OPPOSITION No B 2 665 829

The Provost, Fellows, Foundation Scholars, and the Other Members of Board of the College of the Holy and Undivided Trinity of Queen Elizabeth near Dublin, College Green, Dublin 2, Ireland (opponent), represented by Maclachlan & Donaldson, 2b Clonskeagh Square, Clonskeagh Road, Dublin Dublin D14 V0N2, Ireland (professional representative)

a g a i n s t

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

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 829 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 517 213 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 517 213. The opposition is based on, inter alia, Irish trade mark registration No 247 051. 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.

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 Irish trade mark registration No 247 051.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter, bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; printed publications; albums; almanacs; bags of paper or plastic for packaging; wrapping paper; binders, binding strips; book-ends, booklets, book markers and books; brochures; boxes of cardboard or paper; envelopes or wrappers of cardboard or paper; diaries and calendars; cardboard articles; catalogues and charts; chromolithographs; coasters of paper or cardboard; covers; paper cutters and knives; drawing instruments and materials; engravings and prints; erasing products and rulers; etchings; files and folders; paper flags; printed forms and pamphlets; periodicals and magazines; manuals and newsletters; advertising and promotional materials; webpages downloaded from the Internet in the form of printed matter; non-textile labels; lithographic works of art and lithographs; fountain pens, pens, pencils, pencil sharpeners, pencil and pen holders and writing materials; graphic prints and reproductions; paper weights; tickets; notebooks and pads; scrap-books; office requisites other than furniture; packing paper; pictures; instructional and teaching material other than apparatus; paper placemats, cloths and napkins; postcards and posters; signs of paper or cardboard; stencils, stickers and transfers; photographs and photo engravings; stationery; but not including printed matter, publications, instructional and teaching material relating to computers and computer programmes.

Class 35:        Advertising; business management; business administration; office functions; publishing services; publication of publicity texts; rental of advertising space; business consultancy and information; organisation of exhibitions, events and conferences (for commercial and advertising purposes); marketing and market analysis, none being provided via mobile mobile phone systems; research and studies; data processing and database services (for business); business research and studies; economic forecasting; document reproduction and secretarial services; business information services all provided on-line from a computer database or the Internet; compilation of advertisements for use as web pages on the Internet; provision of space on websites for advertising; compilation of information on all the aforesaid services available via the Internet or the world wide web; database, on-line and Internet consultancy, advisory and information services; consultancy, advisory and information services relating to all the aforesaid services; but not including business administration and management relating to the maintenance of vehicle fleets or any services relating to commodities trading or risk management solutions  

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; arrangement, conducting and organisation of exhibitions, events and conferences; publication of books and texts; electronic publication in the field of education and training; educational services and information; educational examination; entertainment services and information; sporting and cultural activities; instruction and training services; presentation of live performances; providing museum facilities; provision of information on and access to sports facilities, cultural facilities and educational facilities; organisation of competitions; providing sports facilities; providing recreation and cultural facilities and information; arranging and conducting of seminars, workshops and symposia; teaching and practical training; theatre productions; information relating to sporting, entertainment and cultural activities, education, instruction and training provided on-line from a computer database or from facilities provided on the Internet and other similar information networks; organisation, production and presentation of on-line training and education provided on-line from a computer database or from facilities provided on the Internet and other similar information networks; translation services; advisory, consultancy and information services relating to the aforesaid.

Class 43:        Services for providing food and drink; temporary accommodation; rental of temporary accommodation; accommodation reservations; hotel, restaurant, café and catering services; providing facilities for exhibitions.

The contested goods and services are the following:

Class 16:        Advertising material of paper or cardboard.

Class 35:        Business consultancy in the field of hotels; Business management of hotels; Administrative processing of purchase orders; Invoicing; Public relations; Commercial information agencies; Rental of advertising space; Organisation of exhibitions for advertising or commercial purposes; Demonstration of goods; Commercial brokering of hotel services; Commercial brokering of rehabilitation and conditioning services.

Class 41:        Arranging and conducting of conferences, congresses, colloquiums, seminars, symposiums, courses and training; Organisation of receptions, discotheques, live performances; Arranging presentations (other than commercial and advertising); Arranging cultural, educational and sporting and entertainment events, contests and competitions; Production of theatre, film, concert and other shows for cultural and entertainment purposes; Party planning (entertainment); Organization of balls; Slot machine (gaming machine) services; Leisure and entertainment information; Rental of sports equipment, except vehicles; Golf facilities (providing -); Sport camp services.

Class 43:        Bar services; Services for providing food and drink; Cafés; Hotels; Accommodation bureaus [hotels, boarding houses]; Rental of meeting rooms; Rental of chairs, tables, tablecloths and glassware; Reservation of hotel accommodation and Reservation of boarding house accommodation; Temporary accommodation reservations.

Contested goods in Class 16

The contested advertising material of paper or cardboard is included in the broad category of the opponent’s goods made from these materials (paper, cardboard) and, not included in other classes in Class 16. Therefore, they are identical.

Contested services in Class 35

The contested business consultancy in the field of hotels is included in the broad category of the opponent’s business consultancy in Class 35. These services are identical. 

The contested business management of hotels is included in the broad category of the opponent’s business management in Class 35. These services are identical.

The contested administrative processing of purchase orders; invoicing are included in the broad category of the opponent’s office functions in Class 35. These services are identical.

The contested public relations; rental of advertising space; demonstration of goods are included in the broad category of the opponent’s advertising in Class 35. These services are identical.

The contested commercial information agencies; organisation of exhibitions for advertising or commercial purposes; commercial brokering of hotel services; commercial brokering of rehabilitation and conditioning services are included in the broad category of the opponent’s business administration in Class 35. These services are identical.

Contested services in Class 41

The contested arranging and conducting of conferences is identically contained in both lists of services (including synonyms).

The contested arranging and conducting of congresses, colloquiums, seminars, symposiums, courses and training; arranging presentations (other than commercial and advertising); arranging cultural, educational and sporting and entertainment events, contests and competitions are included in the broad category of the opponent’s arrangement, conducting of events in Class 41. These services are identical.

The contested organisation of receptions, discotheques, live performances are included in the broad category of the opponent’s organisation of events in Class 41. These services are identical.

The contested production of theatre, film, concert and other shows for cultural and entertainment purposes; party planning (entertainment); organization of balls; slot machine (gaming machine) services are included in the broad category of the opponent’s entertainment in Class 41. These services are identical.

The contested leisure and entertainment information are included in the broad category of the opponent’s entertainment; advisory, consultancy and information services relating to the aforesaid in Class 41. These services are identical.

The contested rental of sports equipment, except vehicles; golf facilities (providing -); sport camp services are included in the broad category of the opponent’s sporting activities in Class 41. Consequently, these services are considered identical.

Contested services in Class 43

The contested bar services; cafés; rental of chairs, tables, tablecloths and glassware are included in the broad category of services for providing food and drink in Class 43 of the earlier mark. Therefore, they are identical.

The contested services for providing food and drink are identically mentioned in both lists of services.

The contested hotels; accommodation bureaus [hotels, boarding houses]; rental of meeting rooms; reservation of hotel accommodation and reservation of boarding house accommodation; temporary accommodation reservations are included in the broad category of the opponent’s temporary accommodation in Class 43. These services are identical.

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, part of the goods and services found to be identical are directed at the public at large, for example bar services in Class 43, and some are more specialised services directed at business customers with specific professional knowledge or expertise, such as business management of hotels in Class 35.

The public’s degree of attentiveness may vary from average to above average, depending on the price, specialised nature, or terms and conditions of the purchased goods and services, as some of the services are normally contracted on an infrequent basis for a very specific purpose, their price could also be relatively high and they could have severe consequences for the functioning of a business.

3. The signs

TRINITY
Earlier trade mark	Contested sign

The relevant territory is Ireland.

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 composed of the term ‘TRINITY’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

The contested sign is a figurative one made up of a three sided logo in beige and white, placed on the left hand side and followed by the word ‘TRINITY’, written in a brownish fairly standard typeface in capital letters. Underneath appears the word ‘HOTELS’, written in much smaller capital letters in a greyish fairly standard typeface.  

The term ‘TRINITY’ will be understood by part of the relevant public familiar with Christian doctrine as the union of three persons (Father, Son, and Holy Spirit) in one God (see Collins English Dictionary online). For another part of the public, it will be understood as a group of three. However, regardless of the above mentioned, as the term as such is not descriptive, allusive or otherwise weak for the relevant goods and services, it is considered to be distinctive. The earlier mark has no element which can be considered more dominant or distinctive.

The term ‘TRINITY’ in the contested sign has the same meaning as above mentioned. It is considered to be not only a distinctive element of the contested mark, but it is also co-dominant along with the figurative element as they stand out compared to the term ‘HOTELS’. Insofar as the latter is concerned, it will be understood as temporary accommodation and so in relation to part of the services in Class 43, such as hotel services, it will be perceived as directly descriptive of the nature of the services and, therefore, weak. In relation to other services, such as bar services, it will be weak also, as it indicates a characteristic of them (namely that they are provided by or in hotels). In relation to other goods and services its distinctiveness might also be seen as lower than average, as this term might be an indication of the subject matter or targeted public. Nonetheless, this element remains secondary due to its smaller size and lower position in the contested sign.

Visually, the signs coincide in the word ‘TRINITY’, which forms the whole earlier mark and one of the most distinctive and dominant elements of the contested sign. Furthermore, this word is also the first verbal element of the contested sign and this is especially important, since the consumer reads from left to right or from top to bottom and will perceive this word first. The signs differ in the term ‘HOTELS’ of the contested sign, which nevertheless is considered as secondary for the reasons set forth above. Furthermore, the marks differ in the additional graphic element and stylisation of the contested sign.

At this point it should be stressed 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).

Regarding the typeface in which the verbal elements of the contested sign are written, this stylisation is fairly standard and it will not lead the consumer’s attention away from the elements it seems to embellish.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the marks coincides in the sound of the word /TRI-NI-TY/, present identically in both signs. The signs differ in the sound of the contested mark’s verbal element ‘HOTELS’ which nevertheless is considered as secondary for the reasons set forth above. The marks are, aurally, highly similar. However, since the term ‘HOTELS’ is written in such a small typeface, it could also be that a part of the public would not pronounce it. For this part of the public, the marks are even phonetically identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks coincide in the concept of the term ‘TRINITY’. Furthermore, the remaining word ‘HOTELS’ of the contested sign, which is not only less dominant, but also less distinctive, will be perceived as having the above mentioned meaning. Moreover, the device in the sign is a three pointed frame and has a trinity of sides, which could reinforce the concept of trinity. Consequently, the marks are conceptually highly 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.

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 goods and 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

A likelihood of confusion (including a likelihood of association) 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.

The goods and services are identical and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.

The signs are visually highly similar, aurally highly similar or identical and conceptually highly similar. The difference in the word ‘HOTELS’ of the contested sign has less impact, due to its weak character and less dominant position. Insofar as the contested mark’s figurative element is concerned, it should be noted that the consumer usually focuses more on the verbal elements than on figurative ones.

In addition, account should also be taken of 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In light of the foregoing, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well-founded on the basis of the opponent’s Irish trade mark registration No 247 051. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, namely Irish registration No 247 051 for the word mark ‘TRINITY’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

For the sake of completeness, it should be mentioned that since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess an eventual enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.