OPPOSITION No B 3 048 371

Leif Nüske, Contastraße 9, 20253, Hamburg, Germany and Oliver Korthals, Wupperstraße 47, 50859, Köln, Germany (opponents), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte PartG mbB, Theodor Heuss Straße. 1, 38122, Braunschweig, Germany (professional representative)

a g a i n s t

Hind Hotels and Properties Limited, 15/F Universal Trade Centre, 3 Arbuthnot Road, Central, Hong Kong (applicant), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 371 is upheld for all the contested services.

2. European Union trade mark application No 17 443 714 is rejected in its entirety.

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

REASONS

The opponents filed an opposition against all the services of European Union trade mark application No 17 443 714 (figurative). The opposition is based on German trade mark registration No 2 074 328 ‘MOJO’ (word). The opponents 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.

a) The services

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

Class 43: Services for providing food and drink in cafés, restaurants, party services or pubs.

The contested services are the following:

Class 43: Accommodation bureau services; rental of temporary accommodation; hotel services; hotel reservations; catering services; restaurant services; cafe services; cocktail lounges; providing food and drink in restaurants and bars; providing campground facilities.

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.

The contested restaurant services; cafe services; providing food and drink in restaurants are all different types of services for providing food and drinks, which are included in the opponents’ services for providing food and drink in cafés, restaurants. These services are, therefore, identical.

The contested catering services; cocktail lounges; providing food and drink in bars are services for providing food and drinks, which may among others be provided in relation to parties and similar celebrations. Consequently, they overlap with the opponents’ services for providing food and drink in party services and are identical to them.

Rental of temporary accommodation; hotel services; providing campground facilities of the applicant are or include, inter alia, temporary accommodation services. They are therefore similar to the opponents’ services in this class, since places for temporary accommodation often have restaurants or cafes, designated to offer food and drinks to their guests. Therefore, the providers of the compared services often coincide, as well as their relevant public and distribution channels.

The contested accommodation bureau services and hotel reservations are services for finding and providing temporary accommodation. It often happens that the respective temporary accommodation establishments have package offers that include accommodation and meals for a fixed price (as noted above, often the providers of temporary accommodation also run cafes and restaurants for their guests). In this context, the contested accommodation bureau services and hotel reservations include finding and booking of accommodation and meals for their respective users. In the light of those considerations, these services are similar to the services of the opponents in this class, because they may share the same purpose and relevant public, and they are furthermore complementary.

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 or similar are directed at the public at large. The degree of attention is considered to be average, since nothing in the way the services are provided, their price or possible impact requires particular attention or cautiousness.

c) The signs and the distinctiveness of the earlier mark

MOJO
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 element ‘MOJO’, that represents the entire earlier mark and the first element of the contested sign, has no meaning for the relevant public and hence – is of normal distinctiveness in relation to the services concerned.

In the light of the foregoing considerations, and since the opponents have not claimed enhanced distinctiveness of their mark, it is the normal inherent distinctiveness of the earlier mark that is to taken into account in the global assessment of the likelihood of confusion.

The element ‘NOMAD’, that is the second word element in the contested sign, is likely to be understood by the relevant public as referring to a nomad, i.e. ‘a member of a people that travels from place to place to find fresh pasture for its animals, and has no permanent home’. This is due to the closeness to the German equivalents, which are ‘Nomade’ (for male) and ‘Nomadin’ (for female). Contrary to the opponents’ view, the Opposition Division does not find that this word creates any descriptive connotations in relation to the services concerned. The opponents have not submitted any arguments or evidence in support, so that the Opposition Division understands the reasons underlying their position and possibly – accepts it. The distinctiveness of this element is therefore considered normal for the services at issue.

On account of its proportions in the sign’s overall composition, it is considered that ‘MOJO’ is the element of the contested sign that clearly stands out and attracts the attention upon visual perception.

Visually, the signs coincide in ‘MOJO’, which is the entire earlier mark and the first, out of two word elements, in the contested sign. Moreover, ‘MOJO’ is the dominant element in the contested sign, which, with its significantly bigger letters, bold font and position above the differing element ‘NOMAD’, immediately catches the attention of the reader.

In that context, the clearly secondary ‘NOMAD’, as well as the grey colour and stylised but not particularly imaginative font of the word elements, are not able to counteract the identified coincidence. Consequently, the signs are considered visually highly similar.

Aurally, there is an average degree of aural similarity between the signs, resulting from the identical pronunciation of the earlier mark and the first word element of the contested sign, namely of ‘MOJO’. The differing ‘NOMAD’ in the contested sign, positioned in the second place and of equal number of syllables as the coinciding element, is not capable of outweighing the similarity between the signs.

Conceptually, although the public in the relevant territory will perceive the meaning of the ‘NOMAD’ element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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) Global assessment, other arguments and conclusion

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).

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).

It has been established that the services are partially identical and partially similar. The relevant public is composed of the general public with an average degree of attention. The earlier mark has a normal degree of distinctiveness in relation to the services at issue. The signs have been found to be visually similar to a high degree and aurally similar to an average degree, while conceptually they are not similar, since the earlier mark does not evoke any concept in the relevant public.

Upon taking into account that the earlier mark is entirely contained in the first and dominant word element in the contested sign, it is considered that there is a likelihood of confusion with respect to all of the contested services.

While the differing element in the contested sign will be noticed, since likelihood of confusion covers not only situations where the consumer directly confuses the trade marks themselves, but also 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, it is highly conceivable that the relevant consumer will 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.

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 opponents 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 opponents 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

Mads Bjørn Georg JENSEN

Teodora Valentinova TSENOVA-PETROVA

Vita VORONECKAITE

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.