OPPOSITION No B 2 955 246

Thorsten Schermall, Potsdamer Str. 58, 10785, Berlin, Germany (opponent), represented by Irle Moser Rechtsanwälte Partg, Unter den Linden 32-34, 10117, Berlin, Germany (professional representative)

a g a i n s t

Sana Hotels and Resorts Limited, 93 Mill Street, QRM 3102 Qormi, Malta (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 955 246 is upheld for all the contested services.

2. European Union trade mark application No 17 126 814 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 17 126 814 for the figurative mark . The opposition is based on German trade mark registrations No 30 2017 000 146 for the word mark ‘40seconds’ and No 30 503 662 for the figurative mark . 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 two earlier trade marks. The Opposition Division finds it appropriate for procedural economy to first examine the opposition in relation to the opponent’s German trade mark registration No 30 2017 000 146, as it is not subject to the proof of use requirement.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 43: Catering of guests; Catering; Temporary rental of premises temporary, bureaus, conference facilities; Rental of meeting rooms; Accommodation of guests; Operation of a bar; Rental of furniture, household linen and table accessories; Rental of chairs, tables, table linen, glasses; Room service [hotels, pensions]; Rental of lighting equipment.

The contested services are the following:

Class 43: Provision of food and drink; Services for providing food and drink.

The Opposition Division does not agree with the applicant’s observations stating that the services are dissimilar. The contested provision of food and drink and services for providing food and drink include, as a broader category, the opponent´s catering. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

b) 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 public’s degree of attention is average (08/03/2019, R 1713/2018-5, Ilive / Welive et al., § 20).

c) The signs

40seconds
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 ‘40seconds’. 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).

The contested mark is a figurative mark depicting slightly stylised ’50 seconds’. Despite the applicant’s claim that it is represented in colour, the shade is so dark that it will most probably be perceived as black even by the most careful observer. The Opposition Division also notes that this quite simplistic depiction has rather a decorative function in the contested sign and will not detract the consumer’s attention from its numerical and verbal element.

The word ‘SECONDS’ will be understood by the German consumer as a unit of time, as it is very similar to its German equivalent, ‘Sekunden’ (15/10/2015, R 343/2015-5, 8 eight seconds (fig. mark) / seven seconds (fig. mark) et al., § 32).

Consequently, both signs will refer to a time measure, the only difference being that the earlier mark refers to 40 and the contested sign to 50 seconds.

In the present case, none of the marks has a meaning for the relevant services since taking into account the nature of the services in question it is not conceivable that they could be offered within 40 or 50 seconds. The time periods referred to in the signs has no clear meaning in relation to the services in question and, therefore, they enjoy a normal degree of distinctiveness in relation to them.

Visually, both signs consist of numerical and verbal elements and they coincide in eight out of nine characters placed in the same order, namely ‘*0seconds’. They differ in their first number, 4 versus 5 respectfully, and in the position of the elements and their slight stylisation in the contested sign.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SECONDS’, present identically in both signs. The relevant public will pronounce the numbers in the earlier mark as [ˈfɪrtsɪç] and in the contested sign - as [ˈfʏnftsɪç]. Therefore, the signs are also aurally similar on account of their initial and final phonemes belonging to their numbers.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with a similar meaning, namely a certain, rather short, period of time, which differs only in the exact number of seconds. The different first numbers ‘4’/‘5’ have a sequential character.

Therefore, the signs are conceptually similar to a high degree.

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

d) 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 precise 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.

e) 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 or services covered are from the same or economically linked undertakings.

The relevant services are identical and they target the public at large with an average degree of attention. The earlier mark has a normal distinctiveness.

The signs are aurally and conceptually similar to a high degree and visually similar to an above average degree.

In its observations, the applicant argues that the consumer will not confuse the numbers ‘4’ and ‘5’, even though they are correlative numbers. The Opposition Division respectfully disagrees with the applicant’s statement and points out that, in particular, from the fact that the relevant public keeps in mind only an imperfect picture of the marks, a likelihood of confusion in the minds of consumers cannot be ruled out in the present case, who will not be able to remember the exact number of seconds present in the signs. Indeed, the signs coincide in their relevant aspects, since they combine two numbers and the word ‘seconds’.

Furthermore, a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This principle applies to the present case because the services in question are identical.

Considering all the above and, in particular, the interdependence principle 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 German trade mark registration No 30 2017 000 146. It follows that the contested trade mark must be rejected in its entirety.

Furthermore, as the earlier right examined above 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 right invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268)

Likewise, given that the opposition is successful in its entirety, it is unnecessary to examine the evidence of use filed by the opponent in relation to the remaining earlier German trade mark registration No 30 503 662.

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

Monika CISZEWSKA

Stanislava STOYANOVA

Marta GARCÍA COLLADO

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.