DECISION

of the Second Board of Appeal

of 20 March 2019

In case R 1581/2018-2

Steigenberger Hotels AG
Lyoner Str. 33 60528 Frankfurt Germany	Applicant / Appellant

represented by Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany

v

Gran Chef, S.L.
Comte d'Urgell, 230 08036 Barcelona Spain	Opponent / Defendant

represented by Jordi Güell Serra, Av. Diagonal 622, 3º, 08021 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 526 963 (European Union trade mark application No 13 722 401)

The Second Board of Appeal

composed of S. Stürmann (Chairperson and Rapporteur), H. Salmi (Member) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 9 February 2015, Steigenberger Hotels AG (‘the applicant’) sought to register the figurative mark

for the following list of goods and services as limited on 3 June 2015:

Class 33 - Alcoholic beverages (except beers);

Class 39 - Transport of goods and persons; services of a touroperator; services of a travel agency; organizing, carrying out and arranging of journeys, cruises, excursions and guided tours; escorting travellers; organizing, carrying out and arranging of business, group and holiday journeys; rental of cars and other transporting vehicles; reservation of transport; providing information with respect to transport and travelling; advice in relation to travelling; packaging and storage of goods;

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 applicant claimed the colours:

Purple (pantone: 2597C) and white.

2. The application was published on 13 March 2015.

3. On 25 May 2015, Gran Chef, S.L. (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the 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.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

• Spanish trade mark registration No 2 471 396, ‘HOTEL JAZZ’

filed on 22 April 2002 and registered on 7 October 2002 for the following services:

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

• Spanish trade mark registration No 3 506 101, ‘JAZZ CLUB’

filed on 8 April 2014 and registered on 1 September 2014 for the following services:

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

6. By decision of 18 July 2018 (‘the contested decision’), the Opposition Division refused the trade mark applied for, for all of the contested services. It gave, in particular, the following grounds for its decision:

• The opposition is based on more than one earlier trade mark. It is appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 471 396.

• 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, target the same end user and coincide in distribution channels. Furthermore, they are complementary. 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.

• The services found to be identical or highly similar are directed at the public at large. Their degree of attention is considered average. The relevant territory is Spain.

• The signs are visually, aurally and conceptually similar to an average degree. 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.

• 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.

7. On 14 August 2018, the applicant filed an appeal against the contested decision The statement of grounds of the appeal was received on 15 November 2018.

8. On 7 January 2019, the opponent filed a request to appoint Jordi Güell Serra as its new legal representative, replacing its current representatives, Curell Suñol SLP. The request was accepted and confirmed by the Office on the same day.

9. In its response received on 15 January 2019, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

• The contested services in Class 43 are partially identical and partially similar to the services of the earlier mark registered in the same class. However, due to the other circumstances that have to be taken into account, this does not result in a likelihood of confusion.

• The Opposition Division incorrectly assessed the similarity between the conflicting marks, as there is no similarity between them.

• The contested mark is a figurative mark consisting of four words ‘Jaz in the city’ in white characters that are arranged vertically and characterised by the overlong character ‘J’ and an elision within the character ‘A’, all depicted in a purple square, whereas the earlier mark is a word mark, consisting of two words ‘HOTEL JAZZ’. The colour purple is used extensively in the contested mark and will catch the consumer’s eye.

• The different ways in which the marks are represented differentiates the conflicting marks significantly. The same applies to the word elements, as none of their components are identical.

• If the combination of the two elements of the earlier mark may suggest a ‘jazz-themed’ hotel, it means that ‘JAZZ’ has a relationship with the relevant services.

• The element ‘JAZZ’ of the earlier mark contains a double ‘ZZ’, whereas there is only one ‘Z’ in the element ‘Jaz’ of the contested mark, which is a remarkable distinction. The relevant public will not associate ‘Jaz’ with the music genre. Rather it is understood as an imaginary term, because it does not exist in Spanish.

• The relevant public will not assume that the name of a hotel or resort, which is placed in huge letters on the outside of a building, has a spelling error. The same applies to flyers for the hotel and its website etc.

• ‘HOTEL’ shows a direct and specific relationship to the registered services immediately enabling the public concerned to perceive, without further thought, a description of the services in question or of one of their characteristics.

• The extensive use of the colour purple in the contested mark and its imaginative font clearly shows that the conflicting marks are not visually similar. The applicant refers to its observation from 19 January 2018.

• The conflicting marks are not phonetically similar. The applicant refers to its observations from 19 January 2018.

• Contrary to the contested decision’s finding, there is no conceptual similarity, since the Opposition Division’s argument, that the consumer might perceive the contested mark as a misspelling of the word ‘JAZZ’ is not based on any evidence and therefore lacks substance. It is highly unlikely that a consumer would perceive a logo as being misspelt, as the consumer is well aware of the fact that a company would check a logo multiple times before publishing it to ensure that there are no spelling errors in it.

• As the contested mark is a figurative mark and the earlier mark a word mark, this already distinguishes both trade marks conceptually. The two word components of the earlier trade mark have different meanings. ‘HOTEL’ describes an establishment providing accommodation, meals, and other services for travellers and tourists. ‘JAZZ’ on the other hand is the designation of a music genre. The element ‘Jaz’ of the contested mark has no meaning. The word elements ‘in’, ‘the’ and ‘city’ have no relationship with the earlier mark and besides ‘in the city’ is an abstract geographical description. The trade marks are therefore conceptually dissimilar.

• The earlier marks ‘HOTEL JAZZ’ and ‘JAZZ CLUB’ have a low degree of distinctiveness.

• The earlier trade mark ‘HOTEL JAZZ’ consists of two descriptive elements reducing its level of distinctiveness remarkably to below average. Thus, it can only enjoy a very restricted scope of protection. The same applies to the earlier trade mark ‘JAZZ CLUB’ as the component ‘CLUB’ is also not suitable to provide the trade mark with a considerable level of distinctiveness.

• There is only a very low degree of similarity between the conflicting signs and the earlier trade marks only possess a restricted degree of distinctiveness. Therefore a likelihood of confusion cannot be determined.

11. The arguments raised in the observations may be summarised as follows:

• The opponent disagrees with the applicant’s arguments and submits that the conflicting marks are confusingly similar: the distinctive and dominant element of both marks is the element ‘JAZZ / Jaz’, the services at stake are identical, the earlier marks are distinctive and there is indeed a likelihood of confusion on the part of the public.

• The Opposition Division correctly held that the contested services in Class 43 were identical to the opponent’s services in the same class.

• The element ‘Jaz’ of the contested mark is dominant as it is visually outstanding. The word elements ‘in the city’ are written in smaller sized letters, can hardly be noticed and are likely to be disregarded by the relevant public.

• As for the earlier mark ‘HOTEL JAZZ’ the distinctive and dominant part of the mark is the element ‘JAZZ’ as the element ‘HOTEL’ is descriptive for the services covered by it.

• The fact that the contested mark is represented in stylised lettering on a purple background does not offset the existing similarities and does not invalidate the contested decision's finding that the marks at stake are similar overall. The purple background and the stylisation of the letters are rather decorative and play a secondary role in the comparison. The figurative elements of the contested mark are not particularly distinctive, striking or eye-catching. The typescript used for the element ‘Jaz’ is not particularly original or unusual and it will be clearly perceived in the mark.

• The Opposition Division correctly found that the conflicting marks were visually similar to an average degree.

• The words ‘in the city’ of the contested mark are hardly visible and will not be pronounced.

• The fact that the earlier trade mark contains the word ‘HOTEL’ increases the likelihood of confusing between ‘HOTEL JAZZ’ and ‘Jaz’ for hotel services.

• The terms ‘Jaz’ and ‘JAZZ’ will not be pronounced differently in Spain. Spain is one of the countries in Europe where the population has less knowledge of English. As the Opposition Division correctly stated, a significant part of the relevant public will perceive the dominant and most distinctive element in the contested sign as a misspelt word, thus associating it with the meaning and sound of the distinctive element ‘JAZZ’ of the earlier mark. The many coincident elements render the marks similar also from an aural point of view.

• Taking into account that the marks have as their distinctive and dominant element the terms ‘Jaz’ / ‘JAZZ’, which both evoke similar concepts in the minds of the relevant public, the signs are conceptually similar to an average degree.

• There are several factors that reinforce the degree of overall similarity between the marks, in particular: the shared part ‘JAZZ’ / ‘Jaz’ is distinctive, as it does not describe any of the characteristics of the services concerned; the identity in pronunciation and almost identical spelling between the dominant elements ‘JAZZ’ and ‘Jaz’ and the identity of the services covered by both marks.

Reasons

12. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

13. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

14. Although in the notice of appeal the applicant ticked the box ‘decision contested in part’, in the box ‘specify to what extent’ the applicant listed the full list of Class 43 services: ‘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’ on which the opposition was based and the contested mark refused. Furthermore, in its statement of grounds, the applicant explicitly stated that ‘the contested decision should be reversed in its entirety’ (page 8, D. Conclusion). It follows that the contested decision is appealed in its entirety.

Preliminary remarks

15. On 7 January 2019, the opponent filed a request to appoint Jordi Güell Serra as its new legal representative, replacing its current representative, Curell Suñol SLP. The request was accepted and confirmed by the Office on the same day. As a result, as of 7 January 2019, Jordi Güell Serra is the opponent’s newly authorised legal representative.

16. Hence, as correctly raised and addressed by the applicant in its letter of 24 January 2019, the observations filed on 8 January 2019 by Curell Suñol SLP should not be taken into account as Curell Suñol SLP are no longer authorised to represent the opponent.

17. Instead, only the observations (and arguments raised therein) which were filed on 15 January 2019 (within the set deadline) by Jordi Güell Serra, the opponent’s newly appointed legal representative, will be considered and referred to by the Board in respect of this appeal.

On Article 8(1)(b) EUTMR

18. In accordance with Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its similarity to the earlier trade mark and the identity or similarity of the goods covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. A likelihood of confusion includes a likelihood of association with the earlier trade mark.

19. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16, 18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

20. It is clear from that provision that a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered by the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (12/10/2004, C-106/03, Hubert, EU:C:2004:611, § 51).

21. The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarities between 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22-24).

22. The Opposition Division assessed the opposition on the basis of Spanish trade mark registration No 2 471 396, ‘HOTEL JAZZ’. The Board will follow the Opposition Division’s approach and will initially focus its assessment on that earlier mark.

Relevant territory/Relevant public

23. The average consumer, who is reasonably well informed and reasonably observant and circumspect, normally perceives a mark as a whole and does not proceed to analyse its various details (28/06/2005, T‑301/03, Canal Jean, EU:T:2005:254, § 50).

24. However, the average consumer’s level of attention is likely to vary according to the category of goods and services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein).

25. The Opposition Division correctly held that the services at issue were aimed at the general public with an average level of attention. The parties did not contest these findings.

Comparison of the services

26. In the contested decision, the services applied for in Class 43, were found partially identical and partially highly similar to the services covered by the earlier mark in the same class.

27. The Board endorses those findings which have not been challenged by the applicant.

Comparison of the marks

28. The likelihood of confusion must be determined by means of a global appraisal of the visual, aural and conceptual similarities between the marks, on the basis of 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).

29. The signs to be compared are:

    	HOTEL JAZZ
    Contested sign	Earlier sign

30. The earlier mark is a word mark consisting of the words ‘HOTEL’ and ‘JAZZ’ depicted in standard upper-case letters. It has not been contested that the distinctiveness of the element ‘HOTEL’ is weak in relation to the relevant Class 43 services, because it describes the place where the services in question are offered (01/03/2018, T‑438/16, CIPRIANI / HOTEL CIPRIANI et al., EU:T:2018:110, § 63; 08/11/2016, T‑579/15, fortune (fig.) / FORTUNE-HOTELS, EU:T:2016:644, § 41). The word element ‘JAZZ’ (1. m. Género de música derivado de ritmos y melodías afronorteamericanos; https://dle.rae.es/?id=MOox3ni), which designates a musical genre, might be perceived by the relevant public as the name of the place where the services are provided. As correctly mentioned by the Opposition Division even if the combination of the two elements may suggest a ‘jazz-themed’ hotel and may be somewhat allusive, this perception would not endow the element with descriptive character in relation to the relevant services. Therefore, ‘JAZZ’ does not directly describe any characteristics of the relevant services and is distinctive. The non-distinctive element ‘HOTEL’, which merely qualifies the element ‘JAZZ’ will have less of an impact when it comes to assessing the likelihood of confusion between the trade marks in question.

31. The contested mark is a figurative sign composed of the word element ‘Jaz’ depicted in slightly stylised white letters in the middle of a purple square. Beneath are depicted the word elements ‘in the city’, written in rather smaller and standard white lower-case letters. It must be noted that, the element ‘Jaz’, which has no meaning for the Spanish relevant public, is the largest element in size, is very visible due to its white colour on a purple background and due to its position in the middle of the sign. It is the most eye-catching and the first word that will be read when one sees the mark, as the other word elements ‘in the city’ only occupy a negligible portion of the mark and will be overlooked. The word elements ‘in the city’ have no meaning in Spanish as they are depicted in English. However, as correctly assessed by the Opposition Division, it cannot be ruled out that a significant part of the relevant Spanish public may understand basic English words ‘in the city’, as ‘the place where “Jaz” is located’ (and the services rendered). Consequently, the element ‘in the city’ is less distinctive than the element ‘Jaz’ in relation to the relevant services for a significant part of the relevant public. Moreover, according to established case-law, it is rather unlikely that the public will pronounce these word elements since consumers tend to shorten signs and only refer to the dominant elements in the trade mark (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 02/02/2011, T-437/09, Oyster cosmetics, EU:T:2011:23, § 44; 31/01/2012, T‑205/10, La victoria de México, EU:T:2012:36, § 69).

32. As the applicant notes, part of the public will probably pronounce the element ‘Jaz’ as /xaθ/. However, as correctly assessed by the Opposition Division it cannot be excluded that, because jazz music is known in Spain, and jazz is also written as ‘yaz’ in Spanish (‘yaz’ – m. jazz; Diccionario de la lengua española © 2005 Espasa-Calpe), a significant part of the relevant public will associate the dominant and most distinctive element of the contested sign with the meaning and sound of the distinctive element ‘JAZZ’ of the earlier mark.

33. Moreover, the figurative part of the mark only plays a secondary role in the comparison of the signs, as relevant consumers will perceive it primarily as it being decorative. Where a sign is composed of verbal and figurative elements, the former is, in principle, more distinctive than the latter, because the relevant public will more easily refer to the goods and services in question by quoting their name than by describing the figurative element of the trade mark (14/07/2005, T‑312/03, Selenium-Act, EU:T:2005:289, § 37; 31/01/2012, T-205/10, La Victoria de Mexico, EU:T:2012:36, § 38).

34. The relevant public will, therefore, remember and recall the contested mark on the basis of its word element ‘Jaz’ (see by analogy 12/09/2018, T-112/17, NEW ORLEANS PELICANS (fig.) / Pelikan et al., EU:T:2018:528, § 31, 52; 16/09/2013, T‑569/11, Gitana, EU:T:2013:462, § 56; 06/09/2013, T-349/12, Revaro, EU:T:2013:412, § 23).

35. Taking the above considerations into account, the signs will be compared, each one taken as a whole, from a visual, aural and conceptual point of view.

36. It is recalled that since the earlier mark has been registered as a word mark, it is irrelevant if it is represented in upper- or lower-case letters, as only the word as such is protected, regardless of any graphic form used or of whether the mark is written in lower- or upper-case letters (27/01/2010, T-331/08, Solfrutta, EU:T:2010:23, § 16).

37. Visually the marks are similar to the extent that the dominant and most distinctive element ‘Jaz’ of the contested sign is fully incorporated in the earlier mark. They differ in double ‘ZZ’ present in the earlier mark, compared to one ‘Z’ in the contested mark and the second word element ‘HOTEL’ of the earlier mark which is non-distinctive. They also differ in the word elements ‘in the city’ of the contested sign, which only occupy a negligible, secondary portion of the mark and will be overlooked (12/09/2018, T-112/17, NEW ORLEANS PELICANS (fig.) / Pelikan et al., EU:T:2018:528, § 52) and the slight stylisation of the typeface, the background shape and colours of the contested sign which are purely decorative. Overall, there is a certain degree of visual similarity, which is lower than average but not insignificant.

38. The same arguments apply when comparing the marks phonetically. Aurally, the pronunciation of the signs coincides in the sound of the dominant elements ‘Jaz / JAZZ’, present in both signs. The pronunciation differs in the first element ‘HOTEL’ of the earlier mark which, however, is non-distinctive, and the sound of the elements ‘in the city’ which will be neglected due to the reasons discussed at paragraph 30 above. Therefore, the signs are aurally similar to an average degree.

39. Although the element ‘Jaz’, strictly speaking has no meaning in Spanish, it is likely that a significant part of the Spanish public will associate the element ‘Jaz’ of the contested mark with the meaning of the distinctive element ‘JAZZ’ of the earlier trade mark, as explained above, and for them the signs might be conceptually similar to that extent.

Distinctive character of the earlier mark

40. The assessment of a likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question.

41. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 96 and the case-law cited).

42. The applicant argues that the earlier trade mark ‘HOTEL JAZZ’ has a low degree of distinctive character given that it consists of two descriptive elements reducing its distinctiveness remarkably below average. However, the Board does not agree with this argument.

43. As mentioned above at paragraph 30 the mark may be somewhat allusive. However, the Board stresses that the earlier mark is validly registered as a Spanish trade mark. This validity cannot be called into question in the context of proceedings which merely concerns the likelihood of confusion (be it an opposition or cancellation proceedings before the Office) (23/04/2013, T‑109/11, Endurace, EU:T:2013:211, § 80). Therefore, as also correctly pointed out by the Opposition Division, the mark has at least a minimum degree of distinctiveness in the relevant territory (15/07/2014, T-576/12, Protekt, EU:T:2014:667, § 56-58 and case-law cited therein).

44. It is true that the element ‘HOTEL’ of the earlier mark is weak and non-distinctive in relation to the contested services. However, the element ‘JAZZ’ as discussed above has no relationship with the relevant services and would be the distinctive part of the mark.

45. The mere fact that a word is commonly used and its meaning commonly known by the relevant public does not mean that as a trade mark it therefore has a below average degree of distinctiveness. Apart from the perception of the relevant public, the distinctive character of a sign or component thereof has to be assessed in light of the goods or services applied for or registered (15/11/2017, R 2448/2016-2, Servus Hotels (fig.) / SERVUS et al.. § 43). Therefore, this allegation as made by the applicant fails.

46. Moreover, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and between the goods or services covered (27/09/2018, T-449/17, SEVENFRIDAY, EU:T:2018:612, § 84 and the case-law cited therein).

47. Finally, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

48. In light of the foregoing, the earlier mark has, at least, a normal degree of
    distinctiveness in relation to the services at issue.

Overall assessment of a likelihood of confusion

49. Within the scope of the global consideration of all factors relevant to the circumstances of the case in assessing the likelihood of confusion, some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services designated by them, must be taken into consideration. Accordingly, a low degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

50. As already established, the relevant public consists of the public at large with an average degree of attention.

51. For the relevant Spanish-speaking public, the conflicting signs are visually similar to at least a low degree and aurally similar to an average degree. For a part of the relevant public the conflicting marks are conceptually similar to the extent that the element ‘Jaz’ of the contested mark might be perceived as ‘JAZZ’. For the rest of the relevant public, the conflicting marks are not conceptually similar. The dominant element ‘Jaz’ of the contested mark is almost identical to the dominant element of the earlier mark.

52. Keeping in mind that consumers usually tend to focus on similarities rather than on differences, the existing difference in the letter ‘-Z’ positioned at the end of the dominant element of the earlier sign, as well as the less distinctive word elements and the decorative differences that originate from the contested sign’s figurative elements, are not enough to overcome their similar overall impressions. When compared as a whole, the differences between the signs are not sufficient to counteract the similarities between them; therefore the signs are similar.

53. In light of all the foregoing, taking also into account the principles of interdependence and the imperfect recollection of the public at issue, there is reason to assume that the relevant public may be misled into thinking that the identical or similar services bearing the conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked. In particular, the Spanish public may legitimately believe that the contested mark, is a new version or a brand variation of the earlier mark, originating from the same undertaking or from economically-linked undertakings.

54. The outcome of this decision is in line with the Office’s and Courts’ practice. The Courts and the Boards of Appeal also have, on numerous occasions, found that there is a likelihood of confusion between trade marks that consist of additional weak elements namely:

• 01/03/2018, T‑438/16, CIPRIANI / HOTEL CIPRIANI et al., EU:T:2018:110;

• 08/11/2016, T‑579/15, fortune (fig.) / FORTUNE-HOTELS, EU:T:2016:644;

• 15/11/2017, R 2448/2016-2, Servus Hotels (fig.) / SERVUS et al.;

• 14/12/2018, R 1317/2018-5, PURO HOTELS (fig.) / Purobeach (fig.) et al.;

• 18/05/2018, R 2482/2017-5, ICON HOTELES / IKONIK HOTELS.

55. It follows from the above that the appeal has to be dismissed.

Other earlier trade mark

56. As earlier Spanish trade mark registration No 2 471 396 for the word mark ‘HOTEL JAZZ’ already leads to the rejection of the contested trade mark for all the contested services, there is no need to examine the other earlier right invoked by the opponent under Article 8(1)(b) EUTMR.

Costs

57. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

58. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

59. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the opposition fee of EUR 350 and the opponent’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 200.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the applicant in the opposition and appeal proceedings is EUR 1 200.

Signed S. Stürmann

Signed H. Salmi

Signed A. Szanyi Felkl

Registrar: Signed H. Dijkema