OPPOSITION No B 2 918 814

GRAN CHEF, S.L., Comte d'Urgell, 230, 08036 Barcelona, Spain (opponent), represented by CURELL SUÑOL S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

JAZZ HOTEL S.r.l., Via Montale 19, 07026 Olbia, Italy (applicant), represented by UFFICIO BREVETTI RAPISARDI S.R.L., Via Serbelloni 12, 20122 Milano, Italy (professional representative).

On 25/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 002918814 is upheld for all the contested services, namely

Class 43: Providing food and drink; temporary accommodation; booking of hotel accommodation.

2. European Union trade mark application No 16 503 121 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.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 503 121 for the figurative mark namely against all of the services in Class 43. The opposition is based, inter alia, on Spanish trade mark registration No 2 471 396 for the word mark HOTEL JAZZ. 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 Spanish trade mark registration No 2 471 396.

1. The services

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

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

The contested services are the following:

Class 43: Providing food and drink; temporary accommodation; booking of hotel accommodation.

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 43

The contested providing food and drink; temporary accommodation are identical to services for providing food and drink; temporary accommodation in the earlier mark.

The contested booking of hotel accommodation is identically contained within the opponent’s broader category of temporary accommodation.

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 directed at the public at large.

The degree of attention is considered average.

3. The signs

HOTEL JAZZ
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 earlier mark is a word mark consisting of two elements, ‘HOTEL’ and ‘JAZZ’, the first being a place for temporary accommodation, often with food and drink provided and the second a music genre. Both elements would be understood by the Spanish relevant public as they are part of the Spanish vocabulary. However a significant part of the relevant public would not necessarily combine these two elements to a concept of for instance a hotel where jazz is played. The relevant public would rather conceive the sign as “a hotel that carries the name Jazz”. To the relevant Spanish audience the correct way of indicating a hotel where jazz is played would be “Hotel de Jazz”. As the element ‘HOTEL’ would merely be seen as an indication of the place where the services are rendered and the element ‘JAZZ’ would be seen as the name of the hotel and not as a descriptive element, ‘JAZZ’ would the distinctive part of the mark

The contested sign is a figurative mark consisting of the element ‘JAZZHOTEL’’ as the most eye catching. It further contains a figurative element resembling the letters ‘jh’ written in a fanciful way reminding of handwriting. The sign also contains four dots horizontally in line.

As for the earlier mark the contested sign contains the elements ‘JAZZ, and ‘HOTEL’ but in reversed order. As both ‘JAZZ’ and ‘HOTEL’ are in the Spanish vocabulary, it would be natural to split them into two elements ‘JAZZ’ and ‘HOTEL’. The relevant population would understand the two words separately but not combine them to a concept of a jazz-themed hotel as would be the case in for instance English speaking countries. As discussed above for the earlier mark, the element ‘JAZZ’ and not ‘HOTEL’ would be the distinctive part. JAZZHOTEL is also the most eyecatching part of the sign due to its size and place within the mark.

The figurative elements at the top of the sign resemble the letters ‘jh’, and although highly stylised will, by part of the relevant public be perceived as the letters J and H, as an acronym for ‘JazzHotel’ and have distinctive character . However, it must also be remembered 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 four dots is a commonly used decorative element in trade and therefore of limited distinctive character.

Visually, the signs coincide in the words ‘JAZZ’ and ‘HOTEL’ these two elements form the entire word mark and form the most eye-catching part of the contested sign. However, they differ in the fact that the elements ‘JAZZ’ and ‘HOTEL’ are reversed. They also differ in the figurative elements ‘jh’ and the four dots, but these elements, have little impact for the reasons explained above.

The reverse order of the words is of very little importance, as the verbal elements of which the signs are composed of are identical. It follows that the two signs will be recognized by the public as a combination of those elements and the relevant public will not remember the exact order of the elements due to the great similarity of those elements (see for instance 09/12/2009, T-484/08, Vits4Kids,EU:T:2009:486, § 32).Therefore, and since the other elements of the contested sign are very weak, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the words ‛hotel’ and ‘jazz’, present identically in both signs. Only the order of the pronunciation differs. Therefore, the signs are highly similar, as the components of both marks will be pronounced identically and the reverse order of the two verbal elements cannot change the overall aural similarity of the signs (see for instance 09/12/2009, T-484/08, Vits4Kids,EU:T:2009:486, § 33). The element ‘jh’ in the contested sign would not be pronounced when verbal reference is made to the sign. The reason for this is that only part of the relevant public would actually recognise the element as letters. Furthermore, even if they did, they would recognise the letters as an acronym, which would not be pronounced, especially since the eye-catching part of the sign are the words ‘JAZZHOTEL’ to which they refer

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Both ‘JAZZ’ and ‘HOTEL’ present in the signs would create the same concepts. As for the element ‘jh’ it would merely be seen as an acronym referring to ‘JazzHotel’. Therefore the signs are conceptually identical.

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, in respect of the relevant Spanish public

5. Global assessment, other arguments and conclusion

Account is 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).

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).

In the present case, the services are identical and the signs are visually and aurally highly similar and conceptually identical. Both the earlier mark was considered to have a normal distinctive character. Of the common elements ‘JAZZ’ and ‘HOTEL’, ‘JAZZ’ would be the more distinctive as it by the relevant Spanish public would be a reference to the name of the hotel, whereas the element ‘HOTEL’ would merely indicate the place where the services are rendered. Furthermore, the relevant public was the general public, which is, usually, more prone to confusion.

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 2 471 396. It follows that the contested trade mark must be rejected for all the contested services.

It may proceed for the remaining non contested goods and services.

As the earlier right Spanish trade mark registration No 2 471 396 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, namely Spanish trade mark registration no 3 616 233, namely the figurative mark ‘HOTEL JAZZ’ (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

Adriana VAN ROODEN

Torben Niels-henrik Engholm KRISTENSEN

Michele M. BENEDETTI-ALOISI

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.