OPPOSITION No B 2 773 961

Tui AG, Karl-Wiechert-Allee 4, 30625 Hannover, Germany (opponent), represented by Karsten Fischer, Karl-Wiechert-Allee 4, 30625 Hannover, Germany (professional representative)

a g a i n s t

HauteDesk BV, Van Plettenbergweg 13, 6286 AC Wittem, Netherlands (applicant).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 773 961 is upheld for all the contested services, namely:

Class 43: Providing online information relating to hotel reservations; hotels.

2.        European Union trade mark application No 15 442 775 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 442 775, namely against all the services in Class 43. The opposition is based on European Union trade mark registration No 14 330 906. 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 43: Services for providing food and drink; Temporary accommodation; Reservation of hotels provided by means of the internet and global computer networks; Booking of hotel rooms for travellers; Reservation of tourist accommodation.

The contested services are the following:

Class 43: Providing online information relating to hotel reservations; Hotels.

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 contested hotels are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.

The contested providing online information relating to hotel reservations and the opponent’s reservation of hotels provided by means of the internet and global computer networks are services usually offered in connection with each other by the same companies. They have the same distribution channels and relevant public. In addition, they can be complementary. Therefore, they are similar to a high degree.

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 a high degree are directed at the public at large. The degree of attention is average.

3. The signs

Upgrade6A	upgreats
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 verbal elements ‘Upgrade’ and ‘upgreats’ of the earlier mark and the contested mark, respectively, are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the other parts of the public, such as the Spanish- and French-speaking parts of the public, for which these elements do not have any meaning.

The earlier mark is the word mark ‘Upgrade6A’ and the contested sign is the word mark ‘upgreats’. Because they are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

While the rule is that marks are perceived as a whole, in relation to the earlier mark ‘Upgrade6A’, it is reasonable to assume that, because of the number ‘6’ towards the end of the mark, the relevant public will break down ‘Upgrade6A’ into two elements, that is, ‘Upgrade’ and ‘6A’, even though there is no clear separation between them.

The word ‘Upgrade’ is meaningless for a substantial part of the relevant public and is, therefore, distinctive. The alphanumerical element ‘6A’ will be perceived as such by the relevant public, which will not attach any particular meaning to it.

The verbal element ‘upgreats’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in their first four letters, ‘UPGR’, which is particularly relevant given that consumers generally tend to focus on the first part of a sign when encountering a trade mark. The marks also coincide in the letters ‘A’ in the fifth position in the earlier mark and in the sixth position in the contested sign and in the letters ‘E’ in the seventh position in the earlier mark and in the fourth position in the contested sign. However, they differ in the letter ‘D’ and the number and letter ‘6A’, in the middle and at the end of the earlier mark, respectively, and in the letters ‘TS’ at the end of the contested sign. As the differing letters are in the middle and/or at the end of the signs, these differences will not have a significant impact on the impression created by the signs. As stated above, consumers tend to focus on the first parts of signs and, therefore, they will pay much less attention to the differing letters that appear in the middle or towards the ends of the signs.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘UPGR’ and, in this regard, reference is made to the previous assertion regarding the identical beginnings of the signs, as this factor is also relevant to the aural assessment. Moreover, the signs coincide in the sound of the letters ‘A’ and ‘E’ (albeit not in the same sequence, as explained in the visual comparison) but differ in the sounds of the letter ‘D’ and the number and letter ‘6A’ (the number ‘6’ will be pronounced as ‘seis’ or ‘six’) in the middle and towards end of the earlier mark, respectively, and in the sound of the letters ‘TS’ at the end of the contested sign.

Therefore, the degree of aural similarity is somewhat lower than average.

Conceptually, neither of the signs, as a whole, has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

In the present case, the services are identical or similar to a high degree. The degree of attention paid by the relevant public is average. The degree of visual similarity is average and the degree of aural similarity is somewhat lower than average. On the other hand, neither of the signs has any concept that could help consumers to differentiate them. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

The similarities between the signs result from the fact that they coincide in the letters ‘UPGR’, which are at the beginnings of the marks, to which consumers usually pay more attention. The marks also coincide in the letters ‘A’ and ‘E’, albeit not in the same sequence, as explained in section c) of this decision. These similarities have a strong influence, as they result in the signs creating similar overall impressions.

The differing letters in the middle and at the end of the signs do not have a decisive impact on the overall impressions created by the signs, for the reasons explained above in section c).

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).

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.

Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similar overall impressions created by the marks, to the extent that the relevant public, when encountering the signs in relation to identical services or services that are similar (to a high degree), is likely to think that they come from the same undertaking or from economically linked undertakings.

In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore, the identity or high degree of similarity between the services is sufficient to offset the somewhat lower than average degree of aural similarity between the signs.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and French-speaking parts of the 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 14 330 906. 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

María Belén IBARRA DE DIEGO

Angela DI BLASIO

Francesca CANGERI SERRANO

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.