OPPOSITION No B 2 808 916

Hoteles Mac, S.L., Gremi Tintorers, 25-A, 07009, Palma De Mallorca, Spain (opponent), represented by A.A. Manzano Patentes & Marcas, S.L., Avda. Pedro Díez, 21 Duplicado 1º Oficina 9, 28019, Madrid, Spain (professional representative)

a g a i n s t

Hotel Management International Inc., 1001 de Maisonneuve Blvd. West, #930 H3A 3C8, Montreal, Canada (applicant), represented by Mathys & Squire Llp, Abbey House 32 Booth Street, M2 4AB Manchester, United Kingdom (professional representative).

On 16/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 808 916 is upheld for all the contested services.

2. European Union trade mark application No 15 614 118 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 614 118 . The opposition is based on Spanish trade mark registration No 2 305 637 . The opponent invoked Article 8(1)(a) and (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 42: Hotel services; restaurant services, bar, cafeteria.

The contested services are the following:

Class 43: Hotel room booking agency with service provided to the public via the internet, the telephone and in person at offices open to the public; information, advisory and consultancy services relating to all the foregoing.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested services are similar to Hotel services as hotel room booking services are complementary to the hotel services as such and, broadly speaking, they coincide in purpose. Although they are not commonly provided by the same undertakings, they satisfy the needs of the same consumers which look for them in the same channels of distribution. With regard to the information, advisory and consultancy services relating to the hotel room booking, the same conclusion of similarity is established also in relation to them, given the assistive and informative nature of the main services which they directly relate to.

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 similar are directed at the public at large.

The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The element HMI in the beginning of both marks has no meaning for the relevant public except that of a combination of these letters of an alphabet and is, therefore, distinctive. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The earlier mark contains additionally a figurative element, a small circle and a curved line beneath it. These will not be attributed other meaning than those of the geometric elements they represent being merely an embellishment.

Although the figurative element of the earlier mark is fanciful and must be seen as inherently distinctive for the services at issue, it is noted, that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The word HOTEL of the contested sign will be understood as such, referring to accommodation establishment. The word MANAGEMENT is meaningless for the Spanish public. The word INTERNATIONAL will be understood due to its close equivalent INTERNACIONAL, referring to something that involves different countries. As the services of this mark are hotel booking services, the words HOTEL and INTERNATIONAL are considered non-distinctive, as they refer to the characteristics of these services, for example hotel services which are available in several countries. The remaining term MANAGEMENT is considered distinctive.

The earlier mark has no element that could be considered clearly more dominant. In the contested sign, it is the element HMI which is visually more eye-catching than the words HOTEL MANAGEMENT INTERNATIONAL. Although the latter occupy a large proportion of the sign as a whole, the group of these verbal elements are depicted in relatively smaller, fainter letters.

Visually, the signs coincide in that their first element is formed of a letter sequence HMI, an element which is equally distinctive in both signs. It is admittedly true that in the earlier mark, these letters are depicted in a fairly standard, italicised typeface in lower case, whereas in the contested sign, they remind of a handwritten inscription where the first grapheme is a capital letter and the other two are in lower case. Nevertheless, neither of the stylisation manners used eclipses the graphemes which will be readily perceived as the letters as such.

The marks additionally differ in the figurative element of the earlier mark and in the word elements of the contested mark, some of which were found non distinctive but which in any case have a lesser weight in the visual impression created by the sign as a whole, for the reasons given above.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters HMI which will be identically sounded out in both signs (i.e. ‘ache-eme-i’). The fact that in the contested sign, these letters are written as a word (the first letter in upper case) does not mean that it will be enunciated as a word because it would be very cumbersome to pronounce the string of consonants HM.

The pronunciation differs in the sound of the elements HOTEL MANAGEMENT INTERNATIONAL of the contested mark, but it has to be borne in mind that the words HOTEL and INTERNATIONAL are non-distinctive. The impact of these aurally differentiating elements is further reduced by the fact that a part of the public may skip them from the pronunciation when referring to the contested sign, given the less important role of these words on the visual level.

Therefore, depending on whether the public includes the words HOTEL MANAGEMENT INTERNATIONAL in the pronunciation of the contested the sign or not, the signs are similar to an average degree, or identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide conceptually in the fanciful element HMI and differ in the concepts conveyed by the words HOTEL and INTERNATIONAL, elements which are non-distinctive. Consequently, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services have been found similar. The earlier mark and the contested sign have been found to be similar on account of the letter sequence HMI which they have in common as a readily perceptible and distinctive element. The difference lies in the stylisation of these letters in the marks, which does not however alter the way that these letters are perceived by the public. The differences in typeface, the figurative element of the earlier mark, or the additional word elements (distinctive or non-distinctive) cannot outweigh the similarity provided by the coinciding identical letters.

It is considered that the similarities between the signs established above are sufficient to cause the public to believe that the conflicting services, which are similar, come from the same undertaking or economically linked undertakings.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Moreover, it is common in many industry sectors for the same distinctive element to be configured in various ways according to the type of products that it covers and for the same undertaking to use a sub-brand to distinguish various production lines. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 305 637. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

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

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

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

The Opposition Division

Solveiga BIEZA

Erkki Münter

Ferenc GAZDA

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.