DECISION

of the Fifth Board of Appeal

of 18 November 2019

In case R 1133/2019-5

Derag Deutsche Realbesitz AG + Co. KG
Fraunhoferstr. 2 80469 München Germany	Applicant / Appellant

represented by LS-IP LOTH & SPUHLER Intellectual Property Law Partnerschaft von Rechtsanwälten mbB, ALPHA-Haus, Garmischer Strasse 35, 81373 München, Germany

v

Signature Living Hotel Limited
Millennium House, 60 Victoria Street Liverpool Liverpool L16JD United Kingdom	Opponent / Defendant

represented by CSY HERTS, Helios Court 1 Bishop Square, AL10 9NE Hatfield, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 976 937 (European Union trade mark application No 16 481 418)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), A. Pohlmann (Rapporteur) and C. Govers (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 17 March 2017, Derag Deutsche Realbesitz AG + Co. KG (‘the applicant’) sought to register the word mark

Living Hotels Signature

for services in Classes 35, 36 and 43, in particular the following services (‘the contested services’):

Class 43 ‑ Hotel services; Restaurants, Cafés, Cafés, Services for providing food and drink in snack-bars; Accommodation bureaux (hotels, boarding houses), temporary accommodation reservations; Rental of temporary accommodation, Rental of meeting rooms, Rental of portable buildings.

2. The application was published on 14 July 2017.

3. On 16 October 2017, Signature Living Hotel Limited (‘the opponent’) filed an opposition against the registration of the published trade mark application, inter alia, for all the above services.

4. The grounds of opposition were those laid down in Article 8(1)(a) and (b) EUTMR, as well as Article 8(4) EUTMR.

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

1. United Kingdom national trademark registration No 2 621 188 ‘SIGNATURE LIVING’, filed on 16 May 2012 and registered on 5 October 2012 for ‘Temporary accommodation, hotel, restaurant and bar service, holiday accommodation’ in Class 43;

2. United Kingdom non-registered trademark ‘SIGNATURE LIVING’, as used for ‘Hotel services; rental of temporary accommodation; rental of apartments; rental of serviced apartments; bar and restaurant services; advertising and promotion in respect of the aforementioned services.

6. By decision of 1 April 2019 (‘the contested decision’), the Opposition Division partially upheld the opposition, namely for all the contested services in Class 43. The opposition was, however, rejected for the remaining services in Classes 35 and 36.

7. The Opposition Division gave, in particular, the following grounds for its decision:

• The contested services in Class 43 are identical to the services registered under the earlier mark.

• The contested services in Classes 35 and 36 are dissimilar to the services registered under the earlier mark.

• The services found to be identical are aimed at both the average consumer and the professional public. The degree of attention may vary from average to high since some of these services may be costly, thus warranting an enhanced degree of attention.

• The earlier mark would most probably be understood to refer to the idea of a unique or even exclusive lifestyle. However, it is not a coined expression. The contested sign has the notion of a hotel that is alive and unique/exclusive. Thus, the signs are conceptually similar to an average degree.

• Visually and aurally the signs are likewise similar to an average degree.

• The opponent claimed an enhanced degree of distinctiveness for the earlier mark, acquired through use. For reasons of procedural economy that claim and the evidence filed to establish the enhanced distinctiveness may remain unassessed.

• The inherent degree of distinctiveness of the earlier mark could be considered to be slightly below average. The sign, as a whole, may be understood to refer to the fact that the services are rendered in a unique or exclusive fashion.

• The earlier mark is fully featured in the contested application. The relevant consumer has to rely on his/her imperfect recollection of the signs. With regard to the services found identical, the principle of interdependence leads to the finding of likelihood of confusion.

• The evidence filed in the context of Article 8(4) EUTMR in order to establish the prior use of the non-registered trademark in the United Kingdom is severely flawed. The opposition as based on this ground is therefore rejected as unfounded.

8. On 24 May 2019, the applicant filed an appeal against the contested decision, requesting that the decision be partially set aside, namely to the extent that the opposition was upheld. The statement of grounds of the appeal was received on 1 August 2019.

9. In its response received on 11 October 2019, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

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

• The contested application is a fixed term, which is characterized by all of its elements and cannot be divided into separate parts. None of its components can be ignored in the comparison of the signs.

• The element ‘Hotels’ has incorrectly been ignored in the comparison of the signs as lacking distinctiveness.

• The term ‘Living Hotels’ is one of the core trademarks of the applicant and is known to the addressed trade circles as a reference to the applicant’s company group.

• The signs to be compared differ in their length, their vowel and consonant sequence and the order of their components.

• Given that the signs under comparison differ entirely in their beginnings, they have to be considered visually and aurally dissimilar.

• There exists no conceptual similarity between the signs on the basis of the common element ‘Signature’. This term does not have a clear meaning within the signs and no characterizing importance.

• The earlier right enjoys only a low level of distinctiveness and thus only a minimum level of protection.

• The contested services in Class 43 are not even similar to those of the earlier mark. Against the background that the signs under comparison are not similar and given the weak distinctiveness of the earlier mark, any similarity between the services at issue would not be of importance.

• The relevant services are not day-to-day services. Therefore, the relevant trade circles act with a higher than normal degree of attention.

• The evidence submitted in order to establish the use of the non-registered trademark within the United Kingdom prior to 17 March 2017 is indeed insufficient.

11. In its response, the opponent mainly endorsed the findings in the contested decision. It further insists on the at least average inherent distinctiveness of the earlier mark and makes reference to the evidence submitted before the Opposition Division in order to establish even an enhanced distinctiveness through use. Finally, the opponent points out, that meeting rooms in the UK can be hired for as little as GBP 20 per hour or even less, that the services in Class 43 are not only addressed to a professional public and that therefore the level of attentiveness cannot be considered to be higher than average overall.

Reasons

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

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

14. However, the appeal is not well founded.

Article 8(1)(b) EUTMR

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

16. The risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case (09/07/2003, T‑162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30, 33).

17. For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the two marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited).

Relevant public and the degree of attention

18. The perception of the marks in the minds of the relevant public for the services in question plays a decisive role in the global assessment of the likelihood of confusion. Account should be taken of the average consumer of the services at issue, who is reasonably well informed and reasonably observant and circumspect.

19. The services at issue in Class 43 are primarily directed at the public at large and that public’s level of attention is considered to be average (13/06/2012, T‑277/11, iHotel, EU:T:2012:295, § 68; 10/10/2019, T‑428/18, mc dreams hotels Träumen zum kleinen Preis! (fig.) / McDONALD'S et al., EU:T:2019:738, § 36).

20. In that regard it has to be taken into account, that there exists a very wide price range in the relevant field of accommodation and restaurant services, ranging from very cheap and affordable offers, to very exclusive and expensive offers. Likewise, while for some consumers, eating out or renting an accommodation might be a rare venture, others eat out and travel on a regular basis.

Comparison of the services

21. In assessing the similarity of the goods and services, all the relevant factors relating to those goods or services should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37), the usual origin and the relevant public of the goods or services.

22. The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 38).

23. The services to be compared are the following:

    Class 43 ‑ Temporary accommodation, hotel, restaurant and bar service, holiday accommodation.	Class 43 ‑ Hotel services; Restaurants, Cafés, Cafés, Services for providing food and drink in snack-bars; Accommodation bureaux (hotels, boarding houses), temporary accommodation reservations; Rental of temporary accommodation, Rental of meeting rooms, Rental of portable buildings.
    Earlier mark	Contested sign

24. In its statement of grounds, the applicant insisted on the dissimilarity of these services in a general statement, without indicating any reasons why the findings in the contested decision were incorrect.

25. The earlier mark’s ‘temporary accommodation service’ encompasses in its broad wording the contested ‘temporary accommodation reservations; rental of temporary accommodation, rental of portable buildings’. ‘Hotel service’, as protected under the earlier mark, covers due to its broad wording the contested ‘hotel services; accommodation bureaux (hotels, boarding houses), rental of meeting rooms’. Finally, ‘restaurant and bar service’, as registered under the earlier mark, include ‘restaurants, cafés, services for providing food and drink in snack-bars’ as applied for in the contested sign.

26. The services under comparison are therefore identical, as all of the contested services fall under the broader worded specification of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 32, 33; 24/11/2005, T‑346/04, Arthur et Félicie, EU:T:2005:420, § 34; 17/01/2012, T‑522/10, Hell, EU:T:2012:9, § 36).

Comparison of the marks

27. The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

28. Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspects (02/12/2009, T‑434/07, Solvo, EU:T:2009:480, § 31; 25/06/2010, T‑407/08, Metromeet, EU:T:2010:256, § 34 ; 13/09/2010, T‑149/08, Sorvir, EU:T:2010:398, § 29; 14/04/2011, T‑466/08, Acno focus, EU:T:2011:182, § 52).

29. The signs to be compared are:

    SIGNATURE LIVING	Living Hotels Signature
    Earlier mark	Contested sign

30. The earlier mark is a UK registration. Therefore, it is the perception of the signs by the public in the United Kingdom that needs to be taken into account.

31. The public will not generally consider a descriptive element forming part of a word mark to be the distinctive and dominant element of the overall impression it conveys. In that regard, according to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (22/02/2018, T–210/17, TRIPLE TURBO (fig.) / ZITRO TURBO 2 (fig.), EU:T:2018:91, § 24; 10/10/2019, T‑428/18, mc dreams hotels Träumen zum kleinen Preis! (fig.) / McDONALD'S et al., EU:T:2019:738, § 40).

32. It should also be borne in mind that, where some elements of a mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (13/06/2006, T‑153/03, Peau de vache, EU:T:2006:157, § 35; 03/09/2010, T‑472/08, 61 a nossa alegria, EU:T:2010:347, § 49; 26/01/2016, T‑202/14, LR nova pure. / NOVA, EU:T:2016:28, § 38; 19/06/2019, T‑28/18, AC MILAN (fig.) / AC et al., EU:T:2019:436, § 30; 10/10/2019, T‑428/18, mc dreams hotels Träumen zum kleinen Preis! (fig.) / McDONALD'S et al., EU:T:2019:738, § 43).

33. The contested sign seeks protection for hotel and accommodation services and accessorial services, like rental of meeting rooms and portable buildings, which are services that are generally rendered in hotels. Thus, the component ‘Hotels’ in the contested sign is clearly descriptive for the services under comparison (13/06/2012, T‑277/11, iHotel, EU:T:2012:295, § 91; 08/11/2016, T‑579/15, fortune (fig.) / FORTUNE-HOTELS, EU:T:2016:644, § 58; 01/03/2018, T–438/16, CIPRIANI / HOTEL CIPRIANI et al., EU:T:2018:110, § 63; 19/06/2019, T-28/18, AC MILAN (fig.) / AC et al., EU:T:2019:436, § 55; 10/10/2019, T‑428/18, mc dreams hotels Träumen zum kleinen Preis! (fig.) / McDONALD'S et al., EU:T:2019:738, § 48). Although the additional word ‘Hotels’ must not be completely disregarded when comparing the marks, its role is limited due to its descriptiveness for services provided by hotels.

34. It is against this background that the similarity between the conflicting signs has to be assessed.

35. Both signs are word marks. The earlier mark is composed of the word elements ‘Signature Living’, while the contested sign reads ‘Living Hotels Signature’. Thus, the terms as such are protected and the use of small or capital letters or a specific font is, in principle, not taken into account when determining the scope of protection of a word mark (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43; 25/06/2013, T‑505/11, dialdi, EU:T:2013:332, § 65).

36. Visually, both marks feature the components ‘Signature’ and ‘Living’. While it is true, that the order of these two word elements is reversed, the coinciding sequences of letters remain easily perceivable in both signs. In that regard, it should be recalled that the mere inversion of elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity (11/06/2009, T‑67/08, InvestHedge, EU:T:2009:198, § 35; 09/12/2009, T‑484/08, Kids Vits, EU:T:2009:486, § 32 ; 25/06/2010, T‑407/08, Metromeet, EU:T:2010:256, § 38; 21/01/2015, T‑587/13, cat&clean, EU:T:2015:37, § 26). The element ‘Hotels’ in the contested sign, which is positioned in its centre, namely between ‘Living’ and ‘Signature’, does not go unnoticed and has no counterpart in the earlier mark. However, its distinctiveness is very limited, or rather non-existent (see above paragraph 33). Thus, the signs under comparison are found to be visually similar overall to an average degree.

37. Concerning the aural comparison, it must be stated that, by reason of the fact that the two coinciding word elements, namely those making up the earlier sign and those being the distinctive elements of the contested sign, are inverted, the pronunciation of the signs to be compared is not the same. At least a part of the consumers may also pronounce the descriptive element ‘Hotels’ in the contested sign. The fact that the syllables are pronounced in an inverted order cannot prevent the signs from being similar overall (11/06/2009, T‑67/08, InvestHedge, EU:T:2009:198, § 39; 09/12/2009, T‑484/08, Kids Vits, EU:T:2009:486, § 33 ; 25/06/2010, T‑407/08, Metromeet, EU:T:2010:256, § 40; 21/01/2015, T‑587/13, cat&clean, EU:T:2015:37, § 29). There is thus an average degree of phonetic similarity between the two signs taken as a whole.

38. Conceptually, neither sign, taken as a whole, has a clear and specific meaning. However, both signs contain the term ‘Living’, which is a regular English word. Moreover, the coinciding term ‘Signature’ refers to a person’s name written in a distinctive way or, more generally, to a unique identifier of something. It might be understood by a part of the relevant public in its secondary meaning as suggesting, in a rather vague way, exclusivity and luxury. Thus, in the minds of those consumers, overall both signs evoke the notion of a somewhat comfortable or even lavish lifestyle. Neither the inverting of the common terms, nor the existence of the element ‘Hotels’ in the contested sign diverts or alters this common notion. The signs are therefore conceptually similar, at least for a part of the relevant consumers, inasmuch as they allude to a luxurious lifestyle.

Distinctiveness of the earlier right

39. The inherent distinctiveness of the earlier mark, taken as a whole, is considered to be average, namely for those consumers, who do not attribute any suggestive meaning to the term ‘Signature’ in the context of the services at issue.

40. For the part of the public who understands the rather imprecise message of the earlier mark in suggestive manner, the inherent distinctiveness of the mark may be slightly lower than average (see above para. 38).

Overall assessment of the likelihood of confusion

41. The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

42. The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods and services covered. Accordingly, a low degree of similarity between those goods and services may be offset by a high degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

43. Furthermore, it needs to be taken into account that the consumer rarely has the opportunity to make a direct comparison between the different marks, but must place his/her trust in the imperfect recollection of them that he/she has kept in his/her mind (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 03/03/2004, T‑355/02, Zirh, EU:T:2004:62, § 41; 18/04/2007, T‑333/04 & T‑334/04, House of Donuts, EU:T:2007:105, § 44). The fact, that the most important difference between the signs under comparison lies in the inversion of their respective, distinctive word elements, but that those word elements, on their own, show in fact a great resemblance, makes it difficult for the relevant consumer to clearly distinguish between the signs (09/12/2009, T‑484/08, Kids Vits, EU:T:2009:486, § 32).

44. Moreover, while it is true that consumers normally pay more attention to the beginning of a sign, this rule does not apply in all cases and has to be balanced with the general principle, according to which the overall impression caused by the signs has to be taken into account when examine their similarities (05/02/2016, T‑135/14, kicktipp / KICKERS et al., EU:T:2016:69, § 142; 21/01/2016, T‑802/14, Lenah.C / LEMA, EU:T:2016:25, § 29; 23/04/2008, T‑35/07, Celia, EU:T:2008:125, § 37; 09/09/2008, T‑363/06, Magic seat, EU:T:2008:319, § 38; 23/09/2011, T‑501/08, See more, EU:T:2011:527, § 38).

45. In the case at hand, the services to be compared are identical. The signs are visually, phonetically and conceptually similar, bearing in mind that they share the identical distinctive word elements ‘Signature’ and ‘Living’. The additional word ‘Hotels’ of the contested sign plays a minor role when assessing the likelihood of confusion, for the reasons mentioned above (paragraph 33). The earlier mark enjoys an average degree of distinctiveness for the majority of the relevant public. Overall, the existence of the likelihood of confusion for these consumers has to be acknowledged. As the services concerned are identical, the mere inversion of the distinctive elements is not sufficient to enable the public to safely distinguish the respective signs.

46. With regard to the part of the relevant public who attribute a somewhat suggestive meaning to both signs, the inherent degree of distinctiveness of the earlier sign might be slightly below average (see paragraph 40). However, the distinctiveness of the earlier right is only one element to be taken into account in the global assessment of likelihood of confusion and cannot counteract the identity of the services and the overall similarity of the signs. Therefore, a likelihood of confusion can also be found for this part of the public.

47. The Opposition Division did thus not err when acknowledging the existence of a likelihood of confusion for the identical services in Class 43. The contested decision is therefore upheld and the contested application is refused registration on the basis of Article 8(1)(b) EUTMR for the services claimed in Class 43.

48. With regard to the remaining grounds claimed by the opponent before the Opposition Division, namely Article 8(1)(a) and Article 8(4) EUTMR, the assessment of those grounds could not procure any benefit to the applicant. Since the opposition was fully successful for the contested services on the basis of Article 8(1)(b) EUTMR, the remaining legal grounds can remain unassessed. Likewise, as likelihood of confusion is confirmed on the basis of the inherent distinctiveness of the earlier mark, the evidence of enhanced distinctiveness through extensive use in the United Kingdom does not need to be evaluated.

49. The appeal is rejected.

Costs

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

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

52. As to the opposition proceedings, the Opposition Division ordered each party to bear its own costs. This decision remains unaffected. The total amount for both proceedings is therefore EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs incurred by the opponent in the appeal proceedings amounting to EUR 550.

Signed G. Humphreys

Signed A. Pohlmann

Signed C. Govers

Registrar: Signed H.Dijkema