OPPOSITION No B 2 725 961

Starwood Hotels & Resorts Worldwide, LLC, 10400 Ferwood Road, Dept. 955.23, 20817 Bethesda, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Wonderbox, 34 avenue des Champs-Elysées, 75008 Paris, France (applicant), represented by Strato-IP, 63 boulevard de Ménilmontant, 75011 Paris, France (professional representative).

On 25/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 725 961 is partially upheld, namely for the following contested services:

Class 36: Issuance of tokens of value; Provision of credit cards; Issuing of vouchers for the purchase of goods and/or services; Issuing of vouchers for commercial or promotional purposes that can be exchanged for goods and/or services; Insurance; Financial affairs; Monetary affairs; Real estate affairs; Saving banks; Home banking; Issuance of travelers' checks; Real-estate valuations; Property (Real estate -) management; Arranging the provision of finance; Financial analysis; Mutual funds and capital investments; Financial consulting; Financial evaluations (insurance, banking, real estate); Fund investments; Real estate agency; Rental of apartments; Debit card services; Card services; Issuance of travelers' checks; Mutual funds; Insurance consultancy; Insurance brokerage; Real estate brokerage; Deposit of valuables; Real-estate valuations; Financial management of reimbursement payments for others; Financial management; Providing financial information via a web site; Financial information; Insurance information; Clearing-houses, financial; Currency trading and exchange services; Medical insurance underwriting; Insurance underwriting; Travel insurance underwriting; Accident insurance underwriting; Electronic transfer of funds; Verification (Check [cheque] -); Issue of gift tokens; issuance of gift cards; Issuing of cards used as means of payment; Issuing of transport vouchers; Issuing of tokens of value to be exchanged for goods and/or services; Financial services in connection with the issuing of gift certificates or gift vouchers; Issuing of prepaid chip, encoded or magnetic cards; Issuing of gift vouchers for promotional or commercial purposes.

Class 43: Services for providing food and drink; Temporary accommodation; Bar services; Catering; Hotel services; Room reservation services; Providing campground facilities; Day-nurseries [crèches]; Retirement homes; Boarding for animals; Accommodation bureaux [hotels, boarding houses]; Cafeterias; Snack-bars; Self-service restaurants; Self-service restaurants; Holiday camp services [lodging]; Rental of temporary accommodation; Tourist homes; Motels; Animal boarding; Boarding houses; Boarding house bookings; Hotel reservations; Rental of meeting rooms; Hire of pavilions.

2. European Union trade mark application No 14 980 908 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 980 908 for the figurative mark , namely against all the services in Classes 36, 41, 43 and 45. The opposition is based on Benelux trade mark registration No 923 538 and European Union trade mark registration No 6 490 502, both for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION OF BENELUX TRADE MARK REGISTRATION NO 923 538

The adversarial part in the present opposition proceedings commenced before 01/10/2017. In accordance with Article 82 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, the provisions of Commission Regulation No 2868/95 of 13 December 1995 regarding substantiation and examination of the opposition (Rule 19 and 20) continue to be applicable to the present case.

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).

According to Rule 19(3) EUTMIR (in the version in force at the time of commencement of the adversarial part), the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier Benelux trade mark on which the opposition is based.

On 07/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material, namely until 12/11/2016 (Saturday) and, therefore, the substantiation time limit expired on the first working day thereafter, namely on 14/11/2016.

In order to substantiate its Benelux trade mark registration, the opponent submitted within the substantiation time limit an extract from the Benelux trade mark register as well as a document entitled ‘Hits Overview’ with information with regard to the earlier national trade mark registration.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier national trade mark.

The extract from the Benelux trade mark register does not contain all the necessary elements; in particular it does not contain a representation of the earlier figurative mark. Moreover, the said extract contains relevant information that has not been translated into the language of the proceedings, namely the entries under the two headings ‘Status’.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the part of the evidence filed by the opponent without a translation into the language of the proceedings cannot be taken into account.

The further document submitted by the opponent entitled ‘Hits Overview’ cannot be taken into account for the purposes of substantiating the earlier Benelux trade mark because it is of unknown origin and does not stem from a database of an official nature.

Furthermore, this document can neither be considered to be a valid translation of the print out from the Benelux database because it does not reproduce the structure and contents of the original document.

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 mark. The examination of the opposition will proceed on the basis of the other earlier right invoked by the opponent, namely European Union trade mark registration No 6 490 502.

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 36: Real estate services, namely, real estate brokerage, real estate and land acquisition, real estate equity sharing, namely, managing and arranging for ownership of real estate, condominiums, apartments; real estate investment, real estate management, real estate time sharing and leasing of real estate and real property, including condominiums and apartments.

Class 37: Building construction; repair; installation services.

Class 39: Transport; packaging and storage of goods; travel arrangement.

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

The contested services are the following:

Class 36: Issuance of tokens of value; Provision of credit cards; Issuing of vouchers for the purchase of goods and/or services; Issuing of vouchers for commercial or promotional purposes that can be exchanged for goods and/or services; Insurance; Financial affairs; Monetary affairs; Real estate affairs; Saving banks; Home banking; Issuance of travelers' checks; Real-estate valuations; Property (Real estate -) management; Arranging the provision of finance; Financial analysis; Mutual funds and capital investments; Financial consulting; Financial evaluations (insurance, banking, real estate); Fund investments; Real estate agency; Rental of apartments; Debit card services; Card services; Issuance of travelers' checks; Mutual funds; Insurance consultancy; Insurance brokerage; Real estate brokerage; Deposit of valuables; Real-estate valuations; Financial management of reimbursement payments for others; Financial management; Providing financial information via a web site; Financial information; Insurance information; Clearing-houses, financial; Currency trading and exchange services; Medical insurance underwriting; Insurance underwriting; Travel insurance underwriting; Accident insurance underwriting; Electronic transfer of funds; Verification (Check [cheque] -); Issue of gift tokens; issuance of gift cards; Issuing of cards used as means of payment; Issuing of transport vouchers; Issuing of tokens of value to be exchanged for goods and/or services; Financial services in connection with the issuing of gift certificates or gift vouchers; Issuing of prepaid chip, encoded or magnetic cards; Issuing of gift vouchers for promotional or commercial purposes.

Class 41: Entertainment; Sporting and cultural activities; Education or entertainment information; Leisure facilities; Organization of competitions education or entertainment; Organization of exhibitions for cultural or educational purposes; Booking of seats for shows; Education; Providing of training; Publication of books; Library services; Videotape production; Rental of motion pictures; Rental of sound recordings; Rental of stage scenery; Videotape editing; Photography; Game services provided on-line from a computer network; Gaming; Publication of electronic books and journals on-line; Electronic desktop publishing; Entertainer services; Organization of balls; Rental of videotapes; Ticket agency services [entertainment]; Night clubs; Rental of video cameras; Sport camp services; Camp services (Holiday -) [entertainment]; Casino facilities [gambling] (Providing -); Circuses; Health club services [health and fitness training]; Club services [entertainment or education]; Coaching [training]; Arranging and conducting of colloquiums, conferences, seminars and congresses; Organisation of sports competitions; Arranging and conducting of concerts; Arranging of beauty contests; Conducting fitness classes; Rental of tennis courts; Rental of audio equipment; Rental of stage scenery; Organisation of fashion shows for entertainment purposes; Disc jockey services; Discotheque services; Physical education; Videotaping; Gymnastic instruction; Rental of sports equipment, except vehicles; Rental of skin diving equipment; Providing karaoke services; Training (Practical -) [demonstration]; Recreation information; Providing sports facilities; Recreation facilities (Providing -); Language interpreter services; Zoological garden services; Providing on-line videos, not downloadable; Providing on-line music, not downloadable; Games equipment rental and Playthings; Microfilming; Museum facilities (Providing -) [presentation, exhibitions]; Music-halls; Production of music; Orchestra services; Workshops (Arranging and conducting of -) [training]; Golf facilities (Providing -); Amusement parks; Planning (Party -) [entertainment]; Personal trainer services [fitness training]; Cinema presentations; Editing and publication of books; Writing and publishing of texts, other than publicity texts; Providing on-line electronic publications, not downloadable; Photographic reporting; Performances (Presentation of live -); Theater productions; Booking of seats for shows; Providing amusement arcade services; Rental of stadium facilities; Recording studios; Movie studios; Rental of sports grounds.

Class 43: Services for providing food and drink; Temporary accommodation; Bar services; Catering; Hotel services; Room reservation services; Providing campground facilities; Day-nurseries [crèches]; Retirement homes; Boarding for animals; Accommodation bureaux [hotels, boarding houses]; Cafeterias; Snack-bars; Self-service restaurants; Self-service restaurants; Holiday camp services [lodging]; Rental of temporary accommodation; Tourist homes; Motels; Animal boarding; Boarding houses; Boarding house bookings; Hotel reservations; Rental of meeting rooms; Hire of pavilions.

Class 45: Security services for the protection of property and individuals; Dating services; Rental of safes; House sitting; Planning and arranging of wedding ceremonies; On-line social networking services; Evening dress rental; Rental of clothing; Dating services; Agency services for arranging personal introductions; Dating agencies; Rental of safety equipment; Rental of protective clothing; Personal gift selection for others; Chaperoning services; Security guard services.

As a preliminary remark, the Opposition Division points out that, contrary to the applicant´s observations, the opponent clearly invoked this earlier right under the grounds of Article 8(1)(b) EUTMR and not only under Article 8(5) EUTMR. The fact that the opponent´s arguments in support of the claim of likelihood of confusion as regards particular contested services may have been focused on the comparison with services covered by the Benelux trade mark registration or that the opponent referred to the reputation claim as a reason to grant the earlier EUTM an extended scope of protection cannot be construed as a restriction of the opposition grounds. Therefore, the Opposition Division will proceed with the comparison of the services covered by the earlier EUTM and the contested services.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the opponent’s list of services in Class 36 to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed. However, the term ‘including’, used in the opponent’s list of services in Class 36, 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 (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 36

The contested real estate affairs include, as a broader category, the opponent’s real estate management. 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 property (real estate -) management and real estate brokerage are identically contained in the opponent’s list of services.

The contested real-estate valuations (listed twice); real estate agency; rental of apartments are at least similar to the opponent´s real estate management because the services under comparison have the same nature (all fall in the realm of real estate affairs) and, moreover, coincide in end users, distribution channels and are commonly provided by the same undertakings.

The remaining contested services in Class 36 are different kinds of financial (in particular, banking and investment) services or insurance services. These services are at least lowly similar to the opponent´s real estate investment (the latter being a financial/investment service). The services under comparison are of a similar nature (for example, insurance services are of a financial nature, and insurance companies are subject to licensing, supervision and solvency rules similarly to banks and other institutions providing financial services). Furthermore, the conflicting services may be provided by the same undertaking or related undertakings (e.g. most banks also offer insurance services or act as agents for insurance companies, with which they are often economically linked; additionally, it is not uncommon on the market that banks issue different kinds of vouchers, gift cards, cash cards or further tokens of value, for example in the form of magnetic cards or in electronic form, which can be thereafter used in commerce to be exchanged against goods and services) and the services in question may share distribution channels. The Opposition Division has taken note of the applicant´s explanations as to dissimilarity between real estate affairs and financial services (as is also the practice of the Office as reflected in the Office´s Guidelines for Examination of EUTMs), however, these arguments are not applicable to the opponent´s real estate investment which, albeit explicitly related to real estate assets, are investment services by nature.

Contested services in Class 41

The contested services are all related to the fields of education, entertainment or sporting and cultural activities, publishing and production, whereas the opponent´s services fall in the categories of investment and real estate services, building construction; repair; installation services, transport; packaging and storage of goods; travel arrangement as well as services for providing food and drink and temporary accommodation. The conflicting services belong to different fields of activity, have a very different purpose and do not normally target the same end users. They do not originate from the same undertakings nor do they have the same distribution channels. Furthermore, they are not complementary to or in competition with each other. Consequently, they are considered to be dissimilar.

Contested services in Class 43

Services for providing food and drink and temporary accommodation are identically contained in both lists of services.

The contested bar services; catering; cafeterias; snack-bars; self-service restaurants (included twice in the list) are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are identical.

The contested hotel services; room reservation services; providing campground facilities; day-nurseries [crèches]; retirement homes; boarding for animals; accommodation bureaux [hotels, boarding houses]; holiday camp services [lodging]; rental of temporary accommodation; tourist homes; motels; animal boarding; boarding houses; boarding house bookings; hotel reservations; rental of meeting rooms and hire of pavilions are either identical to the opponent’s temporary accommodation (accommodation being used to refer to buildings or rooms where people live or stay resp. to room and provision for the reception of people, esp. with regard to sleeping, seating, or entertainment; living premises, lodgings, see www.oed.com) because the contested services are included in the opponent’s broad category or overlap therewith or, at least highly similar, because the conflicting services have the same purpose, coincide in end users and distribution channels and are, moreover, complementary (for example, as regards room reservation services).

Contested services in Class 45

The contested services in Class 45 are services relating to the physical safety of persons and security of tangible property (such as rental of safes or house sitting) or services provided to individuals in relation with social events, such as planning and arranging of wedding ceremonies. The contested services in this class and all the opponent´s services have a different purpose and, even if they may occasionally target the same public (for example, services of provision of food and drink at a reception following the formal event of a wedding ceremony) usually do not have the same commercial origin. Furthermore, the conflicting services do not coincide in distribution channels and are neither interchangeable nor complementary. Therefore, they are considered to be dissimilar.

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 similar (to various degrees) are directed at the public at large and 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 terms and conditions of the services purchased. For example, as regards financial services in Class 36, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed). Similarly, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

3. 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 earlier figurative mark is composed of a white letter ‘W’ depicted against the background of a black rectangle. The letter ‘W’ has no meaning in relation to the relevant services and is, therefore, considered to be normally distinctive and, in fact, the most distinctive element of the earlier mark, since the figurative background is of rather decorative nature.

The applicant maintains that single letters would be generally endued with only a very limited inherent distinctiveness and a reduced scope of protection. In the applicant´s view (backed with references to a decision of the First Board of Appeal of 23/10/2003 and one Opposition Division decision of 30/11/2012), as a general rule, a single letter of the alphabet is an inherently weak distinctive element of a sign, since neither will it attract consumers’ attention, nor can it be considered as being imaginative.

The General Court, however, has stated in a number of cases that a trade mark containing a single letter or a single numeral may be inherently distinctive (08/05/2012, T‑101/11, G, EU:T:2012:223, § 50; 06/10/2011, T‑176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T‑378/12, X, EU:T:2013:574, § 37-51). In the judgment of 10/05/2011, T‑187/10, G, EU:T:2011:202, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that therefore only their graphical depiction would be protected. The Court, in its judgment of 09/09/2010, C-265/09 P, α, EU:C:2010:508, held that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (paras 33-39). Consequently, the applicant´s arguments need to be set aside.

The contested mark is also a figurative sign with a very similar setup and the above considerations as to the distinctiveness of the element ´W´ and the rectangular background are equally applicable. Indeed, as pointed out by the applicant, there are certain differences between the signs, one of them being that the letter ´W´ is placed in a more central position in the contested sign while in the earlier mark it is in the upper half. Furthermore, unlike in the earlier sign, the letter ´W´ in the contested mark is more stylised and, as explained by the applicant, displayed in relief and unfinished (with shorter last leg). Finally, the contested sign also comprises additional figurative elements, namely three stars on top of the right side of the letter ´W´, which, however, will have limited impact on the overall impression of the contested sign not only because of their rather decorative function, but also because in general when signs consist of both verbal and figurative components, the verbal component of the sign (even if consisting of a single letter) 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).

The applicant is correct in pointing out that the conflicting signs are short signs and the shorter a sign, the more easily the public is able to perceive all of its single elements. The Opposition Division concurs with the applicant that, in short words, small differences may frequently lead to a different overall impression. Nevertheless, the Opposition Division is of the view that even in such short signs the differences in the particular depiction of the letters ´W´ (the applicant observes that the lower part of the ‘W’ letter in the earlier trade mark has sharp pointed ends while the lower part of the ‘W’ letter in the contested application has curved ends) and ‘the shades’ of white, grey and black will rather go unnoticed in their overall impression.

Therefore, taking into account the distinctiveness and the impact of the coinciding and differing elements of the signs on the overall impression, it is considered that the slight difference in the position of the letter ´W´ in the signs, as well as the stylisation and the additional figurative elements are not sufficient to counteract the similarities in the overall impression leading to a higher than average degree of visual similarity.

Aurally, since in both signs the only element to be pronounced is the letter ‘W’, the signs are identical.

The applicant’s argument that the conflicting signs will be perceived as a reference to the opponent’s/applicant’s company names respectively must be dismissed, as there is nothing in the marks per se which would suggest that such terms are or are linked to a company name. Furthermore, there is no evidence on file to corroborate that the relevant public would refer to the signs as ‘Starwood’ and ‘Wonderbox’.

As regards the applicant’s reference to Ruling on Opposition B 474 124, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Conceptually, the public in the relevant territory will perceive in both signs the letter ‘W’. Although the contested sign comprises further figurative elements that will be associated with a concept (i.e., the stars), as explained above, the latter will be attributed less trade mark significance than the letter ‘W’. Therefore, from a conceptual point of view, the signs are similar to a higher than 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.

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 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 an element of a rather decorative nature in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

The contested services were found to be partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s services. The inherent distinctiveness of the earlier mark is normal.

The signs are similar to an above average degree in all three aspects of the comparison. Although it is true that the depiction of the letters ‘W’ and the signs overall show certain differences, account should be 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).

It is, therefore, reasonable to assume that the relevant consumer will establish a link between the signs at hand and think that the services designated by the conflicting trade marks have the same commercial origin.

Given the degree of similarity found between the marks, the fact that the degree of attention of the relevant public (including professionals) could be heightened is not sufficient to exclude the possibility that the public might believe that the services in question (even if similar to a low degree only) come from the same undertaking or, as the case may be, from economically-linked undertakings.

The above conclusion cannot be altered by the applicant’s reference to previous decisions of the Office (decision of the EUIPO Opposition Division on Opposition B 2 770 785 vs. ; decision of the EUIPO Opposition Division on Opposition B 515 173 vs. and decision of the EUIPO Opposition Division on Opposition B 2 393 760 vs. ). As already explained above, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. Furthermore, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar (including to a low degree) 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 marks due to its extensive use and reputation 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.

Along a similar line of reasoning, the opponent’s arguments as to a family of marks does not need to be assessed in the framework of Article 8(1)(b) EUTMR.

The examination of the present opposition will proceed with regard to the services found to be dissimilar under the grounds of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 06/01/2016. However, the contested trade mark has a priority date of 29/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

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

The opposition remains directed against all the contested services in Classes 41 and 45 (as listed in the section on Likelihood of Confusion above) that were found to be dissimilar to the services of the earlier mark.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 14/11/2016 the opponent submitted the following evidence:

• Annex 3: An incomplete copy of decision issued by the Court of Rome in a dispute involving the opponent (in Italian, without a translation into the language of the proceedings). In its observations, the opponent provides a translation of two paragraphs of the said decision wherein it is indicated that ‘On the basis of the evidence of the action, Starwood’s trade mark ‘W’ must also be considered a trade mark enjoying a reputation’. In its observations, the opponent makes reference and provides quotations from further decisions by courts and tribunals in different jurisdictions (all outside the EU), such decisions have, however, not been submitted by the opponent.

• Annex 4: Copies of publications and articles, namely:

• Two articles published in November 2015 in the online issues of El Economista and Expansion (entitled ‘The hotel largest in the world is born: Marriott purchases Starwood Hotels for 12,200 million dollars’ and ‘Marriott purchases Starwood for 11,320 millions in order to create the biggest hotel chain in the world’ respectively, in Spanish, without a translation into the language of the proceedings of the content of the articles); the opponent indicates in its submissions that in the articles the W trade marks were named among the most important of Starwood; the opponent further provides data about the circulation of daily newspapers in Spain (with average net circulation of the said newspapers being approx. 14 000 and 25 000 copies respectively).

• An article from the New York Times announcing the anticipated opening of the W New York in December 1998.

• Several publications from 2008 (only two are in English, the rest being in Greek or Turkish, without a translation into the language of the proceedings) mentioning the opening of W Istanbul Hotel.

• An article from the New York Times from 2011 entitled ‘Hotel Review: Barcelona W Hotel’.

• Annex 5: A Press release published by the European Commission on 27/06/2016 indicating that the Commission approved acquisition of Starwood Hotels & Resorts by Marriott; it is indicated that both companies have a significant presence on the markets for 4 and 5-star hotels, however, the earlier mark is not mentioned in the press release.

• Annex 6: Printouts of publications, namely:

• Annex 6.1: Printouts from www.cvent.com, from the internet site of The World Travel Awards, from www.cntraveller, www.ricardobofill.com and www.hospitality-on.com with references to the opening of W Hotel Barcelona in 2010 and to awards and nominations of W Hotel Barcelona (e.g. Spain´s Leading Hotel 2012 and 2015 in the list of The World Travel Awards, Villégiature Award 2010 for Best Hotel Architecture in Europe, Best hotel novelty of the year awarded in 2010 by the Worldwide Hospitality Awards).

• Annex 6.2: Listings, awards and reviews in relation to several W Hotels outside the European Union (W Retreat & Spa Maldives, W Hong Kong), mostly dated before 2012, some of them not in the language of the proceedings (e.g. in Russian) and without a translation. None of the documents makes reference to a presence or awareness in the European Union.

• Annex 6.3: List of the awards of Starwood Hotels & Resorts from 1999 to 2011, published on the website of The World Travel Awards.

• Annex 7: Publications and reviews in relation to W Hotels in the European Union, namely:

• Annex 7.1: Publications in the British press (The Daily Mail and Harpers Bazaar) mentioning that the 2011 BAFTA (British Academy Film Awards) after-party was held at the W Hotel London – Leicester Square.

• Annex 7.2: Three publications mentioning W Paris – Opera (according to the opponent´s explanations in its submissions, these are samples of press coverage regarding the 2012 launch of the establishment); one publication is dated in 2012 (in French, without a translation into the language of the proceedings) and two are dated in 2015 (one is from the opponent´s website) and are related to the W Paris – Opera Design Lab as a part of the 2015 Paris Design Week.

• Annex 7.3: Publications in relation to W Hotels in the European Union, namely:

  • W Hotel Barcelona: A publication dated 20/11/2009 in Travel/The Independent on Sunday entitled ´The shape of things to come´ with respect to the landscape in Barcelona wherein the sail-shaped W Hotel is mentioned (among others); A publication of rather advertising nature in relation to Hotel W Barcelona posted on 12/08/2015 on www.timeout.com (in the publication it is indicated that the content is provided by a Time Out partner); A publication on a Polish website (in Polish, without a translation into the language of the proceedings); A publication on cntraveller.com from 2015 recommending the rooftop bar of W Hotel Barcelona; A publication on Spiegel Online from 29/10/2010 (in German, without a translation into the language of the proceedings); A publication on cntraveller.com entitled ‘Welcome to the new Barcelona’ with a review mentioning facilities (rooftop bar, wet bar, etc.) at W Barcelona; A publication from 09/03/2010 on www.bloomberg.com, ‘W Hotels Worldwide’s European Flagship W Barcelona Hotel, reporting on the opening of the W Barcelona Hotel; A publication on vogue.es (not dated and without a translation into the language of the proceedings); A publication from 2012 on vogue.it with advices for a visit in Barcelona mentioning (among others) W Hotel; A publication from 09/05/2010 on www.tagesspiegel.de (in German, without a translation into the language of the proceedings).

  • W Hotel London – Leicester Square: A publication from 12/08/2015 on www.tatler.com in relation to the W London Britpop Collection launch; A publication from 17/03/2011 on vogue.co.uk on the W Hotel Launch Party mentioning several celebrities (Kate Moss, Alexa Chung, etc.) among the guests; An interview with the Wyld bar’s frontman published on 14/03/2013 on www.gq-magazine.co.uk; A publication from 18/02/2011 in The Wall Street Journal mentioning the new W Hotel in the context of the Leicester Square redevelopment program (among further hotels/establishments); A Hotel Review: W Leicester Square, London’s chic new American Import published on 22/02/2011 on Daily Mail Online; The first page of a publication from 13/08/2015 on www.bha.org in relation to the launch of The Britpop Collection; A publication from 23/07/2015 on www.girlmeetsdress.com announcing a partnership between Girl Meets Dress and W Hotel London; A publication from 16/03/2011 in The Economist online on the newly opened W Hotel London; A publication from 27/08/2015 on www.timeout.com mentioning the W Lounge in the section Bars and pubs in Leicester Square, London.

  • W Paris – Opera: Several publications (e.g. a publication from 11/05/2015 on www.puretrend.com, a publication from 07/12/2012 on www.lemonde.fr, a publication from 01/03/2012 on www.lesechoes.fr, publications from 2009, 2010 and 2012 on www.lefigaro.fr) in French, without a translation into the language of the proceedings; A publication on www.worldsbestbars.com on the opening of the ‘Parisian outpost of the luxury W Hotel chain’; A publication entitled ‘What’s your story, W Opéra Paris?’ (the title is in English but the text is in French, without a translation into the language of the proceedings) from 01/03/2012 on silecio.fr.

  • One publication on Daily Mail Online from 20/07/2009 providing a review of W Hotel Istanbul.

• Annex 7.4: guest reviews in relation to the W Hotels in Barcelona, London, Istanbul and Paris published on tripadvisor, booking.com and expedia (in several languages). The opponent points out that this annex includes 4158 reviews in Germany and Italy, 1506 in Spain and 1461 in London.

• Annex 7.5: approx. 15 reviews on several private blogs and websites of several W Hotels (W Hotel Barcelona, W Hotel Istanbul, W Hotel St. Petersburg, W Hotel Verbier Switzerland and W Hotel Paris Opera).

• Annex 7.6: Further approx. 10 publications on different blogs in relation to experiences in W Hotels (W Hotel Barcelona, W Hotel Istanbul, W Hotel London, etc.).

• Annex 8: Printouts mentioning (inter alia) the W Hotels Worldwide iPhone application (Annex 8.1) and printouts from the Facebook pages of W Hotels Worldwide and of W Hotels in the EU (Annex 8.2).

• Annex 9: Certificates of registration of further EUTMs of the opponent.

In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (judgments of 14/09/1999, C-375/97, Chevy, EU:C: 1999:408, § 22-23; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34).

The Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (judgment of 14/09/1999, C-375/97, Chevy, EU:C: 1999:408, §25, 27).

Having examined the evidence listed above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

It is to be clarified upfront that a part of the evidence (mostly press articles and publications, as detailed above) have been submitted without a translation into the language of the proceedings.

As explained in the section related to the substantiation of the earlier Benelux trade mark, according to Rule 19(3) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), the information and evidence showing, inter alia, that the mark has a reputation, must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

The opponent did not submit the necessary translations of a part of the evidence, as detailed above.

According to Rule 19(4) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

As regards the remaining evidence, the Opposition Division first notes that, indeed, the opponent submitted information with regard to several awards and recognitions and this evidence is relevant and contains indirect indications as to certain presence of the opponent’s mark on the relevant market and certain press coverage (Annex 6). The opponent explains, for example, in its submissions in relation to the awards and rankings from The World Travel Awards that The World Travel Awards was established in 1993 to acknowledge, reward and celebrate excellence across all key sectors of the travel tourism and hospitality industry and that this brand would be recognised globally as the ultimate hallmark of quality. However, these statements of the opponent are not backed by any evidence whatsoever. For example, the opponent could have provided more details about the bodies deciding on the awards, the participants, the selection criteria and further information that would enable the Opposition Division to assess the opponent’s market position and the degree of awareness with regard to its services in the context of the actual market and competitors. By way of example, the evidence shows that W Hotel Barcelona was Spain’s Leading Hotel 2012 and 2015 in the list of The World Travel Awards, however, without conclusive information as to the background of the award, the criteria for awarding, the market sectors, other participants, etc. the Opposition Division cannot come to a conclusion as regards the probative value of such evidence and, even less, the actual impact of the award and the extent of recognition of ‘W’ among the relevant public. Finally, it is to be mentioned that a part of the evidence is clearly not related to the relevant territory (e.g. Annexes 6.2 and 6.3), is dated several years before the priority date of the contested application or is not related to the services for which reputation is claimed but to the architectural design of W Hotel Barcelona.

The opponent makes reference to and provides extracts from several decisions by courts and tribunals in different jurisdictions (mainly outside the EU) in support of the purported reputation of the earlier mark (Annex 3). Although, in principle, national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State, in the present case the opponent failed to submit sufficient information, in particular about the evidence on which the decision were based as well as on the factual and legal background of the decisions. The Opposition Division points out, by way of example, that there might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Therefore, the quotations from decisions provided by the opponent cannot be automatically transmitted to the case at hand.

The evidence contains a number of press releases and publications in relation to the opening of the W Hotels in Barcelona, London and Paris. The opponent emphasises in its second round of observations the image of luxury and exclusivity of the hotels reflected in these articles and publications. However, while, admittedly, the opening of the said three establishments received certain press coverage, the publications are mostly dated in the period 2009 – 2012 (close to the dates of the respective openings) and cannot be relied on to show that a reputation of the earlier mark was built up and maintained in the relevant territory after the opening of the hotels in the three locations.

Indeed, the opponent provided some samples of press publications closer to the relevant point in time (e.g. W Paris – Opera Design Lab as a part of the 2015 Paris Design Week, the launch of The Britpop Collection, etc.), however, these materials do not reflect promotional actions or coverage of such an extent as to lead to the conclusion that they necessarily resulted in awareness of the mark on the part of the public. The press releases, for instance, refer to punctual promotional actions (e.g. partnership between Girl Meets Dress and W Hotel London) whose impact in terms of recognition of the earlier mark is not possible to be determined. Furthermore, in a number of materials (in Annex 7.3.) the W Hotels are mentioned among other establishments so that the evidence is not conclusive on the degree of recognition of the earlier mark in the relevant territory. Likewise, presence of celebrities at the Launch party or the BAFTA party in Hotel W London in 2011 are not of enough weight to corroborate the opponent’s reputation claim for the relevant services.

The opponent makes reference to the materials in Annexes 4 and 5 in relation to the merger between the opponent and Marriott to emphasise the importance of the economic size Starwood has acquired. Indeed, from the said evidence a conclusion as to a strong presence on the market for 4 and 5-star hotels of the opponent’s company can be drawn, however, these materials do not provide any concrete indications as to the presence or market share of the ‘W’ brand. In fact, as evident form the opponent’s submissions, the ‘W’ brand was mentioned in only one publication (Annex 4.1) among other brands. Moreover, from the European Commission press release in Annex 5 it can be seen that the opponent is active on a very competitive market where the said acquisition ‘would raise no competition concerns’ and the merged entity ‘will continue to face effective competition from chain hotels and independent hotels’.

Finally, the opponent has provided voluminous evidence stemming from blogs, guest reviews, printouts from Facebook pages, printouts in relation to an app, etc. and reiterates the allegedly well-known character of the earlier mark. In the Opposition Division’s view, the presence of the earlier mark on social networks, and in blogs the reviews on tripadvisor, etc., are nowadays not indicators of recognition but normal activity for any company on the market, especially in the temporary accommodation and the provision of food and drinks industry. By way of example, the Opposition Division points out that according to the tripadvisor extracts provided by the opponent, the W Hotel London Leicester Square is ranked # 467 of 1,054 hotels in London and the W Hotel in Paris is ranked # 331 of 1,790 hotels in Paris.

Under these circumstances and in the absence of any further independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, the market share held by the mark, the position it occupies in the market in relation to competitors’ services, it is concluded that the evidence does not show the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes or the extent to which the trade mark has been promoted. Even bearing in mind that the evidence must be looked at in its entirety, avoiding a piecemeal approach, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as these grounds are concerned.

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.

The Opposition Division

Renata COTTRELL

Denitza STOYANOVA-VALCHANOVA

Marta Maria CHYLIŃSKA

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.