M METRO Park | Decision 2463456 - MIP METRO Group Intellectual Property GmbH & Co. KG v. HK CTS Hotels Co., Ltd.
Date Published: Apr 17, 2018
OPPOSITION DIVISION
OPPOSITION No B 2 463 456
MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235
Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual
Property GmbH & Co. KG, Eva Schiller, Metro-Str. 1, 40235 Düsseldorf, Germany
(employee representative)
a g a i n s t
HK CTS Hotels Co., Ltd., Floor 9, CTS Building, No.2 East Road of North Third
Ring, Chaoyang District, Beijing, People's Republic of China (applicant), represented
by Cabinet Pascale Lambert & Associés, 18, avenue de l'Opéra, 75001 Paris,
France (professional representative).
On XX/XX/XXXX, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 463 456 is partially upheld, namely for the following
contested services:
Class 35: Publicity; business management consultancy; commercial
administration of the licensing of the goods and services of others; business
information; business management of hotels; sales promotion for others;
import-export agencies; personnel management consultancy; photocopying
services; rental of vending machines.
Class 43: Accommodation bureaux [hotels, boarding houses]; food and drink
catering; cafés; cafeterias; providing campground facilities; canteens; rental of
temporary accommodation; boarding houses; tourist homes; hotels;
restaurants; boarding house bookings; hotel reservations; selfservice
restaurants; snack-bars; boarding for animals; bar services; holiday camp
services [lodging]; rental of transportable buildings; temporary accommodation
reservations; motels; rental of chairs, tables, table linen, glassware; rental of
tents; rental of cooking apparatus; rental of drinking water dispensers; rental of
lighting apparatus other than for theatrical sets or television studios; food
sculpting.
2. European Union trade mark application No 13 312 178 is rejected for all the
above services. It may proceed for the remaining services.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 463 456 page: 2 of 16
REASONS
The opponent filed an opposition against all the services of European Union trade
mark application No 13 312 178 . The opposition is based on European Union
trade mark registration No 779 116 and International registration
No 1 096 843 designating Ireland, Austria, Romania, Bulgaria, Slovakia, Denmark,
Italy, Hungary, Benelux, Croatia, France and Slovenia, . The
opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION- International registration No 1 096 843 designating Ireland,
Austria, Romania, Bulgaria, Slovakia, Denmark, Italy, Hungary, Benelux,
Croatia, France, Slovenia
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings
before it the Office will examine the facts of its own motion; however, in proceedings
relating to relative grounds for refusal of registration, the Office is restricted in this
examination to the facts, evidence and arguments submitted by the parties and the
relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence of the existence, validity and scope of
protection of its earlier mark or earlier right, as well as evidence proving its
entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit a copy of the relevant
registration certificate and, as the case may be, of the latest renewal certificate,
showing that the term of protection of the trade mark extends beyond the time limit
referred to in paragraph 1 and any extension thereof, or equivalent documents
emanating from the administration by which the trade mark was registered -
Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
In the present case, the notice of opposition was not accompanied by any evidence
as regards the earlier trade mark on which the opposition is based.
Decision on Opposition No B 2 463 456 page: 3 of 16
On 11/02/2015, the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 16/06/2015.
The opponent did not submit any evidence concerning the substantiation of earlier
International registration No 1 096 843 designating Ireland, Austria, Romania,
Bulgaria, Slovakia, Denmark, Italy, Hungary, Benelux, Croatia, France, Slovenia.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this
earlier right.
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.
a) The goods and services
The goods services on which the opposition is based are the following:
Class 1: Chemicals used in industry, science and photography, as well as in
agriculture, horticulture and forestry; preparations for keeping flowers fresh, nutrient
salts, soil conditioning chemicals, preparations for purifying water; unprocessed
artificial resins, unprocessed plastics; manures, in particular lawn fertilizers, rose
fertilizers, conifer fertilizers, flower fertilizers, compound fertilizers and rhododendron
fertilizers; potting compost, garden peat, soil loosening preparations; fire
extinguishing compositions; tempering and soldering preparations; tanning
substances; adhesives used in industry, adhesive cement; chemical substances for
preserving foodstuffs, unexposed films; road salt.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood; colorants; mordants, namely wood, leather and polishing
mordants; raw natural resins; metals in foil and powder form for painters, decorators,
printers and artists.
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; laundry starch; perfumery,
essential oils, cosmetics, deodorants for hygienic purposes, hair lotions, hair sprays;
Decision on Opposition No B 2 463 456 page: 4 of 16
dentifrices; scented sprays and room sprays (included in class 3); essential oils for
foodstuffs.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding
compositions; solid, liquid and gaseous fuels, in particular coal, charcoal, coke,
firelighters in paste and cube form, peat, wood, petrol, diesel, fuel oils, motor spirit for
internal combustion engines, benzol, petroleum, methylated spirits, liquid gas
including propane gas and butane gas, acetylene, oxygen and hydrogen; illuminants;
candles, nightlights and wicks, lighters being equipment.
Class 5: Chemical and sanitary preparations, algicides, insecticides, fungicides,
herbicides, molluscicides, nematicides; dietetic food for babies; antiseptics and
disinfectants; plasters, materials for dressings; hygienic articles for women, namely
sanitary towels, panty liners, tampons, sanitary pants; deodorants for sanitary
purposes, deodorising room sprays; adhesives for dentures; preparations for
destroying vermin, in particular rodenticides; medicinal teas and drugs; vitamin
preparations; medicines (other than prescription medicines); dietetic substances
adapted for medical use, dietetic substances with a vitamin base, being foodstuffs for
nutrient reduced and/or calorie-controlled consumption; medicinal herbs in dried or
preserved form; medicinal herb extracts, food supplements, namely preparations for
enriching food for human consumption with trace elements, vitamins, flavouring and
flavour enhancing substances and roughage.
Class 6: Non-electric cables and wires of common metal; metal building materials;
pipes and tubes of metal; ironmongery (small), goods of common metal, namely
chains, taps for casks, bottle tops, junctions for pipework, valves, grating, furniture
casters, signboards, transport containers, tanks and window, door and furniture
fittings; ironmongery and bins and water-butts, propane gas bottles; safes and cash
boxes; transportable buildings of metal, in particular prefabricated garages; roller
blinds.
Class 7: Electric kitchen machines for crushing, chopping, grinding, cutting, pressing,
stirring or beating, meat mincing machines, sewing machines, dish washers, washing
machines, spin driers; motors and engines, except for land vehicles; agricultural
machines; cleaning machines, mechanical filtering apparatus, pumps for conveying
liquids, solids and air, hand-operated, electric or driven by a petrol engine or being
attachments for hand-operated apparatus or machines; current generators;
machines for metal working, wood working, processing plastic, compressors,
sweeping machines, snow clearing apparatus, cleaning machines, mechanical
filtering apparatus, lifting apparatus; pressure valves, pressure regulators; electric
lawn trimmers, battery-operated hedge cutters, soil aerating devices, garden hoes,
motor scythes, choppers, shredders, mulch mowers, petrol-driven and electric lawn
mowers, lawn mowers in the form of tractors and other vehicles; rope winches; rope
hoists and pulley lifting tackle, including electric rope hoists and pulley lifting tackle;
compressors and accessories, namely spray guns for paint, tyre inflation pressure
gauges, spray guns, sand blasting apparatus; pressure flushing apparatus;
electrically driven tools for DIY, cutting, drilling, percussion drilling, planing, screwing,
grinding and milling machines, drill hammers, drilling screws, drilling and milling
stations, milling grinding motors, lathes, electric saws, rocker saws, chain saws,
piercing saws, circular saws, circular saw benches, cutting implements and work
benches adapted for the aforesaid tools, electric planes, grinding apparatus and
machines, electric and hand operated tackers, electric soldering irons and soldering
stations, solder guns, hot-melt adhesive guns, vices, electric generators, current
generators, hot-air generators, paint spraying apparatus, apparatus for stripping wall
hangings, hot-air apparatus and blowers, including hot-air apparatus and blowers for
Decision on Opposition No B 2 463 456 page: 5 of 16
removing lacquer, tile dividing and cutting machines, electric welding apparatus
machines, high-pressure cleaners, sand blasting apparatus, drill sharpeners being
apparatus and attachments for drilling machines, roller blinds, motors and lifting
devices for roller blinds; sewing machines, knitting machines, dish washers, washing
machines, ironing machines, electrically-operated household and kitchen utensils, foil
sealers, slicers for bread and cooked meats, tin openers, mixers, juicers, electric
knives, electric grinders, food processors, pasta-making machines, stirring utensils,
meat mincers, flour mills, coffee grinders, all-purpose cutters, presses, vacuum
cleaners; electric lawn mowers, electric rakes, electric choppers; filters being parts of
machines, motors or engines; incubators for eggs; mechanically-operated
agricultural and horticultural apparatus; electric hedge cutters; fans and cylinders for
motors and engines.
Class 8: Hand tools and instruments (hand-operated); cutlery; razors; nail cutting
apparatus; trimmers for dogs; electric clippers (machines); side arms; mechanical
lawn mowers; mechanical lawn trimmers, mechanical hedge cutters; hand-operated
equipment used in agriculture, horticulture and forestry, in the construction of
machines, apparatus and vehicles, and in structural engineering.
Class 9: Electric and electronic apparatus and instruments (included in class 9);
spectacles, field glasses, projectors, enlarging equipment, stands for cameras; radio
and television apparatus, voice machines, entertainment equipment, being adapted
for use with television apparatus; colour photocopying equipment and machines,
including electrostatic and thermal colour photocopying equipment and machines,
photocopiers and other copying apparatus; special purpose containers, specially
adapted for the aforesaid apparatus and instruments; electric soldering apparatus,
electric welding apparatus, autogenous welding apparatus, battery charging
apparatus; foil sealing devices; wax polishing machines, flat irons; protective helmets
for people engaging in winter sports, horse riders, cyclists and motorcyclists; diving
suits, diving goggles, ski goggles; clothing for protection against accidents, including
shoes, special clothing for life-saving purposes, face protection shields, protective
goggles or protective masks for workers; exposed films; batteries, tachometers,
transformers; electric cables, wires, conductors and connection fittings therefor,
commutators, distribution boards and distributing boxes; warning triangles; fire-
extinguishing apparatus; cash registers, calculating machines, data processing
equipment and computers, data carriers containing machine-readable programs,
data processing programs; automatic vending machines and mechanisms for coin-
operated apparatus; magnetic data carriers in the form of tapes, films, discs,
cassettes, sound recording discs; apparatus for recording, transmission or
reproduction of sound or images; nautical, surveying, photographic,
cinematographic, optical, weighing, measuring, signalling, checking (supervision),
life-saving and teaching apparatus and instruments; apparatus and instruments for
weak current engineering, namely for telecommunications, high-frequency
engineering and control engineering; scientific apparatus and instruments for
scientific research in laboratories; metal detectors and voltage detection apparatus;
garage door openers.
Class 10: Orthopaedic articles, namely orthopaedic bandages, corsetry, hosiery and
shoes; thermal cushions, infra-red radiation apparatus, support cushions, walking
aids, pulse measuring apparatus, spa baths, teeth polishing apparatus, condoms,
feeding bottle valves, teats; health care apparatus, namely arterial blood pressure
measuring apparatus, hearing aids, thermometers, blood sugar measuring
apparatus, inhalation apparatus, acupuncture apparatus, tanning apparatus (sun
beds), massage apparatus, apparatus for physiotherapy, electric current stimulator
Decision on Opposition No B 2 463 456 page: 6 of 16
apparatus, stethoscopes for blood pressure measuring apparatus; suture materials;
heated cushions and electric blankets for medical purposes.
Class 11: Electric hot water bottles, electric footwarmers, heated cushions and
electric blankets not for medical purposes; heat pumps, yoghurt makers; apparatus
for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating,
water supply and sanitary purposes, tumble driers; turn signals.
Class 12: Land vehicles, except (carriages of) underground trains, and water
vehicles, in particular trailers and boat trailers and automobiles, mopeds,
motorcycles, bicycles, kayaks, rowing boats and sailing boats, snow ploughs, snow
caterpillar tractors; wheelbarrows, wheelchairs for invalids, pushchairs, golf carts,
hose carts, dinghies; parts for land vehicles, except parts for (carriages of)
underground trains, in particular starters, silencers, brakes, reversing alarms, horns,
gear boxes, couplings, motors and engines and driving belts, vehicle seats, steering
wheels, wheels, tyres, wheel rims, tyre valves, shock absorbers, accessories for
automobiles and bicycles, namely luggage and ski racks, snow chains, spoilers,
head rests, safety belts, safety seats for children, dress guards for bicycles, bells and
air pumps, puncture repair kits; roof boxes.
Class 13: Fireworks.
Class 14: Precious metals and their alloys and objects made therefrom or coated
therewith, namely craft objects, decorative objects, tableware and epergnes (except
cutlery), watch straps, medals and medallions, cigar and cigarette cases and
holders, jewellery, costume jewellery, precious stones and gemstones; horological
and chronometric instruments.
Class 15: Musical instruments.
Class 16: Paper and cardboard and goods made from cardboard, namely containers
for packaging, bags for packaging; bookbinding material, namely bookbinding yarn,
linen and other textile materials for bookbinding; instructional and teaching material
(except apparatus) in the form of games, animal and plant preparations, geological
models and preparations, globes, drawing implements for wall boards; electric and
electronic typewriters, office requisites (except furniture), namely addressing
machines, franking machines, document files, letter trays, letter openers, writing
pads, perforators, stapling presses, dictating apparatus, paper clips and staples,
inking ribbons, correcting agents for offices, stamps (seals), inking pads, ink for
stamps, inks for writing and drawing, Indian ink, fastening holders for documents,
files and file covers for documents, backs for files and file covers, holders for pens
and pencils, pencil sharpeners, desk furniture, fountain pen cups, card index boxes,
desk files, paper trays, office scissors, paper cutters, letter scales, slide rules;
printers' type and printing blocks; playing cards; ring binders, conference folders,
correspondence folders, document folders, writing and accounting pads, note books,
vocabulary books, homework diaries, packaging material of plastic, namely sleeves,
bags and films; photographs, stationery, photograph albums, adhesives for stationery
or household purposes, including adhesives for handicraft work; self-adhesive tapes
for stationery or household purposes; artists' materials, namely modelling clay,
canvas, Indian inks, palettes and easels for painters, mordants and sheet metals for
artists; paint brushes.
Class 17: Films, sheets, and rods of plastic in extruded form for use in manufacture;
packing, stopping and insulating materials; asbestos, mica and goods thereof,
Decision on Opposition No B 2 463 456 page: 7 of 16
namely fire-proof cloths and insulating suits; flexible pipes, not of metal; self-
adhesive tapes, other than stationery and not for medical or household purposes.
Class 18: Leather and imitations of leather and goods made of these materials,
namely bags and other containers not specifically designed for the objects being
carried, and small goods of leather, in particular purses, pocket wallets, key wallets;
animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking
sticks; hand bags, briefcases, shopping bags, school satchels, back packs,
rucksacks.
Class 19: Building materials (non-metallic), in particular semi-worked wood, and
beams, boards and panels, plywood, building glass, in particular tiles and window
glass, non-metallic rigid pipes for building; transportable buildings, not of metal, in
particular prefabricated garages, summer houses, storage sheds; roller blinds.
Class 20: Furniture, camping furniture, bed clothes, mattresses, pillows, sleeping
bags for camping; mirrors, picture frames; goods of plastic, namely mouldings for
picture frames, curtain rails, pegs, cases, transport pallets, casks, containers, chests,
tanks, rivets, screws, pins, signs, furniture, window and door fittings, curtain hooks,
slatted indoor blinds, garment bags, coat hangers, clothes pegs, stoppers for bottles,
stakes for plants or trees; letter boxes not of metal or of masonry; goods of wood or
wood substitute materials, namely mouldings for picture frames, curtain rails, pegs,
cases, transport pallets, casks, containers, chests, work benches, tanks, taps, laths,
tool handles, spools, coat hangers, clothes-pegs, works of art, decorative articles;
goods of cork, reed, cane, wicker, horn, bone, ivory, whalebone, tortoiseshell, amber,
mother-of-pearl, meerschaum.
Class 21: Cleaning instruments; articles for cleaning purposes; steel wool; cooking
pot sets of metal, including pots, pans and kettles, buckets; household and kitchen
goods of glass, porcelain and earthenware, namely plates, cups, saucers, pans,
bowls, jars, tureens, beer mugs, beer glasses, wine and water glasses, vases,
glasses, dishes, marmalade and jam containers, sugar and cream sets, sets for
vinegar, pepper and oil, fruit bowls, mixing bowls, cooking pots, carafes and bottles;
small hand operated household and kitchen apparatus (except vaporisers and
spraying machines for liquids and powders of all kinds) and portable containers for
household and kitchen use (not of precious metal or coated therewith); apparatus for
making ices; cosmetics utensils, electric combs and toothbrushes, electric manicure
equipment, mouth washes, shaving sprays; combs and sponges; brushes (except
paint brushes).
Class 22: Rope, string, nets, namely fishing nets, net bags for shopping; tents,
awnings, sails, bags for packaging of textile material; bags (sacks) for the transport
and storage of goods.
Class 23: Yarns and threads, for textile use.
Class 24: Textiles and textile goods, namely fabric, curtains, blinds, household linen,
table and bed linen; bed and table covers, furniture covering materials, decorative
materials.
Class 25: Clothing, including shoes, boots, slippers and headgear.
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins
and needles; artificial flowers.
Decision on Opposition No B 2 463 456 page: 8 of 16
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering
existing floors of rubber, plastic or textile materials, in particular carpeting, carpet
tiles, bedside rugs, bridges and runners, wall hangings (nontextile).
Class 28: Games, in particular electric and electronic games, playthings; gymnastic
and sporting appliances, snorkels; decorations for Christmas trees.
Class 29: Dietetic substances with a protein and/or carbohydrate base, being
foodstuffs for nutrient-reduced and/or calorie controlled consumption; edible oils and
fats; prepared meals, mainly consisting of meat, fish, shellfish, poultry, game,
vegetables or prepared fruit (including the aforesaid goods in frozen form), desserts
of yoghurt, quark or cream; eggs, milk and milk products, namely butter, cheese,
cream, yoghurt, milk powder for food; meat, fish, shellfish, poultry and game,
including preserved, prepared or frozen meat, fish, shellfish, poultry and game,
preserved, dried or frozen fruit and vegetables; meat extracts, meat, fish, fruit and
vegetable jellies; jams and marmalades.
Class 30: Dietetic substances with a protein and/or carbohydrate base, being
foodstuffs for nutrient-reduced and/or calorie controlled consumption; salad
dressings, mayonnaise; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee
and tea; flour and preparations made from cereals (except foodstuffs for animals), in
particular breakfast cereals; pasta; chocolate and chocolate goods, pralines,
including pralines with a liquid filling of wine and/or spirits, sweets, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking powder; edible salt; mustard;
vinegar, sauces [except salad dressings]; spices and condiments; flavourings for
food.
Class 31: Agricultural, horticultural and forestry products, namely grains and other
propagation material, unprocessed grains, unprocessed wood; natural plants and
flowers, flower bulbs and tubers; fresh fruit and vegetables, in particular potatoes,
seeds; dried plants, straw mulch and litter peat, cat litter, foodstuffs for animals, in
particular dog and cat food; live animals, in particular ornamental fish; salt for cattle.
Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks; syrups
and other non-alcoholic beverages; fruit drinks and fruit juices.
Class 33: Alcoholic beverages (except beers), in particular wines, spirits and
liqueurs.
Class 34: Tobacco; tobacco products, in particular cigarettes and cigars, smokers'
articles, namely tobacco tins, cigar and cigarette holders, cigar and cigarette cases,
ashtrays, none of the aforesaid goods of precious metals or their alloys or coated
therewith, pipe stands, pipe cleaners, cigar cutters, pipes, lighters, pocket equipment
for rolling cigarettes, cigarette papers, cigarette filters, lighter fuel, tobacco pouches,
water pipes; matches.
Class 35: Marketing, sales promotion, purchasing consultancy, marketing studies
and marketing analysis, business, organisation, personnel and professional business
consultancy, advertising, including radio and television advertising, cinema
advertising, advertising documentation, public relations; opinion polling, organising
trade fairs and exhibitions; commercial and professional business consultancy, in
particular for the retail food sector, providing commercial and professional business
information, in particular for the retail food sector.
Decision on Opposition No B 2 463 456 page: 9 of 16
Class 36: Financial affairs, namely credit bureaux and financing of credit for the
wholesale and retail sector, real estate, mortgage and leasing brokerage, insurance
brokerage; financial brokerage for investments in businesses, installations,
equipment; financial consultancy pertaining hereto.
Class 37: Building construction; repair; installation services.
Class 38: News agency services for press, radio and television.
Class 39: Travel arrangement, arrangement of tourist services, sightseeing, rental of
garages and parking places, rental of vehicles, parcel delivery; collecting,
transporting and sorting of waste and secondary raw materials.
Class 40: Processing and removal of waste and secondary raw materials for others,
using chemical, physical and/or biological processes (recycling).
Class 41: Tuition, further education and professional consultancy for employers and
of commercial employees and trainees of foreign businesses, arranging of seminars,
congresses and correspondence courses in the professional business sector,
arranging sporting competitions, public entertainment.
Class 42: Computer programming, rental of electronic data processing installations;
providing of food and drink, party services, consultancy for businesses which
manufacture and/or use packaging and/or packaging materials, in the development,
selection and use of ecologically compatible and economically viable packaging and
packaging materials, and in the labelling of the aforesaid packaging and packaging
materials; business and consumer consultancy in matters relating to the environment
and waste, namely consultancy in the avoidance of waste, and in the collecting,
transporting, sorting, evaluating and disposal of waste and secondary raw materials;
copyright management and exploitation (all the aforesaid services for others);
providing of expert opinion in the commercial and professional business sector, in
particular for the retail food sector, providing commercial and professional business
know-how, in particular for the retail food sector; disposal of waste and secondary
raw materials for others using chemical, physical and/or biological processes.
The contested services are the following:
Class 35: Publicity; business management consultancy; commercial administration of
the licensing of the goods and services of others; business information; business
management of hotels; sales promotion for others; import-export agencies;
personnel management consultancy; photocopying services; rental of vending
machines.
Class 43: Accommodation bureaux [hotels, boarding houses]; food and drink
catering; retirement homes; cafés; cafeterias; providing campground facilities;
canteens; rental of temporary accommodation; boarding houses; tourist homes;
hotels; day-nurseries [crèches]; restaurants; boarding house bookings; hotel
reservations; selfservice restaurants; snack-bars; boarding for animals; bar services;
holiday camp services [lodging]; rental of transportable buildings; temporary
accommodation reservations; motels; rental of chairs, tables, table linen, glassware;
rental of meeting rooms; rental of tents; rental of cooking apparatus; rental of
drinking water dispensers; rental of lighting apparatus other than for theatrical sets or
television studios; food sculpting.
Decision on Opposition No B 2 463 456 page: 10 of 16
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The expressions ‘in particular’ or including’, used in the opponent’s list of goods and
services, indicates that the specific goods and 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 (09/04/2003, T-224/01, Nu-Tride,
EU:T:2003:107).
However, the expression ‘namely’, used in the opponent’s list of goods and services
to show the relationship of individual goods and services to a broader category, is
exclusive and restricts the scope of protection only to the goods and services
specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 to each other.
Contested services in Class 35
The contested publicity and the opponent's advertising, including radio and television
advertising, cinema advertising, advertising documentation, public relations are
synonyms and therefore designate identical services.
The contested sales promotion for others is identically contained in both lists of
services (including synonyms).
The contested business management consultancy includes, as a broader category,
or overlaps with, the opponent’s commercial and professional business consultancy,
in particular for the retail food sector. Since the Opposition Division cannot dissect ex
officio the broad category of the contested services, they are considered identical to
the opponent’s services.
The contested commercial administration of the licensing of the goods and services
of others is included in the broad category of, or overlaps with, the opponent’s
commercial and professional business consultancy, in particular for the retail food
sector. Therefore, they are identical.
The contested business information is included in the broad category of, or overlaps
with the opponent’s providing commercial and professional business information, in
particular for the retail food sector. Therefore, they are identical.
The contested personnel management consultancy is included in the broad category
of, or overlaps with, the opponent’s personnel consultancy. Therefore, they are
identical.
The contested business management of hotels is included in the broad category of,
or overlaps with, the opponent’s professional business consultancy. Therefore, they
are identical.
Decision on Opposition No B 2 463 456 page: 11 of 16
The contested services of import-export agencies are similar to the opponent's
professional business consultancy as they can coincide in producer, end user and
distribution channels.
The contested photocopying services are clerical services that can be provided to the
same public and by the same companies that provide professional business
consultancy. Therefore, they are similar to a low degree.
The contested rental of vending machines services are similar to a low degree to the
opponent's automatic vending machines and mechanisms for coin-operated
apparatus in Class 9. Indeed, it is not unusual for producers of the latter goods to
offer these either for sale or for rent. Therefore, the contested services and the
opponent's goods coincide in public, producers/providers and trade channels.
Contested services in Class 43
The contested accommodation bureaux [hotels, boarding houses]; rental of
temporary accommodation; boarding houses; tourist homes; hotels; boarding house
bookings; hotel reservations; boarding for animals; holiday camp services [lodging];
rental of transportable buildings; temporary accommodation reservations; motels;
rental of tents; and the opponent's travel arrangement in Class 39 are similar as they
can coincide in producer, end user and distribution channels.
The contested food and drink catering; canteens; restaurants; selfservice
restaurants; food sculpting are similar to a low degree to the opponent's prepared
meals, mainly consisting of meat, fish, shellfish, poultry, game, vegetables or
prepared fruit (including the aforesaid goods in frozen form) in Class 29 as they can
coincide in producer and distribution channels. Furthermore they are complementary.
The contested cafés; cafeterias; snack-bars; bar services are similar to a low degree
to the opponent's coffee in Class 30 as they can coincide in producer and distribution
channels. Furthermore they are complementary.
The contested providing campground facilities; rental of chairs, tables, table linen,
glassware; rental of cooking apparatus; rental of drinking water dispensers; rental of
lighting apparatus other than for theatrical sets or television studios are services that
are often provided by companies which also offer services such as the opponent's
arranging sporting competitions, public entertainment. While the services at issue are
different in nature and purpose, they can be offered by the same companies and
through the same channels to the same public. Therefore, they are similar to a low
degree.
The contested rental of meeting rooms; retirement homes; day-nurseries [crèches]
have nothing in common with any of the opponent's goods and services as they are
different in nature, purpose and method of use. They are not sold to the public by the
same companies through the same channels and they are neither complementary
nor in competition. Therefore, they are dissimilar.
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
Decision on Opposition No B 2 463 456 page: 12 of 16
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 partly at the public at large and partly at business customers with
specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on
the price, sophistication or specialised nature, or terms and conditions of the services
purchased. Indeed, some of the services in Class 35, for instance, are specialised
business services that may have important financial consequences for their users
who would, therefore, display a higher level of attention when choosing them.
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 common element 'METRO' is 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 English -speaking part
of the public. This part of the public will associate 'METRO' with the underground
railway system in some cities (see Collins Dictionary online). This term has no
meaning for the relevant goods and services from the perspective of the public in the
relevant territory. Therefore, 'METRO' is distinctive of these the goods and services.
Decision on Opposition No B 2 463 456 page: 13 of 16
The element 'Park' of the contested sign will be understood as ‘a public area of land
with grass and trees, usually in a town, where people go in order to relax and enjoy
themselves by the relevant public' (see Collins Dictionary online). However, it has no
meaning for the relevant services and it is distinctive.
The contested sign contains more elements, namely a dark square with a letter 'M'
across it, and two Chinese characters. Taking into account that Chinese characters
are not in use in the different languages of the relevant territory and more particularly
in the English-speaking parts of it, these characters will be perceived as figurative
elements.
While all the additional elements of the contested sign are distinctive, it must be
recalled 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). Moreover, the letter 'M' will be perceived as a
repetition of the initial letter of the word 'METRO. In view of the foregoing, the public
under analysis will more easily refer to the contested sign by its word element
'METRO Park'. In the earlier mark, the word element 'METRO' is considered to have
a stronger impact on the consumer than the graphic elements, namely the specific
black typeface and the yellow colour.
In addition, while the signs at issue have no element that could be considered clearly
more dominant than other elements, it should be noted that consumers generally
tend to focus on the beginning of a sign when they encounter a trade mark. This is
because the public reads from left to right, which makes the part placed at the left of
the sign (the initial part) the one that first catches the attention of the reader. In view
of this, the position of the individual element 'METRO' at the beginning of the
contested sign is particularly relevant in the overall impression given by the contested
sign and, therefore, in the assessment of the global appreciation of the visual, aural
or conceptual similarity of the marks in question.
Visually, the signs coincide in that the word element 'METRO' of the earlier marks is
entirely reproduced at the beginning of the word element of the contested sign. The
signs differ in the additional word and figurative elements of the contested sign as
well as in the graphic elements of the earlier mark described above. Therefore, the
signs are similar to an average degree.
Aurally, taking into account that the single letter 'M' of the contested sign will not be
pronounced for the reasons explained above, the pronunciation of the signs
coincides in the sound of the letters ‛M-E-T-R-O’, present identically in both signs
whereas it differs in the sound of the letters ‛P-A-R-K’ of the contested mark.
Therefore, the signs are similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs at issue overlap in the distinctive
element ‘METRO'’, 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.
Decision on Opposition No B 2 463 456 page: 14 of 16
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 relevant goods and services from the perspective of the public
in the relevant territory. Therefore, contrary to what the applicant argues, the
distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The applicant argues that its sign has reputation and filed various items of evidence
to substantiate this claim.
The right to a European Union trade mark begins on the date when the application
for such mark is filed and not before, and from that date on the mark has to be
examined with regard to opposition proceedings.
Therefore, when considering whether or not the European trade mark applied for falls
under any of the relative grounds for refusal, events or facts that happened before
the filing date of this mark are irrelevant because the rights of the opponent, insofar
as they predate the European trade mark applied for, are earlier than the applicant’s
mark.
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, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The services, found to be identical or similar to different degrees, are directed at the
public at large as well as at business customers and the degree of attention may vary
from average to higher than average. The signs are visually, aurally and conceptually
similar to an average degree in that the word element of the earlier mark, 'METRO',
is completely reproduced at the beginning of the word element that has more impact
on the consumer and plays an independent distinctive role in the contested sign.
The degree of distinctiveness of the earlier signs is one of the factors to be taken into
account in the overall assessment (11/11/1997, C-251/95, Sabèl, EU:C:1997:528,
§ 23) and in the present case, for reasons of economy of procedure it rests on their
distinctiveness per se. Therefore, it must be seen as normal.
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
Decision on Opposition No B 2 463 456 page: 15 of 16
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26). Even consumers who pay a high degree of attention need to rely on their
imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605,
§ 54).
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 highly conceivable that the relevant
consumer will perceive the contested mark as a sub-brand, a variation of the earlier
marks, configured in a different way according to the type of goods that they
designate (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It may well be that
the contested sign be perceived as a specific line of services.
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 European Union
trade mark registration No 779 116. 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
services found to be identical or similar to various degrees 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 services cannot be successful.
Since the opposition is partially 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 extensive use as claimed by the
opponent and in relation to identical and similar services. The result would be the
same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness
of the opposing mark in relation to dissimilar services, as the similarity of goods and
services is a sine qua non for there to be likelihood of confusion. The result would be
the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested services, both
parties have succeeded on some heads and failed on others. Consequently, each
party has to bear its own costs.
Decision on Opposition No B 2 463 456 page: 16 of 16
The Opposition Division
Benoit VLEMINCQ Martina GALLE Begoña URIARTE
VALIENTE
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.