Senses hotels | Decision 2702069
Date Published: Oct 11, 2017
OPPOSITION No B 2 702 069
Slc Sustainable Luxury Cyprus Limited, 2-4 Arch. Makarios III Ave. Capital Center, 9th Floor, 1065 Nicosia, Cyprus (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Escala Project S.L., Calle Apuntadores 34 Entlo, 07012 Palma de Mallorca, Spain (applicant).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 702 069 is upheld for all the contested services.
2. European Union trade mark application No 15 005 937 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of European Union trade mark application No 15 005 937. The opposition is based on European Union trade mark registration No 2 812 113. 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 services
The services on which the opposition is based are the following:
Class 41: Publishing of books, magazines and newspapers; online publication of electronic books and journals, Internet libraries; services and management of health centres, fitness clubs; spas, swimming baths, swimming pools, saunas; all aforesaid services solely in connection with the operation of resorts, hotels and spas.
Class 43: Services for providing food and drink, in particular operation of health bars, food bars, health snack bars, healthy juice bars and restaurants of this type; providing hotel reservations, temporary accommodation.
Class 44: Medical, hygienic and beauty care for human beings, in particular the operation and management of beauty salons.
The contested services are the following:
Class 41: Tuition; Education, entertainment and sports; Sporting and cultural activities; Performance of dance, music and drama; Training.
Class 43: Restaurants; Temporary accommodation; Hotel reservations; Resort hotel services.
Class 44: Hygienic and beauty care; Tanning salons; Solarium services; Services for the provision of sauna facilities; Turkish baths; Health spa services; Massage; Hydrotherapy; Physical therapy.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested services in Class 41
Tuition; Education; Training; entertainment; cultural activities; Performance of dance, music and drama are similar to a low degree to online publication of electronic books and journals; all aforesaid services solely in connection with the operation of resorts, hotels and spas as they can coincide in user and distribution channels. Furthermore they are complementary.
Sports; Sporting are similar to a low degree to swimming baths, swimming pools; all aforesaid services solely in connection with the operation of resorts, hotels and spas as they can coincide in user and distribution channels. Furthermore they are complementary.
Contested services in Class 43
The contested Restaurants are included in the broad category of the opponent’s Services for providing food and drink, in particular operation of health bars, food bars, health snack bars, healthy juice bars and restaurants of this type. Therefore, they are identical.
Temporary accommodation; Hotel reservations are identically contained in both lists of services.
The contested Resort hotel services are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.
Contested services in Class 44
Hygienic and beauty care are identically contained in both lists of services.
The contested Tanning salons; Solarium services; Services for the provision of sauna facilities; Turkish baths; Health spa services; Massage are included in the broad categories of, or overlap with the opponent’s hygienic and beauty care for human beings. Therefore, they are identical.
The contested Hydrotherapy; Physical therapy are included in the broad category of, or overlap with, the opponent’s Medical care for human beings. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention is ranges from average to higher than average (the latter for medical therapeutic services).
- The signs
Earlier trade mark
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a distinctive word mark. The word SIX refers to a numeral, while the element SENSES refers to ‘physical abilities of sight, smell hearing, touch and taste’ (Collins English Dictionary).
The contested mark is a figurative mark containing word elements in a slightly stylised blue typeface. The element SENSES has the same meaning as described above.
The element ‘hotels’ of the contested sign will be understood as ‘an establishment providing lodging, meals, and various services such as beauty care, spa and entertainment services’. Bearing in mind that the relevant services are all related to hotels, entertainment, and spas, this element is weak for all the services of the mark. The mark has no dominant elements.
When signs consist of both verbal and figurative components, as the contested mark, then 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).
Visually, the signs coincide in that they both contain the word SENSES. However, they differ in the slight stylisation of that word in the contested sign, although, it has to be noted, that since the earlier mark is a word mark, then it is the word that is protected and not its written form. The marks further differ in the word SIX in the earlier mark and in the weak element HOTELS in the contested mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables SEN-SES, present identically in both signs. The pronunciation differs in the syllable SIX and in the pronunciation of the syllables HO-TELS (of the weak element).
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in respect of the element SENSES, 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.
- 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.
- Global assessment, other arguments and conclusion
The services have been found partially identical and partially similar to a low degree. The visual, aural and conceptual aspects have been examined.
The earlier sign and the contested sign have been found to be similar to the extent that they have the element SENSES in common, constituting the only distinctive element in the contested mark and the second word element in the earlier mark. The additional elements that can be pronounced do not have a decisive differentiating effect. The word ‘hotel’ was found weak. Although the general rule that the public tends to pay particular attention to the first part of the trade mark is not being disregarded in the present case, the differences between the signs, even if to some extent placed at the beginnings of them, cannot outweigh the prevailing coinciding elements perceived by the English-speaking part of the public. The slight differences in stylisation are not noticed.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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).
Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least a part of the public to believe that the conflicting services which are identical, come from the same or economically linked undertakings. The same applies to services found similar to a low degree, since the signs are sufficiently similar.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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 2 812 113. It follows that the contested trade mark must be rejected for all the contested services.
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
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.