OPPOSITION No B 2 644 287

The Spanish Ratpack S.L., C/ La Granja 15 Edif. B planta baja, 28108 Madrid, Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. Cerro del Aguila, 2, Portal 3, Planta 2, Puerta 5, 28702 San Sebastian de los Reyes (Madrid), Spain (professional representative)

a g a i n s t

Trinity Hotels, Slnečné jazerá – sever 2561, 90301 Senec, Slovakia (applicant).

On 17/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 644 287 is partially upheld, namely for the following contested goods and services:

Class 16:         Promotional publications.

Class 35:         Consultancy services relating to the administration and management of hotels; Business management of hotels; Advertising services relating to hotels; Administrative order processing; Rental of advertising space; Organisation of exhibitions and events for commercial or advertising purposes; Demonstration of goods.

Class 41:        Arranging and conducting of conferences and congresses; Arranging and conducting of seminars and workshops; Arranging and conducting of competitions [education or entertainment]; Rental of sports grounds.

2.        European Union trade mark application No 14 517 271 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 517 271. The opposition is based on European Union trade mark registration No 14 186 167. The opponent invoked Article 8(1)(a) and (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 goods and services

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

Class 35:        Advertising, business management, business administration and office functions, all the aforesaid relating to telecommunications, transmission and broadcasting of radio and television programmes, transmission and broadcasting of radio and television programmes via mobile terminals, radio broadcasting, television via cable, satellite transmission, press agencies, news agencies, education, providing of training, entertainment, sporting and cultural activities, production of television and radio programmes, organisation of shows (impresario services), production of shows, scriptwriting, entertainer services (actors), news reporters services, recording studio services, record publishing, rental of stage scenery, rental of lighting apparatus for theatrical sets or television studios, rental of audio equipment, rental of cinematographic equipment and accessories, rental of videotapes, film production, music composition, orchestras and publication of texts (other than publicity texts).

Class 38:        Broadcasting of radio and television programmes; Broadcasting services; Cable television broadcasting; Satellite transmission; News agencies; News agencies; Telecommunication services.

Class 41:        Production of radio and television programmes; Organization of shows (impresario services); Production of shows; Scriptwriting services; Entertainer services; News reporters services; Recording studios; Record publishing; Rental of stage scenery; Rental of theatre or television studio lighting apparatus; Rental of audio equipment; Rental of cinematographic apparatus and accessories, music composition services; Orchestra services; Entertainment services; Publication of texts (other than publicity texts).

The contested goods and services are the following:

Class 16:         Promotional publications.

Class 35:         Consultancy services relating to the administration and management of hotels; Business management of hotels; Advertising services relating to hotels; Administrative order processing; Rental of advertising space; Organisation of exhibitions and events for commercial or advertising purposes; Demonstration of goods.

Class 41:        Arranging and conducting of conferences and congresses; Arranging and conducting of seminars and workshops; Arranging and conducting of competitions [education or entertainment]; Rental of sports grounds.

Class 43:        Hotels; Hotel accommodation services; Hotel catering services; Booking of hotel accommodation; Hotel services for preferred customers; Restaurant services provided by hotels; Bar services; Restaurants; Temporary accommodation reservations.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

Contested goods in Class 16

The contested promotional publications are similar to the opponent’s publication of texts (other than publicity texts) in Class 41. They can coincide in their producers/providers and they are complementary to each other.

Contested services in Class 35

The contested rental of advertising space and demonstration of goods overlap with, and are therefore identical to, the opponent’s specific advertising services, namely advertising, all the aforesaid relating to telecommunications, transmission and broadcasting of radio and television programmes, transmission and broadcasting of radio and television […].

The contested administrative order processing overlaps with, and is therefore identical to, the opponent’s office functions, relating to, inter alia, telecommunications as well as the transmission and broadcasting of radio and television programmes.

The contested business management of hotels is highly similar to business management services, which relate to various areas such as telecommunications and the broadcasting of radio and television programmes, but do not include the business management of hotels. Nevertheless, these specific business management services have the same nature, purpose and method of use, and they can also coincide in their providers and distribution channels.

The contested advertising services relating to hotels is highly similar to the opponent’s advertising services limited to specific areas (e.g. telecommunications and the broadcasting of radio and television programmes). They not only have the same nature, purpose and method of use, but can also coincide in their providers and distribution channels.

The contested consultancy services relating to the administration and management of hotels are at least similar to the opponent’s business management and business administration services, both of which are limited to specific business areas such as telecommunications and broadcasting, but not to hotels. These services can coincide in their purpose, their method of use and their providers. Moreover, they have similar natures.

The contested organisation of exhibitions and events for commercial or advertising purposes is similar to a low degree to the opponent’ advertising services, which are limited to specific business areas. The Opposition Division notes that the advertising services are specific, as they relate to, inter alia, telecommunications and the transmission and broadcasting of radio and television programmes. However, they can have the same purpose and consumers as organisation of exhibitions and events for commercial or advertising purposes.

Contested services in Class 41

The contested arranging and conducting of competitions [entertainment] is included in the broader category of the opponent’s entertainment services. Therefore, they are identical.

The contested arranging and conducting of competitions [education]; arranging and conducting of conferences and congresses; arranging and conducting of seminars and workshops are similar to a low degree to publication of texts (other than publicity texts). They can coincide in their distribution channels and they are complementary to each other.

The contested rental of sports grounds is similar to a low degree to entertainment services. They can have the same purpose. In addition, they can coincide in their consumers and distribution channels.

Contested services in Class 43

The contested hotels; hotel accommodation services; hotel catering services; booking of hotel accommodation; hotel services for preferred customers; restaurant services provided by hotels; bar services; restaurants and temporary accommodation reservations are dissimilar to the services of the earlier mark in Classes 35, 38 and 41.

The contested services aim principally to provide accommodation at hotels or to provide food and drink to hotel customers.

By contrast, the services in Class 35 on which the opposition is based aim to increase sales (advertising) or to improve the functioning of businesses (business management, business administration and office functions). In addition, they relate to specific business areas (other than hotels and restaurants), including, inter alia, telecommunications and the transmission and broadcasting of radio and television programmes. The services in Class 38 on which the opposition is based function principally to transmit information or other data by radio or television. The purpose of the services in Class 41 on which the opposition is based is either to produce entertainment, cultural or informational materials, content or services or to assist in their production.

When comparing the contested services with the services listed in the earlier mark, their natures and purposes, their distribution channels, their providers and their methods of use are different. In addition, they are neither in competition with nor complementary to each other.

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 goods found to be similar and the services found to be either identical or similar to various degrees are primarily directed at business customers with specific professional knowledge or expertise, but also at the public at large. The degree of attention will vary from average to above average, as these goods and services can be rather expensive, are infrequently purchased and can have an important impact on the running of a business.

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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark that contains the verbal element ‘LOS MINI ME’, written in slightly stylised yellow letters on a brown and red rectangular background. The rectangle is, however, a composition comprising the following elements: silhouettes of two human figures located centrally at the bottom, curtains at both sides of the rectangle, a dotted red and yellow rectangle placed at the top of the main background and amplifier diodes depicted in yellow across the bottom of the mark.

The contested sign is a figurative mark, which contains the verbal element ‘Mini Me’, written in highly stylised letters in yellow (‘Mini’) and red (‘Me’) and with ‘Mini’ positioned above ‘Me’. The words are depicted in a fanciful manner (e.g. the last letter ‘i’ resembles a tree or a rabbit).

The verbal element ‘Mini Me’, which appears in both signs, may be understood by the relevant public as ‘a person closely resembling a smaller or younger version of another’ (information extracted from Oxford Dictionaries on 28/11/2016 at www.en.oxforddictionaries.com/). This expression is not descriptive or otherwise weak in relation to the relevant goods and services and is therefore of average distinctiveness. It should also be noted that the verbal element ‘LOS’ could be understood by at least part of the English-speaking part of the public as a Spanish article; for them, it will be less distinctive. For the remaining English-speaking part of the public, it will be distinctive.

In the earlier mark, the figurative elements may be seen as allusive in relation to some services in (such as entertainment services). These figurative elements are distinctive with regard to the other services. However, the earlier mark has no clearly dominant elements.

In the contested sign, the word element ‘me’ is slightly larger than the other element ‘mini’, however, this sign has no elements that are clearly dominant.

Visually, the signs coincide in their verbal elements, namely ‘MINI ME’, which are, as explained above, distinctive. However, they differ in the verbal element ‘LOS’ of the earlier mark (which is less distinctive for a part of the public) and in the figurative elements in both signs. Moreover, the verbal elements ‘MINI ME’ are presented in a different font.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘MI/NI/ME’, present identically in both signs. These verbal elements are distinctive. The pronunciation differs in the sound of the letters ‘LOS’ of the earlier sign, which has no counterpart in the contested mark. This verbal element, however, has a low degree of distinctive character for part of the public.

Consequently, the signs are similar to at least an average degree.

Conceptually, the conflicting signs convey the concepts explained above, whereby the distinctive element ‘MINI ME’, included in both signs, will be associated with the abovementioned definition, that is, ‘a person closely resembling a smaller or younger version of another’.

To that extent, the signs are conceptually similar to an average degree.

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 argued that ‘my principal’s reputation has been achieved thanks to an intensive and steady effort and endeavour for the quality of the products offered’. However, the opponent did not submit any evidence in this regard.

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, for a part of the public and for some of the services, of some less distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 above rule applies to the services that were found similar and similar to a low degree.

As has been concluded above, all the contested goods were found to be similar and some of the services were found to be either identical or similar to various degrees. In addition, the signs were found to be similar to various degrees visually, aurally and conceptually. Furthermore, the earlier mark, as a whole, is of average distinctiveness in relation to the relevant services, and the relevant public’s degree of attention will vary from average to above average.

The Opposition Division is of the opinion that there is a likelihood of confusion with regard to the contested goods and the services found identical or similar (to various degrees). The marks under comparison coincide in the word elements ‘MINI ME’, which are distinctive. They mostly differ in the figurative elements and in the word ‘LOS’, which is, however, less distinctive for part of the relevant public.

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.

Indeed, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, that is, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Account is 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, 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 Union trade mark registration No 14 186 167. 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 goods found to be similar and the services found to be identical or similar to various levels to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the services are obviously not identical.

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 shall 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

Vita VORONECKAITE

Michal KRUK

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.