OPPOSITION No B 3 034 405

Dan Hotels Ltd, 111 Hayarkon St, 63571 Tel Aviv, Israel (opponent), represented by Euromarks, PO Box 123, 1400 AC Bussum, Netherlands (professional representative)

a g a i n s t

HMG s.r.o., Hybernská 42/1674, 110 00 Praha, Czechia (applicant), represented by Jana Vysanska, Korunni 810/104, Building F, 101 00 Prague, Czechia (professional representative).

On 24/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 034 405 is upheld for all the contested services.

2. European Union trade mark application No 17 382 912 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 17 382 912 for the figurative mark , namely against all the services in Class 43. The opposition is based on, inter alia, German trade mark registration No 302 017 100 975 for the word mark ‘KING DAVID’. With regard to this earlier 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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 017 100 975.

a) The services

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

Class 43: Accommodation of guests; Room service; Booking accommodation for travellers; Services related to holiday accommodation; Guest service [guest accommodation]; Providing information on booking accommodation; Rental of furnished accommodation; Booking of rooms; Accommodation of tourists and tourists in hotels, hostels and pensions; Room service [hotels, pensions]; Booking of hotel rooms for travellers; Booking of hotel accommodation; Services of hotel accommodation; Room reservation in hotels; Operation of hotels; Operation of motels; Arranging of hotel rooms; Rental of premises, temporary offices, conference facilities; Accommodation of guests at meetings; Arranging accommodation at meetings; Rental of conference rooms; Rental of conference facilities; Rental of facilities for conferences; Rental of facilities for meetings; Provision of premises for congresses; Rental of rooms for exhibitions; Catering for guests; Banqueting service; Operation of a bar; Operation of bistros; Table reservation in restaurants; Catering for guests in cafeterias; Catering of guests in canteens; Catering of guests in clubs; Operation of cocktail bars; Catering for guests in delicatessen restaurants; Catering for guests in restaurants; Catering; Catering for the preparation of food; Hotel catering.

The contested services are the following:

Class 43: Hotel services; Hotel reservations; Hotel restaurant services; Information relating to hotels; Provision of hotel accommodation; Accommodation bureau services [hotels, boarding houses]; Hotel accommodation services; Restaurant services provided by hotels; Arranging of meals in hotels; Cocktail lounge services; Providing hotel and motel services; Hotel catering services; Hotel reservation services provided via the Internet; Booking agency services for hotel accommodation; Hotels, hostels and boarding houses, holiday and tourist accommodation; Electronic information services relating to hotels; Catering for the provision of food and beverages; Food and drink catering; Guesthouses; Bar services; Providing temporary accommodation.

Hotel catering services; bar services; hotel services are identically contained in both lists of services (including synonyms).

The contested catering for the provision of food and beverages; food and drink catering overlap with the opponent’s hotel catering. Therefore, they are identical.

The contested hotel accommodation services; provision of hotel accommodation; accommodation bureau services [hotels, boarding houses]; providing hotel and motel services; hotels, hostels and boarding houses, holiday and tourist accommodation; guesthouses; providing temporary accommodation; information relating to hotels; electronic information services relating to hotels; hotel reservations; hotel reservation services provided via the Internet; booking agency services for hotel accommodation are all included in the broad category of, or overlap with, the opponent’s services related to holiday accommodation. Therefore, they are identical.

The contested hotel restaurant services; restaurant services provided by hotels; arranging of meals in hotels overlap with the opponent’s catering for guests in restaurants. Therefore, they are identical.

The contested cocktail lounge services overlap with the opponent’s operation of cocktail bars. Therefore, they are identical.

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 or business customers. Even if the parties mostly wish to target Jewish customers, the public is not restricted to them, as the services at issue could be described as various accommodation services and provision of food and drinks in different venues. Therefore, contrary to what the applicant claims, the target consumers of both marks are the same. It must be noted that, when assessing the nature of the services, the Opposition Division takes into account the wording indicated in the lists of services (which is essentially accommodation services and the provision of food and drinks). Any actual or intended use not stipulated in the list of goods (e.g. kosher services) is not relevant, since it is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the assessment of the average consumers of the services at issue will be made in relation to the services listed in general, not the specific characteristics of the services actually provided or intended to be provided.

The degree of attention of the abovementioned public is average.

c) The signs

KING DAVID
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 relevant public will understand the verbal element ‘KING’ of both marks (which is a basic English word) as ‘a male sovereign… who is the official ruler of an independent state’ (information extracted from Collins Dictionary on 07/01/2019 at https://www.collinsdictionary.com/dictionary/english/king). However, this element on its own (or together with descriptive verbal elements) is also frequently used to denote something having superior quality and, therefore, has some laudatory connotations (20/09/2011, T‑99/10, Tofuking, EU:T:2011:497, § 26). The coinciding verbal element ‘David’ will be regarded a male name. Bearing in mind that it has no meaning in relation to the relevant services, it is considered distinctive. Moreover, the verbal elements ‘KING’ and ‘DAVID’ will most likely be perceived as a whole, as ‘KING DAVID’, which brings to mind the second king of the Hebrews, who united Israel as a kingdom with Jerusalem as its capital. In this case, the distinctiveness of this word combination, as a whole, is normal.

The verbal element ‘HOTEL’ of the contested mark will be understood as having the same meaning as in English. In relation to the relevant services, ‘HOTEL’ may indicate their characteristics, such as their nature, being hotel services, or the place where the services are rendered, namely that the provision of food and drink takes place at a hotel. Therefore, this verbal element directly describes the services in question and is considered non-distinctive.

The same applies to the verbal element ‘BOUTIQUE’. Together with the verbal element ‘HOTEL’, this element merely informs the public that the services at issue are rendered at a boutique hotel, that is, a small, stylish, high-quality hotel.

The verbal element ‘PRAGUE’ will be understood by the relevant public as the name of the city where the services are rendered. This is because this English word is very close to ‘Prag’, the equivalent word in German. Therefore, this element must be considered non-distinctive.

The figurative element of the contested mark that depicts a crown, merely reinforces the verbal element ‘KING’ of the contested sign. Moreover, this element is commonly used to denote luxury or superior quality and, therefore, has a laudatory connotation. Therefore, it is considered that the distinctiveness of this element is weak. Moreover, 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 contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their distinctive verbal elements ‘KING DAVID’. They differ in the non-distinctive elements ‘PRAGUE BOUTIQUE HOTEL’ of the contested sign, which, in addition, because of their very small size, have a very limited impact on the visual impression created by the contested mark. Moreover, the signs differ in the figurative depiction of a crown and the general composition of the contested mark.

Taking into account that the earlier mark is fully reproduced in the contested mark as its only distinctive verbal element, which is, moreover, placed in a central position in the mark (and will therefore attract the public’s attention), the signs are visually similar to a high degree.

Aurally, it must be kept in mind that marks which include several words will be generally abbreviated orally to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). In the present case, for the contested sign, the public will pronounce only the verbal elements ‘KING DAVID’, as the remaining verbal elements are non-distinctive and depicted at the bottom of the trade mark in a very small font.

Therefore, the signs are aurally identical, as both marks will be referred to as ‘KING DAVID’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with King David, the signs are conceptually identical in that respect. The additional elements of the contested sign are not sufficient to differentiate the marks. The non-distinctive element ‘PRAGUE BOUTIQUE HOTEL’ will not be regarded as identifying the commercial origin of the goods. The laudatory figurative element of the contested sign, depicting a crown, only reinforces the concept of a king. Therefore, the signs are, as a whole, conceptually at least 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the services are identical. The relevant public’s degree of attention is average. The signs are visually highly similar, aurally identical and conceptually similar to at least a high degree.

The signs coincide in the words ‘KING DAVID’, which are the only elements of the earlier mark and the sole distinctive verbal elements of the contested sign. Consequently, the marks have the concept of a historical Hebrew king in common. In the Opposition Division’s view, the additional figurative element of a crown in the contested sign only reinforces the abovementioned concept and will therefore not help consumers to differentiate between the marks. Moreover, as stated above, the public will generally pay less attention to the figurative element of the sign. Furthermore, adding the very small, non-distinctive elements ‘PRAGUE BOUTIQUE HOTEL’ to the earlier mark does not create a difference that will allow consumers to differentiate between the marks.

For the sake of completeness, it must also be noted that the fact that the applicant owns earlier national registrations of identical or similar trade marks in Czechia is irrelevant in this case, as is any background information on the applicant’s and opponent’s businesses. Likewise, the validity of the earlier mark is not the subject matter of these proceedings. Therefore, it is not for the Opposition Division to assess whether the earlier mark has been registered in good or bad faith. While the registration of the earlier mark is in force, it must be considered fully enforceable against the contested mark.

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 German trade mark registration No 302 017 100 975. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the aforementioned earlier German trade mark 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

Renata COTTRELL

Marta Maria CHYLIŃSKA

Tu Nhi VAN

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.