OPPOSITION No B 2 699 539

Hoteles Trinidad, S.A., C. Vicente Cuervo, 9, 07800 Eivissa (Illes Balears), Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

DHC Stammhaus 1 GmbH, Landgrabenstr. 25, 90443 Nürnberg, Germany (applicant), represented by Hucke & Schubert, Waidmarkt 11, 50676 Köln, Germany (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 539 is upheld for all the contested services.

2.        European Union trade mark application No 14 508 634 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 508 634. The opposition is based on Spanish trade mark registration No 1 505 747.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.

1. The services

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

Class 42: Hotel services.

The contested services are the following:

Class 43: Provision of food, drink and 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 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 43

The opponent’s hotel services were classified in Class 42 in the 5th edition of the Nice Classification that was in force at the time of the filing of the earlier mark. However, in the 8th edition of the Nice Classification hotel services were transferred to Class 43 to which the contested temporary accommodation also belongs. Therefore, the contested temporary accommodation includes, as a broader category, the opponent’s hotel services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested provision of food, drink are similar to the opponent’s hotel services in Class 42, since such services are complementary, target same relevant publics and are offered by the same providers (companies).  

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 considered average.  

3. The signs

INVISA HOTELES
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 word mark containing the elements ‘INVISA HOTELES’; ‘INVISA’ has no meaning for the relevant public whereas ‘HOTELES’ is descriptive and non-distinctive for the services covered by the earlier mark.

The contested sign, a figurative mark, contains the word elements ‘INVITE Hotel’ and a figurative element in gold and green. The word ‘INVITE’ will either be understood as the subjunctive (third person singular) or as the imperative form of ‘invitar’ (to invite) and is distinctive for the relevant services. However, ‘Hotel’ (as stated above) is descriptive for the services related to temporary accommodation and weak for the remaining services covered by the contested sign (provision of food and drink). The figurative element will be perceived as the stylised shape of a person sleeping on a green leaf and therefore as weak for the relevant services.

Visually, the signs coincide in that their distinctive word elements ‘INVISA’ and ‘INVITE’ share four out of six letters (‘INVI**). They differ in the two final letters of these verbal elements (‘SA’ and ‘TE’), the remaining verbal elements (‘HOTELES’ and ‘Hotel’) which are non-distinctive and/or weak, and in the figurative element of the contested sign which is weak. Consumers generally tend to focus on the word elements of signs, in particular on those placed at the beginning of a sign. Indeed, 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). Moreover, 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 similar to an average degree. 

Aurally, the words ‘INVISA’ and ‘INVITE’ share the same amount of letters and their two first syllables will be pronounced identically (‘/in/vi/sa/’ and ‘/in/vi/te/’). They differ in the pronunciation of their last syllable. The additional verbal elements (‘HOTELES’ and ‘Hotel’) are non-distinctive and/or weak and may therefore not be pronounced in either sign. Therefore, the signs are at least aurally similar to an average degree.

Conceptually, the Spanish public will perceive ‘INVITE’ in the contested sign as a reference to inviting, whereas ‘INVISA’ in the earlier mark has no meaning. The figurative element of the contested sign will be perceived as a person sleeping upon a green leaf and as weak whereas ‘HOTELES’ and ‘Hotel’ have no influence on the conceptual comparison, since they are either non-distinctive or weak elements. Therefore, the signs are conceptually not 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the services have been found partly identical and partly similar.  The signs are visually similar to an average degree and are at least similar to an average degree aurally. Despite the different concepts conveyed by the signs at issue, the Opposition Division makes reference to the abovementioned principle of interdependence and finds that a conceptual dissimilarity cannot outweigh the signs’ visual and aural similarities and the fact that the conflicting services are partly identical and similar. Account is also 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 505 747. It follows that the contested trade mark must be rejected for all the contested 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.

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

Boyana NAYDENOVA

Christian RUUD

Martina GALLE

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.