OPPOSITION DIVISION
OPPOSITION No B 2 763 970
Safestay (Elephant & Castle) Limited, 1a Kingsley Way, London N2 0FW, United
Kingdom (opponent), represented by Dechert LLP, 160 Queen Victoria Street,
London EC4V 4QQ, United Kingdom (professional representative)
a g a i n s t
Best Western International, Inc., 6201 North 24th Parkway, Phoenix, Arizona
85016, United State of America (applicant), represented by Ipside, 29, rue de
Lisbonne, 75008 Paris, France (professional representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 763 970 is upheld for all the contested services.
2. European Union trade mark application No 15 437 221 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the services of European Union trade
mark application No 15 437 221 for the figurative mark . The
opposition is based on the following earlier trade marks:
– European Union trade mark registration No 12 635 901 for the figurative mark
, registered for services in Class 43;
– United Kingdom trade mark registration No 2 654 064 for the figurative mark
, registered for services in Class 43;
Decision on Opposition No B 2 763 970 page: 2 of 7
– the non-registered word mark ‘SAFESTAY’, used in the course of trade for
temporary accommodation services, hostels and youth hostel services, bar,
café and restaurant services.
The opponent invoked Article 8(1)(b), and Articles 8(4) and 8(5) 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.
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 European Union trade mark registration No 12 635 901.
a) The services
The services on which the opposition is based are the following:
Class 43: Temporary accommodation services; hostels and youth hostel services;
bar, café and restaurant services.
The contested services are the following:
Class 43: Hotel services.
The contested hotel services are included in the broad category of the opponent’s
temporary accommodation. Temporary accommodation is a service provides a room,
group of rooms, or building in which someone may live or stay for a limited period of
time. Therefore, they are identical.
b) 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 average.
Decision on Opposition No B 2 763 970 page: 3 of 7
c) 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.
The marks are meaningless in certain territories, for example in those countries
where English is not understood. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on the non English-speaking part of
the public, e.g. the Spanish-speaking public.
The earlier mark consists of the word ‘safestay’ on the right and a figurative letter ‘S’
on the left. ‘safestay’ is depicted in lower-case letters and in a rather standard
typeface. In the contested sign, there are the word element ‘SureStay’ and a
figurative star of David at the top, consisting of six letters ‘S’.
It has to be recalled that the average consumer normally perceives a mark as a
whole and does not proceed to analyse its various details (11/11/1997, C-251/95,
Sabel, EU:C:1997:528, § 23, and 22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 25). On the other hand, the Court has also held that the consumer,
when perceiving a word sign, will break it down into word elements which, for him or
her, have a concrete meaning or which resemble words known to him/her
(11/11/2009, T-277/08, Citracal, EU:T:2009:433, § 55).
For the public under analysis, the signs at issue do not contain any components that
have an immediately evident meaning for the relevant public, namely the general
non-English-speaking public with an average degree of attention.
Therefore, the possible components ‘safe’, ‘sure’ and ‘stay’ will not be perceived as
distinct elements within the signs. On the contrary, they merge imperceptibly into the
words ‘safestay’ and ‘SureStay’, which are meaningless and fanciful, and will each be
viewed as a whole. The Opposition Division considers that, although in the contested
Decision on Opposition No B 2 763 970 page: 4 of 7
mark an artificial separation is created by the use of upper case for the second letter
‘S’, the public under consideration will nonetheless view the mark as a whole, given
that ‘Sure’ and ‘Stay’ are meaningless from the consumers’ perspective.
Because the words ‘safestay and ‘SureStay’ are meaningless for the relevant public,
they have a normal degree of distinctiveness in relation to the services at issue.
The figurative letter ‘S’ in the earlier mark has a limited impact given that the relevant
public will perceive it as referring to the first letter of the word ‘safestay’.
The figurative six-pointed star will be perceived as such. It has no meaning in relation
to the services at issue.
Both trade marks are figurative signs containing verbal and figurative elements. In
such cases, 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).
Neither of the marks has any element that could be considered dominant.
It should be borne in mind that it follows from the case-law cited herewith that marks
containing or reproducing an element of another must be considered, at least to that
extent, similar (03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 47-50; 04/11/2003,
T-85/02, Castillo, EU:T:2003:288, § 40; 18/02/2004, T-10/03, Conforflex,
EU:T:2004:46, § 59 onwards; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 46
onwards; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 54-57; 04/05/2005,
T-359/02, Star TV, EU:T:2005:156; 11/05/2005, T-31/03, Grupo Sada,
EU:T:2005:169, § 49 onwards; 25/05/2005, T-352/02, PC Works, EU:T:2005:176,
§ 34 onwards; 25/05/2005, T-288/03, Teletech Global Ventures, EU:T:2005:177, § 86
onwards; 22/03/2007, T-322/05, Terranus, EU:T:2007:94, § 35 onwards; 08/09/2010,
T-152/08, Scorpionexo, EU:T:2010:357, § 66 onwards; 08/09/2010, T-369/09, Porto
Alegre, EU:T:2010:362, § 26 onwards; 28/09/2011, T-356/10, Victory Red,
EU:T:2011:543, § 26 onwards; 23/05/2007, T-342/05, Cor, EU:T:2007:152;
10/11/2011, T-313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T-434/10, Alpine
Pro Sportswear & Equipment, EU:T:2011:663, § 55 onwards). The Opposition
Division cannot simply ignore a precedent so clearly established in case-law.
Visually, the signs coincide in the sequence of letters ‘S*ESTAY’. They also coincide
in the fact that their figurative elements are formed of one or several letters ‘S’, even
though these figurative elements remain different.
In addition, the signs differ in the marks’ second and third letters, namely ‘af’ and ‘ur’,
and in their typefaces.
Established case-law asserts that the beginning of a sign normally catches and holds
the attention of the consumer (17/03/2004, T-183/02 & T-184/02, Mundicor,
EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64-65), as
there is a tendency to overlook the middle parts of words. Furthermore, the longer
the marks are, the more differences are needed in order to distinguish between them
(14/09/2010, R 1581/2009-2, TEZALVO / TECLIVO, § 23). The Opposition Division
Decision on Opposition No B 2 763 970 page: 5 of 7
does not consider the signs at issue to be short marks, and therefore has no reason
to deviate from these principles in the present case.
The differing middle sections of the signs, namely the letter combinations ‘af’ and ‘ur’,
do not have sufficient impact to outweigh the identical beginnings and endings (‘S’
and ‘estay’).
In the light of the foregoing, and in particular taking into account the fact that the word
elements have more significance than the figurative elements, the coinciding visual
features outweigh the differing visual features. Therefore, the signs are visually
similar to an average degree from the relevant public’s perspective.
Aurally, the signs coincide in the sounds of the letters ‘s*estay’ and differ in the
sound of the marks’ second and third letters, ‘af’ and ‘ur’. The signs have the same
number of syllables as well as having the same rhythm and intonation. The difference
caused by the second and third letters of the signs is outweighed by the
commonalities in sound and rhythm caused by the other components.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the relevant public will perceive the meaning of the six-pointed star,
whereas in the earlier mark the relevant public will perceive the letter ‘S’. To that
extent, the signs are conceptually dissimilar. Nevertheless, this dissimilarity must not
be overemphasised given that these elements have a fairly limited capacity to
indicate the commercial origin of the relevant services, either because the figurative
elements have less impact than the word elements or because the figurative ‘S’ will
be perceived only as referring to the word ‘safestay’.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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.
e) 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
Decision on Opposition No B 2 763 970 page: 6 of 7
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 signs are visually and aurally similar to an average degree
and conceptually dissimilar (even though the conceptual aspect has a limited
influence for the reasons given above). The contested services are identical to the
opponent’s services.
The fact that the mark applied for reproduces to a striking degree the essential
features of the earlier mark (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 28)
leads to the conclusion that the signs are sufficiently similar overall to conclude that
the public under consideration might believe that the services found to be identical
have the same commercial origin or come from undertakings that are economically or
industrially linked (17/10/2006, T-483/04, Galzin, EU:T:2006:323, § 80; 21/10/2008,
T-95/07, Prazol, EU:T:2008:455, § 56; 16/06/2010, T-487/08, Kremezin,
EU:T:2010:237, § 90), in particular taking into account the fact that consumers rarely
have the chance to compare marks side by side, but must trust in their imperfect
recollection of them (15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 52).
Moreover, it is consistent case-law that, when the services covered by the marks at
issue are identical, the degree of difference between the signs must be high to
exclude a likelihood of confusion (13/11/2012, T-555/11, tesa TACK, EU:T:2012:594,
§ 53).
Considering all the above, there is a likelihood of confusion on the part of the non-
English-speaking part of the public, such as the Spanish-speaking public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 635 901. It follows that the contested sign must
be rejected for all the contested services.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its reputation as claimed by the opponent. The result would
be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the abovementioned earlier right leads to the success of the opposition and to the
rejection of the contested trade mark for all the services against which the opposition
was directed, there is no need to examine the other earlier rights invoked by the
opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). In
addition, since the opposition is fully successful on the basis of the ground of
Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the
opposition, namely Article 8(4) and (5) EUTMR.
COSTS
According to Article 109(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.
Decision on Opposition No B 2 763 970 page: 7 of 7
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Gueorgui IVANOV Patricia LÓPEZ
FERNÁNDEZ DE
CORRES
María Clara
IBÁÑEZ FIORILLO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.