but also the production and editing of those films, programmes and broadcasts (10/11/2016, T-67/15, Beverly Hills Polo Club, § 42 et seq.). The opponent’s service subtitling is provided by production companies and consists in the addition of translations or explanatory texts to films or other works to cater for the hearing impaired or for exporting productions to other countries. The purpose of the service is to enable the end user, the viewer, to understand the product (e.g. a film or TV programme) and thus be entertained by it. Consequently, the opponent’s service subtitling is similar to the contested services, since they have the same purpose, can be provided by the same companies and, furthermore, are complementary.

The contested cultural activities include activities intended to entertain or engage the attention of the public. The opponent’s service subtitling consists in the addition of translations or explanatory texts to films or other works to cater for the hearing impaired or for exporting productions to other countries. Since subtitling is used in works that entertain the public, it has the same purpose as that of the contested cultural activities. Furthermore, they are complementary. Therefore, they are similar to a low degree.

The contested services providing of training; sporting activities consist in the development of the mental and physical faculties of people. The opponent’s calligraphy services; dubbing; electronic desktop publishing; layout services, other than for advertising purposes sign language interpretation; subtitling; translation are technical services offered to third parties. They are provided by different professionals or enterprises and distributed through different channels. They are neither complementary nor in competition with each other. Therefore, they are dissimilar.

The opponent’s services rental of diving bells and rental of diving suits in Class 39 are provided to diving professionals and are related to highly technical, specialised and expensive diving gear used for professional diving in extreme conditions. These services do not constitute rental of diving equipment for recreational diving. Therefore, these services do not target the same consumers as the contested services in either class; they do not have the same purpose, providers or distribution channels. They are neither complementary nor in competition. Consequently, these services are dissimilar.

Contested services in Class 43

The contested services for providing food and drink; temporary accommodation include the preparation of food and drink provided by persons or establishments and bed and board services. They have different natures and purposes from all the opponent’s services; they do not target the same consumers as the opponent’s services in either class; they do not have the same distribution channels and are not normally provided by the same undertakings, nor are they complementary or in competition. Consequently, these services are dissimilar to all the opponent’s services in Classes 39 and 41.

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 similar to various degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

	HOSTEL ONE
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). 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. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as that in the United Kingdom, Ireland and Malta.

The earlier mark is a figurative mark that consists of the words ‘ONE HOTELS’ in standard white lower case letters on a square blue background. The word ‘ONE’ is in the centre of the square and the edges of the initial letter ‘O’ and the final letter ‘E’ merge with the edge of the square. The word ‘hotels’ appears under the word ‘ONE’ in significantly smaller letters.

‘ONE’ is an English word and will be understood by the public as a reference to the number one. The word ‘HOTELS’ is the plural form of the English word ‘hotel’, that is, an establishment providing bed and board and other services for guests. It will be perceived as referring to a chain or group of accommodation establishments and is therefore distinctive for dubbing and subtitling services.

The verbal element ‘ONE’ has a normal degree of distinctive character and is more distinctive than the figurative elements, which are purely decorative. Moreover, it is the dominant element, as it is the most eye-catching due to its size and position.

The contested sign is a word mark consisting of the words ‘HOSTEL ONE’. In relation to the word ‘ONE’, the same meaning applies as stated above and it has a normal degree of distinctive character.

A ‘HOSTEL’ is also an establishment that provides accommodation and other services for guests, but usually at a cheaper rate than a hotel. In relation to entertainment services and cultural activities, it is common for hostels to provide their guests with entertainment activities or areas (e.g. film sessions, game/TV rooms) or organise cultural activities (e.g. city tours); therefore, the distinctive character of the word ‘HOSTEL’ is weak for the cultural activities and entertainment services in question.

Visually, the signs coincide in the element ‘ONE’, which is contained identically in both signs; it is the dominant element of the earlier mark and is the contested sign’s most distinctive element. They also coincide in the sequence of letters ‘HO*TEL*’. However, they differ in the stylisation of the earlier sign, which has no counterpart in the contested sign. They also differ in the order of the verbal elements, which is ‘ONE HOTELS’ in the earlier mark and ‘HOSTEL ONE’ in the contested sign. The additional letter ‘S’, in a different position in each sign, constitutes a further visual difference. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable ‘ONE’, present identically in both signs. They also coincide in the sound of the letters ‘HO’ and ‘TEL’. The pronunciation differs in the sound of the letter ‘S’ at the end of the second verbal element of the earlier mark, ‘HOTELS’, and in the middle of the contested sign’s first verbal element, ‘HOSTEL’. The signs coincide in the sound of the earlier mark’s dominant element and the contested sign’s most distinctive element; therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The words ‘HOTELS’ and ‘HOSTEL’ will evoke a concept, namely establishments that provide bed and board in different categories. However, the attention of the relevant public will be attracted by the dominant and more distinctive verbal element of each sign, the word ‘ONE’, present identically in both signs. As both signs will be perceived as referring to the number one, the signs have a certain degree of conceptual similarity, which is at least average.

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 weak element in the mark as stated above in section c) of this decision.

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 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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 lesser degree of similarity between the goods or 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). 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, some of the services at issue are similar and some of them are similar to a low degree. The remaining contested services are dissimilar to the opponent’s services. They target the general public, whose degree of attention is average.

The similarity between the signs, taking into account all the relevant factors and despite the presence of non-dominant or weak elements in both of the marks, results from the visual, aural and conceptual commonalities in the dominant and most distinctive elements of the signs.

The differences between the signs result from the figurative elements of the earlier mark and the additional letter ‘S’ in a less dominant or weaker element in each of the signs. These differences are likely to have a limited impact on the public’s perception, taking into account that 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). Therefore, although the earlier mark contains additional figurative elements, these elements are merely decorative and cannot overshadow the visual, aural and conceptual commonalities between the dominant and most distinctive elements of the signs, especially taking into account that the contested sign fully contains the dominant element of the earlier mark. The same is true of the differences in the order of the signs’ verbal elements. Therefore, as some of the services in question are similar, a likelihood of confusion exists, even for those services whose similarity to the invoked services is deemed to be low.

The holder of the contested sign relied on a previous Cancellation Division decision (17/12/2014, 8567 C) between the same parties and regarding the same services, which considered that all the services in question in the present case were dissimilar. This decision was confirmed by the Boards of Appeal on 22/01/2016, R 0400/2015-2, One Hotels.

However, the Office is not bound by its previous decisions, as each case has to be dealt with taking into consideration the jurisprudence at the time of taking the decision and, therefore, the comparison of the goods and services might have changed over the time.

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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

As stated above in section a) of this decision, the General Court considers that, in relation to the broad categories of services such as ‘entertainment’ and ‘cultural activities’, editing services (e.g. subtitling or dubbing) might be considered at least complementary to these services (10/11/2016, T-67/15, Beverly Hills Polo Club, § 42 et seq.).

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 982 748. 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 services found to be similar to various degrees 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 goods cannot be successful.

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

Peter QUAY

Octavio MONGE GONZALVO

Claudia MARTINI

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.