OPPOSITION No B 3 051 780

Hoti Star - Portugal Hotéis, S.A., Av. República, 85 - 1º Esq, 1050-190 Lisboa, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Soleilmotors, Piazza Grandi Giuseppe 19, 20129 Milano, Italy (applicant), represented by Giorgio Giorgi, Via Archimede 56, 20129 Milano, Italy (professional representative).

On 11/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 780 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 777 103 , namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 8 441 016 for the word mark ‘Soleil Hotels’. 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.

a) The services

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

Class 35: Advertising; business management; business administration; office functions.

The contested services are the following:

Class 35: Sale of vehicles.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 35

The contested services, sale of vehicles, refer to the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods. Such services may be provided by retail stores, wholesale outlets, electronic media or other means.

On the other hand, all the services listed in the class heading of Class 35, namely the opponent’s advertising, business management, business administration and office functions are aimed at supporting or helping other businesses to carry out or improve their business. They are therefore, in principle, directed at the professional public.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring a competitive advantage through publicity. Their nature is to assist and promote the client’s goods and/or services.

Business management services are usually rendered by specialist companies such as business consultants. The purpose of these companies is to provide businesses with the necessary support to acquire, develop and expand their market share. This might include efficient allocation of financial and human resources, communicating with the public, or researching consumer trends, for example.

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. The purpose of these services consists of helping businesses to efficiently manage their internal organisation of people and resources.

Office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. Their nature is to support the day-to-day operations of an organisation.

Therefore, the Opposition Division concludes that the contested sale of vehicles and advertising; business management; business administration; office functions are dissimilar. Their nature and intended purpose differs, they are not in competition with each other and the relevant public is also different. Somebody who wishes to buy a car, will not search for an advertising or business management company. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Contrary to the opponent’s arguments, the conflicting services are also not complementary. Services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). This is not the case here and, consequently, the opponent’s argument must be set aside.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Astrid Victoria WÄBER

Martin EBERL

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.