OPPOSITION No B 2 333 790

Guillermo Algar Vázquez, P° Sant Agustin Font, 12, 17310 Lloret de Mar, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Orient Express, 16 Avenue d'Ivry, 75013 Paris, France (applicant), represented by Strato-Ip, 18, rue Soleillet, 75020 Paris, France (professional representative).

On 25/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 333 790 is partially upheld, namely for the following contested services:

Class 43:         Providing of food and drink (food, dishes, snacks, dishes or meals), on site or to take away, including on trains; bars and snack bars, fixed or moving, including on trains; snack-bars; self-service restaurants; catering; organization of banquets and cocktail-parties; rental of table linen, glassware, tableware, chairs, tables, tents and water fountains; booking and rental of meeting rooms and spaces; temporary accommodation; hotel services; room reservation services; hotel accommodation; boarding house bookings; booking of restaurant seats; crèches for children, including on board trains; accommodation for pets, including on trains; information relating to temporary accommodation and restaurants, provided by any means, including by electronic means or online.

2.        European Union trade mark application No 12 140 745 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 140 745, namely against all the services in Classes 41 and 43. The opposition is based on Spanish trade mark registrations No 1 152 345 and No 1 033 981. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 18/12/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 18/12/2008 to 17/12/2013 inclusive. Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:

Spanish trade mark registration No 1 152 345 for the figurative mark

Class 41:        Services of discotheques.

Spanish trade mark registration No 1 033 981 for the figurative mark

Class 42:        Services of disco pub; services of restaurant and cafeteria.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 23/12/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/02/2015 to submit evidence of use of the earlier trade marks. Following a suspension of the proceedings, the time limit has been extended until 26/03/2016. On 25/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• 17 photographs of the interior and exterior of a restaurant. The inscription ‘ORIENT EXPRESS’ can be seen on 4 pictures.

• Copies of daily menus of ‘ORIENT EXPRESS bar & restaurant’.

• A certificate of Lloret del Mar Town Hall, approved on 22/02/2016 and stating that the permanent government commission granted on 22/06/1983 a license for activities for a restaurant called ‘ORIENT EXPRESS’. The opponent furnished a translation of the document into English.

• Screenshots from the Orient Express restaurant’s webpage on TripAdvisor, showing that the restaurant is ranked number 1 out of the 229 restaurants in Lloret del Mar. Also attached are 7 examples of clients’ opinions on TripAdvisor, dated between 2009 and 2015.

• Several advertisements for the ORIENT EXPRESS restaurant in Lloret del Mar, which are placed in various magazines, brochures and flyers. Some of them are dated, namely between 2006 and 2015.

• Extract from Lloret del Mar’s webpages, which list the ORIENT EXPRESS restaurant as one of the places to eat.

• Copies of certificates of excellence issued by TripAdvisor in 2012, 2014 and 2015 and awarded to the ORIENT EXPRESS in Lloret del Mar. The documents state that the restaurant has constantly obtained exceptional comments by travellers.

• Several copies of certificates, invoices and contracts dated between 2008 and 2016. These documents are issued by different suppliers to the opponent regarding the ORIENT EXPRESS restaurant. They relate notably to extinguishers, collection services of frying oil, gas revision, air conditioning installations.

• Several copies of tax receipts paid to Lloret del Mar Town Hall.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

First, the Opposition Division points out that the evidence do not contain any documents related to the services of discotheques covered by the Spanish trade mark registration No 1 152 345. Therefore, the opposition must be rejected regarding this earlier mark pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

Nor does the evidence relate to the services of disco pub covered by the Spanish trade mark registration No 1 033 981. However, all the documents provided refer to services of restaurant and cafeteria covered by this mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of this earlier trade mark for these abovementioned services during the relevant period in the relevant territory.

As for the time of use, the evidence must show genuine use of the Spanish trade mark within the relevant period. Although some of the documents are undated or fall outside the relevant period, there is enough evidence that falls within the set time frame. Therefore, the time of use was sufficiently shown.

As for the place of use, the evidence shows that the mark has been used in Spain.

The earlier mark is a figurative mark, consisting of the verbal part ‘ORIENT EXPRESS’ written in a standard typeface and affixed on a background of simple form evoking a label or a plate: . In the documents, it appears in an almost identical way or as a word mark.

Article 15(1)(a) EUTMR mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Brainbridge, EU:T:2006:65, § 50). Nevertheless, in this case the alterations confined to a more modern stylisation or to the absence of a weak background and as such do not constitute an alteration of the distinctive character of the earlier mark.

Concerning the extent of the use made of the earlier mark, the fact that the specialised and well-known website TripAdvisor distinguished the restaurant ORIENT EXPRESS in several years (notably for 2012 in the relevant period) with a certificate of excellence and that it is ranked as the number 1 out of the 229 restaurants in Lloret del Mar, speaks in favour of the mark having reached a consequent and constant use. Moreover, reviews cover a large period of time and are mostly dated within the relevant period.

In addition, the numerous certificates, invoices, advertisements, contracts and tax receipts, all linked to the ORIENT EXPRESS restaurant, constitute a body of reliable and consistent evidence which can confirm that the earlier mark has been put to genuine and constant use in Spain.

Moreover, even though the opponent did not furnished information about the commercial volume, it can be inferred from the abovementioned evidence, and especially the first-place-ranking among 229 restaurants, that the mark has been used to a significant extent. Besides, the assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark is not known may be offset by the fact that use of the mark was extensive or very regular, and vice versa (judgment of 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

The applicant argues that the evidence should have been furnished in Spanish. However, it should be recalled that the language of proceeding is English. Moreover, the place of the restaurant, namely Lloret del Mar, is a popular tourist area and it is therefore absolutely normal that the menu or the advertisements are in English.

Therefore, and in view of the foregoing, the evidence shows genuine use of the Spanish trade mark registration No 1 033 981 for the following services:

Class 42:        Services of restaurant and cafeteria.

Therefore, the Opposition Division will only consider the abovementioned mark and services in its further examination of the opposition.

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: Services of restaurant and cafeteria.

The contested services are the following:

Class 41: Publishing, including publication and electronic and online publication, newspapers, magazines, periodicals, bulletins, newsletters, pamphlets, manuals, guides; publication of texts, other than publicity texts; providing on-line electronic publications; lending libraries and loan of periodicals; providing of training; entertainment; musical entertainment; cinematographic and/or video entertainment; radio and/or television and/or data transmission entertainment; entertainment by interactive means or online, including via the internet; lending and rental of sound recordings and/or images, apparatus for recording reproduction and/or dissemination of sound and/or images; production and editing of sound and/or image recordings; sporting and cultural activities; arranging of games, competitions, trade fairs and exhibitions, for educational, training, cultural, sport and/or entertainment purposes; organisation and conducting of seminars and conferences; performances (presentation of live -); arranging and production of concerts, shows, films and cultural events; arranging of meetings and cultural events; party planning (entertainment); organization of balls; providing gaming house facilities; operating of lotteries; museum facilities (providing-) presentation, exhibitions); leisure services; booking of seats for concerts, cinema, shows and exhibitions; clubs (entertainment, cultural, sport or education activities); workshops and gymnasiums (health clubs); holiday camp services (entertainment); production, organising and conducting of sporting competitions and events; rental of sports equipment (except vehicles); information, including online, relating to education, cultural, entertainment, sport and leisure activities.

Class 43: Providing of food and drink (food, dishes, snacks, dishes or meals), on site or to take away, including on trains; bars and snack bars, fixed or moving, including on trains; snack-bars; self-service restaurants; catering; organization of banquets and cocktail-parties; rental of table linen, glassware, tableware, chairs, tables, tents and water fountains; booking and rental of meeting rooms and spaces; temporary accommodation; hotel services; room reservation services; hotel accommodation; boarding house bookings; booking of restaurant seats; crèches for children, including on board trains; accommodation for pets, including on trains; information relating to temporary accommodation and restaurants, provided by any means, including by electronic means or online.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 their respective editions of 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 41

The contested services are dissimilar to the opponent’s services of restaurant and cafeteria, since they do not have a sufficient link. They have a different method of use and a different nature and purpose. They do not coincide in their distribution channels, they are not interchangeable and do not share the same commercial origin either. In particular, although restaurants and bars can provide on-site entertainment and cultural activities, they are not offered separately or on their own. The opponent’s services involve the provision of food and drinks. The entertainment services are designed to amuse, divert or relax people. Consequently, the contested services are not provided by the same undertakings nor distributed through the same channels as the opponent’s services. Furthermore, the services cannot be considered complementary, since they do not have an interdependent relationship; for example, bars and restaurants do not necessarily need entertainment services to exist and vice versa, although the services may target the same public.

Contested services in Class 43

The contested providing of food and drink (food, dishes, snacks, dishes or meals), on site or to take away, including on trains includes, as a broader category, the opponent’s services of restaurant and cafeteria. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested self-service restaurants are included in the services of restaurant of the opponent. Therefore, they are identical.

The contested bars and snack bars, fixed or moving, including on trains; snack-bars and the opponent’s services of restaurant may provide the same type of services. Notably, restaurants will almost always offer drinks to their customers, who expect this to be the case. Moreover, these services are often provided in the same premises by the same undertakings. In addition, they target the same consumers and have the same distribution channels. In view of these similarities, the services at issue are similar to a high degree.

The contested booking of restaurant seats; information relating to restaurants, provided by any means, including by electronic means or online are auxiliary services which are carried out by the same undertakings as the earlier services of restaurant and cafeteria. The providers, distribution channels, and relevant public coincide and the services in question are frequently rendered in combination with each other. Therefore, they are considered to be highly similar.

The contested catering; organization of banquets and cocktail-parties; rental of table linen, glassware, tableware, chairs, tables, tents and water fountains are highly similar to the opponent’s services of restaurant and cafeteria. It is not unusual for a restaurant to give its clients the option of tasting its menu in venues away from premises and to cater, for example, for a wedding, party, etc., or to rent the equipment for such a purpose. Therefore, they have the same purpose, usual commercial origin, distribution channels and end users. Moreover, they are in competition.

The contested booking and rental of meeting rooms and spaces; temporary accommodation; hotel services; room reservation services; hotel accommodation; boarding house bookings; crèches for children, including on board trains; accommodation for pets, including on trains; information relating to temporary accommodation, provided by any means, including by electronic means or online relate to the provision of various types of accommodation and crèches or are accommodation auxiliary services. At the same time, these types of services often offer services such as the opponent’s restaurant, cafeteria on their premises. This is true even for the contested crèches, as food and drinks are often served to the children. In view of the preceding considerations, it is not unusual for the services in question to be provided by the same undertaking or linked undertakings, and consumers expect this to be the case. All these services are even complementary, restaurant services being for example an integral part of the services offered by a hotel. Accordingly, the services 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 to different degrees are directed at the public at large. The degree of attention will be average.

3. The signs

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 figurative mark consisting of the verbal part ‘ORIENT EXPRESS’ written in an almost standard white typeface and affixed on a simple and banal black background evoking a label or a plate. This figurative element is of very low distinctive character.

The contested sign is a figurative mark consisting of the distinctive verbal part ‘ORIENT EXPRESS’ written in an almost standard typeface.

Neither the earlier nor the contested mark have any elements that could be considered clearly more dominant than other elements.

Visually, the earlier mark ‘ORIENT EXPRESS’ is totally reproduced in the contested sign, the only differences being the simple and banal background of the earlier mark and the negligible variations of the typefaces. However, these differences are of low distinctive character. Moreover, it should be noted 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; 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 visually highly similar.

Aurally, the signs are pronounced identically.

Conceptually, the words ‘ORIENT EXPRESS’ contained in both marks refers to ‘a luxurious train, popularly associated with espionage and intrigue, which ran (from 1883 to 1977) between Paris and Istanbul and other Balkan cities’ (Oxford English Dictionary online). This train is famous and is generally known to the Spanish public. Therefore, the signs are conceptually identical.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of 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 greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The conflicting services are partly identical, partly similar to different degrees and partly dissimilar.

The degree of attention is average.

The signs are aurally and conceptually identical as well as visually highly similar.

In addition, account should be taken of the normal degree of distinctiveness of the earlier mark and the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind.

In the light of all the above, the Opposition Division concludes that the strong similarities, and even aural and conceptual identities, between the marks are enough to outweigh their slight dissimilarities, and may cause the public to believe that the conflicting services come from the same undertaking or economically linked undertakings. Thus, the Opposition Division considers that a likelihood of confusion between them cannot be safely excluded for the relevant public.

Therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 1 033 981.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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 and services 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 shall 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

Loreto URRACA LUQUE

Steve HAUSER

Zuzanna STOJKOWICZ

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.