OPPOSITION No B 2 633 272

Dinis Rodrigues, Av. Rei Humberto II de Italia, 7, 2750-461 Cascais, Portugal (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Fashion Hotel Hospitality Management Limited, Ingles Manor Castle Hill Avenue, CT20 2RD Folkestone, United Kingdom (applicant).

On 18/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 633 272 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 13 768 601 ‘FASHION HOTELS’ (word mark). The opposition is based on Spanish trade mark registration No 3 516 210 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The services

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

Class 43: Restaurant services (food); Temporary accommodation.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

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 advertising relates to services consisting of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The contested business management relates to services that are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The remaining services in Class 35, namely business administration and office functions include support with the operation of companies and carry out of the business or commercial activity. These are services related to the recording, copying, writing, composing or systematic ordering of written communications and records, as well as the compilation of mathematical or statistical data.

The services in Class 43 of the earlier mark mainly include services provided by people or companies to prepare food for consumption, as well as the provision of accommodation by hotels, apartment houses or other undertakings providing accommodation for guests.

The opponent argues that the contested services in Class 35 are in relation to the business of a hotel. However, this is not enough to justify a finding of similarity. The comparison of the goods and services is based on the specification and not on the possibility of the use of the trade mark on the market. The services serve completely different purposes; are neither in competition nor necessarily complementary. Moreover, they are addressed to different customers and have different distribution channels. They are not provided by the same undertaking. Therefore, they are considered dissimilar.

Contested services in Class 42

The contested services mainly include services related to theoretical and practical aspects of complex areas. They are also provided to members of professions such as chemists, physicists, engineers, programmers etc. The contested scientific, technological and industrial researches, investigations, evaluations, design and development of computer software and hardware do not have the same purpose as temporary accommodation and restaurant services. The relevant public and the usual providers of the services do not coincide. Furthermore, these services are not complementary and are neither in competition. Therefore, they are considered dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Plamen IVANOV

JUDIT NÉMETH

Elena NICOLAS GOMEZ

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.