OPPOSITION No B 2 526 963

Gran Chef, S.L., Comte d’Urgell, 230, 08036 Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Steigenberger Hotels AG, Lyoner Str. 40, 60528 Frankfurt, Germany (applicant), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative).

On 18/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 526 963 is upheld for all the contested services, namely:

Class 43: Services of hotels, restaurants and resorts; temporary accommodation; reservation of accommodation; providing information and advice in relation to the aforesaid services; all the aforesaid services also through electronic media amongst which the Internet.

2. European Union trade mark application No 13 722 401 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 722 401 for the figurative mark , namely against all the services in Class 43. The opposition is based on, inter alia, Spanish trade mark registration No 2 471 396 for the word mark ‘HOTEL JAZZ’. 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 Spanish trade mark registration No 2 471 396.

1. The services

The services on which the opposition is based are the following:

Class 43: Services for providing food and drink; temporary accommodation.

The contested services are the following:

Class 43: Services of hotels, restaurants and resorts; temporary accommodation; reservation of accommodation; providing information and advice in relation to the aforesaid services; all the aforesaid services also through electronic media amongst which the Internet.

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.

The contested temporary accommodation; all the aforesaid services also through electronic media amongst which the Internet is synonymous with the opponent’s temporary accommodation. Therefore, these services are identical.

The contested services of hotels and resorts; all the aforesaid services also through electronic media amongst which the Internet is a broad category that includes not just temporary accommodation but a range of other services too, such as restaurant services and provision of meeting facilities. The contested services therefore include the opponent’s temporary accommodation. Given that the broad category of the contested services cannot be dissected, the services under comparison are identical.

The contested providing information and advice in relation to the aforesaid services; all the aforesaid services also through electronic media amongst which the Internet are, strictly speaking, inherent in the previously compared services and therefore the finding of identity also applies to these services.

The contested reservation of accommodation; providing information and advice in relation to the aforesaid services (reservation of accommodation); all the aforesaid services also through electronic media amongst which the Internet are services that by their nature accompany and complement the opponent’s temporary accommodation. The services at issue have the same purpose (i.e. meeting consumer’s needs in terms of finding accommodation), target the same end user and coincide in distribution channels (e.g. travel agencies or the internet). Furthermore, as mentioned, they are complementary (the applicant’s services are important for the provision of the opponent’s services). Therefore, the services under comparison are highly similar.

The contested services of restaurants; providing information and advice in relation to the aforesaid services (services of restaurants); all the aforesaid services also through electronic media amongst which the Internet are included in the broader category of the opponent’s services for providing food and drink. Therefore, they 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, the services found to be identical or highly similar are directed at the public at large.

The degree of attention is considered average.

3. The signs

HOTEL JAZZ
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 consisting of two elements, ‘HOTEL’ and ‘JAZZ’, the first being a place for temporary accommodation, often with food and drink provided, and the second a musical genre. Both elements will be understood by the relevant Spanish public, as they are part of Spanish vocabulary. The element ‘HOTEL’ would be seen merely as an indication of the place where the services (providing food and drink and temporary accommodation) are rendered, and would therefore be non-distinctive. The element ‘JAZZ’ is likely to be perceived by the relevant public as the name of the place where the services are provided. Even if the combination of the two elements may suggest a ‘jazz-themed’ hotel, this perception would not endow the element with descriptive character in relation to the relevant services, contrary to the applicant’s arguments. Therefore, ‘JAZZ’ has no relation to the relevant services and would be the distinctive part of the mark.

The contested sign is a figurative mark consisting of the verbal elements ‘JAZ IN THE CITY’ depicted in lower case white letters in a slightly stylised, fanciful typeface against a purple background shape. The element ‘JAZ’, which does not exist as a word in the relevant territory, occupies a more prominent position in the sign than the element ‘IN THE CITY’, which appears underneath and, although not negligible in size, is significantly smaller. ‘JAZ’ is the dominant (i.e. visually outstanding) element in the contested sign — the element that makes an immediate impression and is remembered. As the element ‘JAZ’ has no meaning in relation to the relevant services (temporary accommodation, provision of food and drink and auxiliary services thereof), it is distinctive.

The English expression ‘IN THE CITY’ in the contested sign is not likely to be dissected by the relevant public into separate words due to, inter alia, its position in the sign (which suggests a short sentence in reference to the upper element ‘JAZ’). In this regard, it cannot be ruled out that a significant part of the relevant Spanish public may understand ‘IN THE CITY’, in particular as ‘the place where ‘JAZ’ is located’ (and the services rendered). This perception would be reinforced by the nature of the services at issue (all linked to travel, accommodation and tourism), in relation to which the use of English expressions is not uncommon. Consequently, the element ‘IN THE CITY’ would be less distinctive than the element ‘JAZ’ in relation to the relevant services for a significant part of the public.

Finally, the background shape in the contested sign is of a purely decorative nature; it does not convey any particular meaning and its distinctiveness is considered rather limited.

It follows that the element ‘JAZ’ is the most distinctive element in the contested sign.

As the applicant notes, part of the public will probably pronounce the element ‘JAZ’ as /xaθ/. It cannot, however, be excluded that, because jazz music is known in the relevant territory, a significant part of the relevant public will perceive the dominant and most distinctive element in the contested sign as a misspelled word, thus associating it with the meaning and sound of the distinctive element ‘JAZZ’ of the earlier mark. This argument is underpinned by the presence of the English expression ‘IN THE CITY’, which reinforces an overall perception of an English context. Furthermore, the expression ‘jazz in the city’ is not uncommon in reference to concerts and events related to jazz music. Taking the above into account, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that would associate the dominant and most distinctive element of the contested sign (‘JAZ’) with the meaning and sound of the distinctive element of the earlier mark (‘JAZZ’).

Visually and aurally, the signs coincide in the sequence of letters ‘JAZ’, which forms the dominant and most distinctive element of the contested sign and almost the entire distinctive element of the earlier mark. The signs differ in the last letter, ‘Z’, of the distinctive element ‘JAZZ’ and the (non-distinctive) element ‘HOTEL’ (and the sound of it) of the earlier mark. They also differ in the non-dominant and less-distinctive element ‘IN THE CITY’ (and the sound of it), the slight stylisation of the typeface, the background shape and colours of the contested sign. For the reasons given above, the relevant public will probably perceive and pronounce the dominant and most distinctive element of the contested sign in the same way as the distinctive element of the earlier mark (i.e. /dʒas/).

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As the signs will be associated with the meaning ‘jazz’, as explained above, 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.

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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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).

Furthermore, 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.

In the present case, the services are partly identical and partly highly similar. The signs are visually, aurally and conceptually similar to an average degree. The earlier mark has a normal degree of distinctiveness. Furthermore, the relevant public is the general public, which is, usually, more prone to confusion.

Considering all the above, there is a likelihood of confusion on the part of the public that associates the dominant and most distinctive element, ‘JAZ’, in the contested sign with the meaning of the distinctive element, ‘JAZZ’, of the earlier mark. There is no need to establish that all actual or potential consumers of the relevant services are likely to be confused. If a significant part of the relevant public for the relevant services may be confused about the origin of the services (as is the case here), that is sufficient.

In its observations, the applicant refers to various examples of case-law in support of its arguments for the dissimilarity of the signs, the reasoning and outcomes of which have been considered. In this regard, the Opposition Division notes that the cases referred to by the applicant emphasise correlations between the elements in dispute that are different from those in the present case, for instance concerning the interpretation of dominant/distinctive elements or assessment of word marks versus figurative marks. Reference is made to the comparison of the signs above, which extensively illustrates the issues concerning dominance and distinctiveness. Consequently, the applicant’s arguments in this regard must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 471 396. It follows that the contested trade mark must be rejected for all the contested services.

As earlier Spanish trade mark registration No 2 471 396 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent, namely Spanish trade mark registration No 3 506 101 for the word mark ‘JAZZ CUB’ (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Irina SOTIROVA

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.