OPPOSITION No B 2 939 737

MW Hotels & Resorts Consultancy DMCC, Silver Tower, Jumeirah Lakes Tower, Dubai, United Arab Emirates (opponent), represented by Mathys & Squire LLP, The Shard 32 London Bridge Street, SE1 9SG, London, United Kingdom (professional representative)

a g a i n s t

Brillux GmbH & Co. KG, Weseler Str. 401, 48163 Münster, Germany (applicant), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 939 737 is upheld for all the contested services, namely

Class 37: Building construction; repair in the field of facade engineering and insulation technology for buildings; installation in the field of facade and damping technology in buildings; installation of facade and insulating panels for buildings, and maintenance and repair for renovating buildings.

2. European Union trade mark application No 16 449 803 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 16 449 803 (word mark: ‘MW TOP’), namely against all the services in Class 37. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 144 989 (series of four word marks: ‘MW Hotels and Resorts’, ‘MW Hotels & Resorts’, ‘MW HOTELS AND RESORTS’ and ‘MW HOTELS & RESORTS’). The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 144 989.

1. The services

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

Class 37 Property development; property maintenance; construction and maintenance of hotels and resorts.

The contested services are the following:

Class 37: Building construction; repair in the field of facade engineering and insulation technology for buildings; installation in the field of facade and damping technology in buildings; installation of facade and insulating panels for buildings, and maintenance and repair for renovating buildings.

The contested services building construction; repair in the field of facade engineering and insulation technology for buildings; installation in the field of facade and damping technology in buildings; installation of facade and insulating panels for buildings, and maintenance and repair for renovating buildings overlap with the opponent’s services construction and maintenance of hotels and resorts. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are primarily directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness will be higher than average as the relevant services are rather specific and may be high in price.

3. The signs

MW Hotels and Resorts MW Hotels & Resorts MW HOTELS AND RESORTS MW HOTELS & RESORTS	MW TOP
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom.

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).

All marks in conflict are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant for the comparison whether a word mark is depicted in lower or upper case letters.

The essential characteristics of all marks that are subject to the earlier registration are the same. They only differ in their letter case and the substitution of the word ‘and’ with an ampersand. The examination will proceed with the earlier registrations’ mark ‘MW HOTELS AND RESORTS’.

The common element ‘MW’ of the signs has no meaning for the relevant public and is, therefore, distinctive.

The expression ‘HOTELS AND RESORTS’ of the earlier sign is non-distinctive for the relevant services as it indicates the subject of these construction and maintenance services (hotels and resorts), as is obvious from their specification.

The element ‘TOP’ of the contested sign is a merely laudatory term that indicates that something is excellent (see e.g. collinsdictionary.com, 25/10/2018). It is non-distinctive for the relevant services as it indicates that they are of excellent quality.

The element ‘MW’ is therefore the only distinctive element in both signs.

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.

Visually and aurally, the signs coincide in their distinctive element ‘MW’ placed at the beginning. They differ in their non-distinctive further elements ‘HOTELS AND RESORTS’ and ‘TOP’.

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the elements ‘HOTELS AND RESORTS’ and ‘TOP’ will evoke concepts this will not affect the conceptual comparison, as these elements are non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will in both cases be attracted by the additional fanciful verbal element ‘MW’, which has no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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

The signs are visually and aurally highly similar, the services are identical, the degree of attention of the relevant public will be higher than average and the distinctiveness of the earlier mark is normal.

Given that the signs coincide in the distinctive element ‘MW’ in their beginning there is a likelihood of confusion for identical services, even for consumers with a higher level of attention, because the differences between the signs are confined to non‑distinctive elements, i.e. the elements ‘HOTELS AND RESORTS’ and ‘TOP’, which cannot indicate commercial origin and therefore cannot help consumers to safely distinguish between the signs.

Furthermore, it is highly conceivable that the relevant consumer might 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 or services 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 United Kingdom trade mark registration No 3 144 989. It follows that the contested trade mark must be rejected for all the contested services.

As the above-mentioned earlier right 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

Gonzalo BILBAO TEJADA

Tobias KLEE

Octavio MONGE GONZALVO

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.