OPPOSITION Nо B 3 055 057

OPPOSITION DIVISION

OPPOSITION Nо B 3 055 057

Shangri-La International Hotel Management Limited, Trident Chambers P.O. Box 146, Road Town, Tortola, British Virgin Islands (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)

a g a i n s t

Interstorm (Malta) Ltd, Villa Seminia, 8, Sir Temi Zammit Avenue, Xbx 1011 Ta' Xbiex, Malta (applicant), represented by Ganado Advocates, 171, Old Bakery Street, Vlt 1455 Valletta, Malta (professional representative).

On 06/10/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 055 057 is partially upheld, namely for the following contested goods and services in Classes 9 and 41:

Class 9: Interactive software; Interactive DVDs; Interactive computer software; Interactive game software; Interactive entertainment software; Interactive multimedia computer programs; Interactive compact discs and CD-ROMs; Interactive entertainment software for use with personal computers; Interactive multimedia computer game programs; Interactive computer game programs; Interactive video game programs; Interactive multimedia game programs; Computer programs for using the internet and the worldwide web; Computer programmes for use in telecommunications; Computer programs for video and computer games; Interactive multimedia software for playing games; Software; Computer programs used for electronic cash register systems; Computer programs for connecting remotely to computers or computer networks; Computer programs [downloadable software]; Computer application software featuring games and gaming; Entertainment software; Software for online messaging; Data communications software; Software downloadable from the internet; Multimedia software; Betting software; Computer software for communicating with users of hand-held computers; Computer software for wireless network communications; Interactive computer software enabling exchange of information; Computer software for the administration of on-line games and gaming; Downloadable computer software for the transmission of data; Computer software for wireless content delivery; Computer software for entertainment; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software downloaded from the internet; Downloadable computer software for the transmission of information; Downloadable software; Computer software to enable the provision of electronic media via the Internet; Computer software to enable the provision of electronic media via communications networks; Computer software to enable the provision of information via communications networks; Computer software to enable the provision of information via the Internet; Computer game software downloadable from a global computer network; Computer software that permits games to be played; Computer software in the field of electronic publishing; Interactive video software; Data recorded electronically; Recorded data [magnetic]; Multimedia software recorded on CD-ROM; Video game programs; Games software; Downloadable computer games; Computer software, recorded; Data processing programs; Downloadable electronic game programs; Downloadable computer game programs; Computer games programmes downloaded via the internet [software]; Game programs for arcade video game machines; Video games [computer games] in the form of computer programs recorded on data carriers; Computer software for the monitoring of computer systems; Prerecorded CD-ROMs; Downloadable publications; Electronic publications, downloadable; Electronic publications recorded on computer media; Electronic publications, downloadable, relating to games and gaming.

Class 41: Gambling services; Providing of casino and gaming facilities; Conducting multiple player games of chance; Providing casino facilities [gambling]; Horses (Betting on -); Organization of lotteries; Bookmaking [turf accountancy]; Prize draws [lotteries]; Provision of online information relating to game players; Providing casino facilities; Provision of information relating to racehorses; Provision of information relating to racing; Racing information services; On-line casino services; Casino services; Casino, gaming and gambling services; Wagering services; Betting exchange services; Betting services; Football pools services; On-line gambling services; Sporting results services; Bingo hall services; Bingo services; Services for the operation of computerised bingo; Conducting horse races; Dog races; Arranging of demonstrations for entertainment purposes; Arranging and conducting of meetings in the field of entertainment; Education and training in the field of music and entertainment; Entertainment provided via a global communication network; Entertainment provided by cable television; Providing information about sporting activities; Club recreation facilities (Provision of -); Providing facilities for entertainment; Providing amusement arcade services; Providing on-line video games; Provision of on-line computer games; Providing on-line interactive computer games; Provision of games by means of a computer based system; Providing games; Providing a computer game that may be accessed by users on a global network and/or the internet; Providing slot machine parlors; Provision of information relating to television programmes; Provision of information relating to sports persons; Provision of information relating to movies; Providing online information on computer and video game strategies; Providing on-line information in the field of computer gaming entertainment; Providing information on entertainment through computer networks; Providing information in the field of entertainment by means of a global computer network; Cabarets and discotheques; Planning of shows; Information relating to entertainment, provided on-line from a computer database or the internet; Recreation information; Information relating to computer gaming entertainment provided online from a computer database or a global communication network; Entertainment information; Internet games (non-downloadable); Organising and conducting lotteries; Organizing and arranging exhibitions for entertainment purposes; Organisation of entertainment services; Organisation of entertainment and cultural events; Organization of cosplay entertainment events; Organising events for entertainment purposes; Arranging of visual and musical entertainment; Organising of sports competitions and equestrian contests; Arranging of contests; Organising of sporting events, competitions and sporting tournaments; Organising of recreational events; Organisation of recreational activities; Organising of entertainment; Organisation of group recreational activities; Organisation of recreational tournaments; Arranging of presentations for entertainment purposes; Organising of meetings in the field of entertainment; Hosting of fantasy sports leagues; Arranging and conducting of entertainment activities; Arranging and conducting of sports events; Production of cabarets; Provision of audio and visual media via communications networks; Provision of online information relating to audio and visual media; Cable television programming [scheduling]; Providing facilities for game shows; Provision of leisure facilities; Provision of amusement facilities; Provision of entertainment facilities; Providing video entertainment via a website; Provision of on-line entertainment; Providing online entertainment in the nature of game shows; Providing online entertainment in the nature of game tournaments; Providing online entertainment in the nature of fantasy sports leagues; Provision of news relating to sport; Provision of recreational events; Providing leisure and recreation facilities; Providing information, commentary and articles in the field of music via computer networks; Provision of information relating to entertainment online from a computer database of the Internet; Providing information on-line relating to computer games and computer enhancements for games; Providing information to game players about the ranking of their scores of games through the web sites; Provision of recreation information; Provision of entertainment information via the Internet; Provision of entertainment information by electronic means; Providing entertainment information; Information about entertainment and entertainment events provided via online networks and the Internet; Provision of entertainment information via television, broadband, wireless and on-line services; Provision of non-downloadable films and television programs via pay television; Provision of non-downloadable films and television programs via pay-per-view television channels; Provision of recreational areas; Providing sports entertainment via a website; Provision of entertainment services through the media of publications; Providing newsletters in the field of computer games via e-mail; Providing interactive multi-player computer games via the internet and electronic communication networks; Providing a computer game that may be accessed network-wide by network users; Provision of rooms for entertainment; Entertainment services for sharing audio and video recordings; Entertainment, education and instruction services; Cruise ship entertainment services; Gaming machine entertainment services; Entertainment services in the nature of organizing social entertainment events; Entertainment services in the nature of competitions; Video game entertainment services; Entertainment services by stage production and cabaret; Entertainment services; Discotheque services; Entertainment services relating to sport; Entertainment services relating to competitions; Entertainment provided via the internet; Entertainment services provided at country clubs; Entertainment services provided at nightclubs; Entertainment services provided at a race track; Popular entertainment services; Entertainment provided during intervals of sporting events; Entertainment services provided on-line from a computer database or the internet; Entertainment services provided at discotheques; Interactive entertainment services; Video arcade services; Club [discotheque] services; Cabarets; Information and advisory services relating to entertainment; Information services relating to recreation; Instructional and training services; Electronic games services, including provision of computer games on-line or by means of a global computer network; Electronic game services and competitions provided by means of the internet; Electronic game services provided by means of the internet; Electronic games services provided by means of a global communication network; Electronic games services provided from a computer database or by means of the internet; Electronic games services provided via a global computer network; Night club services [entertainment]; Nightclub services [entertainment]; Provision of club entertainment services; Social club services for entertainment purposes; Club [cabaret] services; Club services [entertainment or education]; Poker game services; Computer and video game amusement services; Game services provided on-line from a computer network; Gaming services for entertainment purposes; On-line gaming services; Games services provided via computer networks and global communication networks; Entertainment services in the nature of sporting events; Play schemes [entertainment/education]; Arranging and conducting of educational events; Education, entertainment and sports; Arranging of conventions for entertainment purposes; Arranging of games; Arranging and conducting of games; Arranging and conducting of competitions [education or entertainment]; Arranging and conducting competitions; Arranging of competitions for education or entertainment; Organization of competitions [education or entertainment]; Organisation of games and competitions; Organisation of competitions and awards; Organising of entertainment competitions; Arranging and conducting of sports competitions; Organising of racing competitions; Organization of electronic game competitions; Organisation of sports tournaments; Arranging of competitions for entertainment purposes; Organisation of e-sports competitions; Organization of competitions; Conducting of competitions on the Internet; Sporting and recreational activities; Provision and management of sporting events; Provision of social club services; Provision of information relating to sporting events; Providing facilities for sports events; Country clubs providing sporting facilities; Organisation of sporting events; Organization of sports competitions; Organising of sporting activities and of sporting competitions; Provision of sporting club facilities; Provision of information relating to sports; Provision of information relating to motor racing; Provision of information relating to jockeys; Providing online newsletters in the fields of sports entertainment; Sports club services; Educational services relating to sports; Advisory services relating to the organisation of sporting events; Tournaments (Staging of sports -); Conducting of sports events; Officiating at sports contests; Sporting services; Production of sporting events; Sporting and cultural activities; Providing sports facilities; Sport camp services; Sporting education services; Entertainment, sporting and cultural activities; Booking of sports facilities; Information relating to sports education; Timing of sports events; Providing facilities for sports recreation; Providing facilities for sports tournaments; Organization of sport fishing competitions; Production of sporting events for television; Education, entertainment and sport services; Providing facilities for sporting events, sports and athletic competitions and awards programmes; Provision of sports and recreational services; Organisation of events for cultural, entertainment and sporting purposes; Online interactive entertainment; Providing recreation facilities; Booking of seats for shows and sports events; Ticket information services for sporting events; Ticket procurement services for sporting events; Ticket reservation and booking services for sporting events; Ticket reservation and booking services for recreational and leisure events; Providing electronic publications from a global computer network or the Internet, not downloadable; Providing on-line publications; Providing publications from a global computer network or the internet which may be browsed; Providing on-line electronic publications, not downloadable; Provision of electronic publications (not downloadable); Providing on-line non-downloadable general feature magazines; provision of an online magazine featuring information in the field of computer games; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information.

2.	European Union trade mark application No 17 869 011 is rejected for all the above goods and services. It may proceed for the remaining goods and services in Classes 9, 38 and 41, namely:

Class 9: Network communication apparatus; Interactive terminals; Interactive databases; Interactive video apparatus; Interactive computer systems; Interactive data transfer apparatus; Computer hardware; Data communications hardware; Computer hardware for telecommunications; Computers and computer hardware; Computer hardware for games and gaming; Time clocks [time recording devices]; Timing apparatus; Time delay generators; Time recording apparatus; Electronic timing control instruments; Electronic timing apparatus; Time measuring instruments (not including clocks and watches); Computer systems; Data processing systems; Data processing equipment and accessories (electrical and mechanical); Coin-operated mechanisms; Digital tablets.

Class 38: All the services included in this class.

Class 41: Publication of printed matter and printed publications; On-line publication of electronic books and journals; Publishing of electronic publications; Publication of periodicals and books in electronic form; Publishing by electronic means; Publication of leaflets; Electronic online publication of periodicals and books; Publishing of web magazines; Publication of electronic books and periodicals on the Internet; Publication of books relating to entertainment; Publication of online reviews in the field of entertainment; Publication of electronic magazines; Publication of newspapers, periodicals, catalogs and brochures; Publication of magazines; Publication of multimedia material online; Publication of material which can be accessed from databases or from the internet; Publishing of magazines in electronic form on the Internet.

3.	Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services in Classes 9, 38 and 41 of European Union trade mark application No 17 869 011 ‘PLAYSHANGRILA’ (word mark). The opposition is based on EUTM registration No 3 426 988 ‘SHANGRI-LA’ (word mark) in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In addition, the opponent invoked Article 8(4) EUTMR in relation to the trade name ‘Shangri-La Hotel’ and the domain name ‘shangri-la.com’, ‘shangri-la.com/fr/paris/shangrila/’, used in the course of trade in France.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 3 426 988 ‘SHANGRI-LA’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

In relation to the scope of the request for proof of use, on 12/08/2019 the applicant made, by way of a separate document in line with Article 10(1) EUTMDR, the following explicit, unambiguous and unconditional statement:

In accordance with Article 47(2) EUTMR and also Article 10(5) EUTMDR, the Applicant hereby requests that the Opponent provide proof of use of its cited earlier trade mark, that is EUTM no. 003426988, in connection with each of its goods and services included in Class 35 and Class 41, as follows:

and clearly listed the full list of services covered by the earlier mark in Classes 35 and 41. Therefore, the applicant’s statements submitted at a later stage on 12/03/2020 claiming that the opponent had to prove use for all the goods and services on which the opposition is based, is unfounded. Although in its letter of 28/08/2019 the Office invited the opponent to submit proof of use ‘for all the goods/services on which the opposition is based’, it is clear from the request for proof of use submitted by the applicant on 12/08/2019 (text cited above), duly forwarded to the opponent on 28/08/2019, that the proof of use refers only to the services in Classes 35 and 41. Since the request for proof of use must be made within the first time limit for the applicant to reply to the opposition under Article 10(2) EUTMDR, which lapsed on 17/08/2019, it is not possible to take into account the opponent’s observations of 12/03/2020, as a request for proof of use also for the services in Class 43.

The date of filing of the contested application is 07/03/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 07/03/2013 to 06/03/2018 inclusive.

Furthermore, the evidence must show use of the trade mark for the services for which proof of use was requested and on which the opposition is based, namely the following:

Class 35: Business management including management of hotels, motels, apartment and condominium services, guest house/accommodatio ...Show moren, spa, beauty salons, bar, café, cafeteria, coffee shop, catering, restaurants, clubs, wine bars, cocktail lounges and snack bar for others; provision of business services and business information; promotional and advertising services; advertising agency services; outdoor advertising, demonstration of goods, dissemination of advertising matter, distribution of samples, shop window dressing; updating of advertising material; rental of advertising space; services of publicity; organisation of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; professional business consultancy; business organisation consultancy; business research; economic forecasting; business management assistance for the sale of goods, business management consultancy for the sale of goods, commercial management assistance for the sale of goods; sales promotion; retailing services, direct selling services by home party, wholesaling services, department store and supermarket retailing services; grocery store retailing services; provision of information, advisory and consultancy services relating to all the aforesaid services.

Class 41: Providing amusement arcade services; booking seats for shows; providing casino facilities; photography services; publication of books and journals; zoological gardens; arranging and conducting conferences, congresses, seminars; magic shows, concerts and festivals, live music shows, variety shows, comedy show being live performances or distributed over television, cable satellite, audio and video media; art gallery services, fun fair services; providing facilities for singing with pre-recorded background music and with lyrics shown on monitor; audio and video recording services; rental of video recorders, video cassettes, laser discs and laser disc players, compact discs and compact disc players; organising and conducting competitions, fashion shows, tournaments and beauty contests; provision of squash, tennis, golf games and amusement facilities; rental of games and sport apparatus; cinema services, club entertainment services, nightclub and discotheque services, laser show services, singing services; theatre production and ticket agency services; health clubs, provision of swimming and gymnastic facilities; organising of wine tastings; club dinning services; provision of information, management, consultancy and advisory services for the aforesaid services.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 28/08/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 02/11/2019 to submit evidence of use of the earlier trade mark. The term was extended at the opponent’s request until 02/01/2020. On 31/12/2019, within the time limit, the opponent submitted evidence of use (Item I to X, listed below). Furthermore, the opponent had previously submitted other evidence of use in its observations of 10/05/2019 (Annexes 1.1 to 1.17 and Annexes 2 to 6), which the Opposition Division will also list and take into account in its examination.

The evidence consists of the following:

Item I Two Wikipedia excerpts (8 pages) about ‘Shangri-La hotels and Resorts’ (5 pages) and about ‘Shangri-La Hotel Paris’ (3 pages). It is mentioned that the company Shangri-La hotels and Resorts has over 100 luxury hotels and resorts with over 40,000 rooms in Africa, Asia, Europe, the Middle East, North America and Australia. The EU hotels are two, namely ‘Shangri-La Hotel, Paris’ (opened on 17/12/2010) and ‘Shangri-La Hotel, At The Shard, London’.

Item II Press release of 13/03/2019 from www.marketwatch.com (9 pages) titled ‘Luxury Hotel Market Share, Size, Trends, Segmentation & Growth Analysis 2019-2024 | Marriott International, Hilton, Hyatt, Shangri-La, Four Seasons Holdings Inc.’. It is mentioned, inter alia, that the top five companies make up more than 26.37% market share of the luxury hotels market, and the world's large enterprises are mainly concentrated in North America.

Item III Brochure (undated) from the opponent’s Shangri-La hotel in Paris (78 pages). The brochure shows pictures and detailed information in relation to, inter alia, the availability of function rooms for weddings, conferences, cocktails, seminars, receptions or banquets, etc., including details such as size, capacity, floor plan, menu and food options (prices indicated in EUR). The brochure also shows offers, including prices thereof, for provision of related services such as wine tasting presentations, cocktail services, flower arrangement, audiovisual equipment rental, technical assistance thereof, live music entertainment services (DJ, pianist, jazz trio, harpist), photographer services, spa and swimming pool, etc.

Item IV Brochure (undated) from the opponent’s Shangri-La hotel in Paris (40 pages) presenting the hotel’s wedding celebration services (function rooms, capacity, wedding packages with prices thereof, photographer services, live music entertainment services (DJ, pianist, jazz trio, harpist, etc.).

Item V ‘Chi, the spa at Shangri-La Paris, Treatments and Ceremonies’ (16 pages) leaflet/brochure (undated) showing the availability with prices thereof of services such as beauty and facial treatments, massage and body treatments, coaching (fitness, swimming lessons, aqua gym and aerobics, etc.), including fees for quarterly, bi-annual, annual and duo annual subscriptions, opening hours and policies (cancellation, reservation, what to wear, late arrivals, children, mobile phone, etc.).

Item VI Press articles (17 pages) about the Shangri-La hotel in London dated 2014, 2015 and 2017 published in media, such as the Daily Mirror, Evening Standard, GQ, London Financial Times, Forbes (Brazil), Homefront (Canada), Eva Air inflight magazine, etc. The articles mention, inter alia, the opening of Shangri-La hotel in London in 2014, celebrations and events spaces availability, reception capacities, availability of ‘entire floor dictated to meetings, presentations and small conferences’, gym and swimming pool, etc.

Item VII Press articles and advertisement (39 pages) in relation to the Shangri-La hotel in Paris, dated 2010, 2011 and 2014, published in media, such as the Conference & Incentive

Travel Magazine, the Irish Independent, Esquire Middle East, www.hospitalitynet.org, Sunday Times UK, Tatler Russia, Robb Report Russia, Royal Road Japan, Conde Nast Traveller, etc.

Item VIII Two articles (23 pages) from the website www.frenchweddingstyle.com, dated 31/01/2017 and 24/10/2017, titled ‘A destination Shangri-La Wedding in Paris’ and ‘Ten of the coolest Paris wedding venues’.

Item IX Invoices (20 pages) issued in 2017, 2018 and 2019 to clients by the Shangri-La Hotel at the Shard London in relation to provision of events services, itemized as for example as ‘banquet-corporate service charge’, ‘banquet-corporate food’, ‘banquet-corporate service charge’, ‘banquet-public rooms’, ‘banquet Groups/Conventions Service Charge’, ‘Banquet-Misc.’, etc. The amounts invoiced range from several hundred to several thousand GBP.

Item X ‘Meetings and events Brochure’ (23 pages) of the Shangri-La Hotel at the Shard in London. The brochure contains pictures and information in relation to, e.g. the availability of rooms/venues for meetings, weddings and social events, swimming pool facility, etc. (including capacity, floor plans, etc.).

Evidence of 10/05/2019 (81 pages)

Annex 1.1: (8 pages) Wikipedia excerpt entry for ‘Shangri-La hotels and Resorts’.

Annex 1.2: (7 pages) Extract from Forbes.com in relation to Shanri-La Asia referring to 2014, an extract from Conde Nast Traveler website showing a review of the Shangri-La Paris hotel dated 2018 and extract from vogue.com dated 30/09/2013 showing an article titled ‘Paris beauty escape: The Shangri-La Spa and Pool’.

Annex 1.3: (2 pages) Press release from www.shangri-la.com/corporate dated 23/02/2018 titled ‘New Shangri-La Mobile App Offers Triple Points For Golden Circle Members’.

Annex 1.4: (1 page) Extract from the website www.rankingthebrands.com showing the following about ‘Shangri-La’

Annex 1.5: (3 pages) Article titled ‘Travel + Leisure, Conde Nast Traveler Award 14 Shangri-la Hotels’ taken from www.elitetraveler.com referring to rankings by readers of Conde Nast Traveler’s U.S. edition in 2010.

Annex 1.6: (4 pages) Printout from https://brandirectory.com/rankings/hotels-50-2017 showing that ‘Shangi-La’ ranked 10th in 2016 and 2017. There is no information about the methodology behind the ranking, whether it refers to a worldwide ranking or it is region-based, etc.

Annex 1.7: (1 pages) Press release from www.shangri-la.com/fr/vancouver dated 02/07/2014 titled ‘Travel + Leisure Readers Rank Shangri-La Hotel, Vancouver Top City Hotel in Canada’.

Annex 1.8: (2 pages) Press release from the opponent’s page www.shangri-la.com/paris listing recent awards given to Shangri-La in the world.

Annex 1.9: (4 pages) Press release of 13/03/2019 from www.marketwatch.com titled ‘Luxury Hotel Market Share, Size, Trends, Segmentation & Growth Analysis 2019-2024 | Marriott International, Hilton, Hyatt, Shangri-La, Four Seasons Holdings Inc.’. it is mentioned, inter alia, that the top five companies make up more than 26.37% market share of the luxury hotels market, and the world's large enterprises are mainly concentrated in North America.

(2 pages) Press release dated 28/10/2015 from the opponent’s www.shangri-la.com/corporate titled ‘Shangri-La Launches Global Sales Tool Of The Future’.

Annex 1.10: (4 pages) Article from www.reuters.com titled ‘Global Luxury Hotel Market Analysis 2019 by Size, Share, Trends, Segmentation and Vendors, Industry Overview, Demand, Customer Behavior and Forecast 2024’ mentioning that the company Shangri-La International Hotel Management Ltd. is amongst the top five players in the global luxury hotel market occupying global market share of 1.24% in 2017. It is mentioned that the United States was the largest consumer market (of luxury hotel market) in 2017, followed by China and Europe.

Annex 1.11: (6 pages) Printout from https://martinroll.com referring to 2016 showing an article titled ‘Shangri-La Hotels and Resorts – Bringing Asian Hospitality To The World’. It is mentioned, inter alia, that Shangri-La Hotels is considered a strong and iconic leader in luxury hotel ownership and hospitality management in Asia today. No information is found on the EU.

Annex 1.12: (4 pages) Extract from https://medium.com/@xm335/ showing an article dated 02/08/2017 about Shangri-La Hotel at the Shard London.

Annex 1.13: (4 pages) Press article from the NY Times dated 22/01/2010 titled ‘Asian Hotel Brands Make the Journey to Europe’ mentioning, inter alia, that The first European Shangri-La Hotel will open near the Trocadero, in what was once the palace of Prince Roland Bonaparte, Napoleon Bonaparte’s grandnephew.

Annex 1.14: (14 pages) Printout from www.forbestravelguide.com showing a ‘Shangri-La Hotels & Resorts - Forbes Travel Guide’ section with pictures of Shangri-La hotels in China, Hong Kong, Philippines, Taiwan, Turkey, London (UK), etc.

Annex 1.15: (4 pages) Same as Annex 1.13.

Annex 1.16: (9 pages) Printout from https://www.thinkwithgoogle.com/intl showing an article dated October 2017 titled ‘Shangri-La Hotels Boosts Sales, Efficiency With Google Marketing Platform's Full-Stack Solution’.

Annex 1.17: (2 pages) Extract from https://www.tripadvisor.fr showing that Shangri-La Hotel Paris is eleventh within ‘Top 25 des hôtels — France’ in 2019.

Annex 2.1: (7 pages) Press article of 09/11/2017 titled ‘The New Standard of Luxury - 6 Trends Were Falling In Love With for Uber High Tech Hotels’. There is no information about the opponent or its trade mark.

Annex 2.2. (8 pages) Luxury Hotel Market Size, Share, Trends Analysis | Industry Report 2018 – 2025 published in March 2018 taken from https://www.grandviewresearch.com. Apart from the mentioning that ‘Key players in the market include Marriott International, Inc., Shangri-La International Hotel Management Ltd. (…)’, the report does not contain any other mention of the opponent or any concrete information about the EU.

Annex 2.3. (4 pages) Two internet articles titled ‘Technology in the hospitality industry-exploring the very latest trends’ and ‘Top 10 communication trends in hotel technology for 2019’. There is no information about the opponent or its trade mark.

Annex 3: (3 pages) Extract from Wikipedia showing the entry for ‘Casino Hotel’.

Annex 4: (4 pages) Printout from www.legifrance.gouv.fr showing extracts from the French IP Code (Code de la propriété intellectuelle/ Legifrance) and partial translation in English.

Annexes 5 and 6: (11 pages) Extract from https://www.societe.com/societe/shangri-la-hotel-529892903.html showing company registration details. Extract with registration details for the domain name SHANGRI-LA.COM. Four screenshots from shangri-la.com/fr/paris/shangrila/. Company registration document issued by the French Greffe du Tribunal de Commerce de Paris showing the registration of the company SHANGRI-LA HOTELS (PARIS).

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, several advertisements in the press (in French, Japanese, Russian), and their self-explanatory character, including the partial translation and explanation of their contents provided by the opponent in the language of proceedings, the Opposition Division considers that there is no need to request a translation.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company/ies. According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. In the present case, the fact that the opponent submitted evidence of use of its marks by a third party/ies implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). In addition, this has been confirmed by the opponent itself. To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The press articles, brochure and invoices show that the place of use is France and the United Kingdom. This can be inferred from the language of the documents, the currency mentioned (EUR and GBP) and the addresses indicated. Therefore, the evidence relates to the relevant territory.

A sufficient amount of the documents fall within, or can safely be attributed to refer to use within the relevant period of time.

Contrary to the arguments of the applicant, the brochures albeit undated, are relevant pieces of evidence. It is clear from an overall picture of the evidence available on file that the hotels in which the services are provided were opened slightly before or slightly after the relevant period (in 2010 in Paris and in 2014 in London). Therefore, it can be safely deducted that the services described in the brochures pertain to the relevant period. Furthermore, the existence and availability of the services detailed in the brochures have been corroborated by independent press articles from reliable media sources and by the invoices, which are all clearly dated, and the majority of them refer to the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, such as the press articles, brochures, advertisements and invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Indeed, use of the mark need not be quantitatively significant for it to be deemed genuine. Bearing in mind the nature of the services (specific services provided in luxury five-star hotels), their cost and exclusivity, the territorial scope (Paris and London, two capital cities of international importance within two EU Member States), it is considered that even if direct sales documents are not available for all the relevant services, there are sufficient indirect indications in the evidence that these were rendered to a sufficient extent. Case-law shows that, under certain circumstances, even circumstantial evidence featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving extent of use in an overall assessment (08/07/2010, T 30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

As to the invoices, they have non-consecutive numbering and can be regarded just as a sample of sales, and not as the total amount of actual sales of the services bearing the mark. It must also be recalled that the opponent is not under the obligation to submit detailed financial information, since the obligation incumbent to produce evidence of genuine use of a trade mark is not designed to monitor the commercial strategy of an undertaking (08/07/2004, T-334/01, ‘Hipoviton’, EU:T:2004:223) or its financial success. In relation to the term ‘banquet’ used in the invoices as part of the description of the type of services rendered, it is noted that it is used as a prefix without necessarily denoting ‘banqueting services’ in a narrow sense (which are classified in Class 43). As explained by the opponent and as seen from the codified wordings in the invoices, the services itemized as ‘banquet-’ are followed by ‘corporate’ in the majority of the instances and they reflect much wider range of services. As argued by the opponent and as demonstrated from the entire batch of evidence, the services are ‘content-packed events’ and not merely provision of a venue or a conference room.

Consequently, it is considered that there are sufficient indications in the evidence that the services, albeit not being the main focus of the opponent, were provided/advertised regularly, publicly and outwardly in the relevant period and actual sales took place in more than one Member State.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the evidence shows that the mark has been used in accordance with its function and as registered. The applicant argues that the Spa located in the Shangri-La hotel in Paris has its own name ‘Chi’ and that services related to various bars/function rooms in the hotels are offered under their own distinct names, such as ‘Le Salon Roland Bonaparte’, etc. and that this does not amount to evidence of use of the contested sign. In this regard, the Opposition Division notes that all these instances are acceptable uses. All the brochures and advertisements clearly identify ‘Shangri-La’ as the house brand and provider of the services. There is no legal precept in the European Union trade mark system that obliges the proprietor to provide evidence of the mark alone when genuine use is required and two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the registered trade mark (T-463/12, MB, EU:T:2014:935, §43). Indeed, such seems to be the situation in the present case, as it is obvious from the evidence that ‘Shangri-La’ is the main/house brand and the other names designate separate lines/sub-brands of services offered on a stand-alone and independent basis as part of the wide portfolio of services offered by the opponent.

The Opposition Division finds it appropriate to address here also the applicant’s assertion that the evidence for some of the services, such as spa and fitness services, should be disregarded, because these services were provided to hotel guests only and are integrated in the operation of a hotel. Nevertheless, the evidence on file shows that the opponent offered the services independently of its hotels services and to a wider audience and not only to hotel guests. For example, the spa leaflet details individual prices, subscription fees (annual, bi-annual, etc.), opening hours and policies (such as cancellation, reservation, what to wear, late arrivals, children, mobile phone, etc.) that are obviously not directed to hotel guests only and have their own economic value. Bearing in mind the specific market sector and reality of the hospitality industry, the provision of sports and entertainment facilities, the organization of entertainment related to social events, weddings, the organization of business meetings and conferences are nowadays an important part of the hospitality and hotel business industry. Therefore, the applicant’s assertions are rejected as unfounded, because there are sufficient indications in the evidence that such kind of services were provided, offered and advertised as standalone services with an independent economic value.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark and subject to the proof of use request.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, it is considered that the evidence proves use for photography services; arranging and conducting conferences, congresses, seminars; live music shows, being live performances; audio and video recording services; rental of video recorders; provision of amusement facilities; club entertainment services, nightclub and discotheque services, singing services; health clubs, provision of swimming and gymnastic facilities; organising of wine tastings; club dinning services; provision of information, management, consultancy and advisory services for the aforesaid services; all provided in hotels in Class 41. These services can be considered to form an objective subcategory of the respective broad registered categories. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the mentioned subcategory of services.

The opponent did not submit any evidence of use in relation to the remaining relevant services in Classes 35 and 41. Therefore, in its further examination of the opposition, the Opposition Division will only consider the abovementioned services, for which proof of use was deemed proven, as well as all the services in Class 43 (not subject to the proof of use requirement).

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 goods and services

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

Class 41: Photography services; arranging and conducting conferences, congresses, seminars; live music shows, being live performances; audio and video recording services; rental of video recorders; provision of amusement facilities; club entertainment services, nightclub and discotheque services, singing services; health clubs, provision of swimming and gymnastic facilities; organising of wine tastings; club dinning services; provision of information, management, consultancy and advisory services for the aforesaid services; all provided in hotels.

Class 43: Hotels and motels, apartment and condominium services; guest house/accommodation services; tourist homes; hotel reservations, bar, cafe, cafeteria, coffee shop, catering, restaurants; club services for the provision of food and drink, wine club services; cocktail lounge services, bar services; snack bar services.

The contested goods and services are the following:

Class 9: Network communication apparatus; Interactive software; Interactive terminals; Interactive DVDs; Interactive databases; Interactive video apparatus; Interactive computer software; Interactive game software; Interactive entertainment software; Interactive computer systems; Interactive multimedia computer programs; Interactive entertainment software for use with personal computers; Interactive multimedia computer game programs; Interactive compact discs and CD-ROMs; Interactive computer game programs; Interactive video game programs; Interactive multimedia game programs; Interactive data transfer apparatus; Computer programs for using the internet and the worldwide web; Computer programmes for use in telecommunications; Computer programs for video and computer games; Interactive multimedia software for playing games; Software; Computer programs used for electronic cash register systems; Computer programs for connecting remotely to computers or computer networks; Computer programs [downloadable software]; Computer application software featuring games and gaming; Entertainment software; Software for online messaging; Data communications software; Software downloadable from the internet; Multimedia software; Betting software; Computer software for communicating with users of hand-held computers; Computer software for wireless network communications; Interactive computer software enabling exchange of information; Computer software for the administration of on-line games and gaming; Downloadable computer software for the transmission of data; Computer software for wireless content delivery; Computer software for entertainment; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software downloaded from the internet; Downloadable computer software for the transmission of information; Downloadable software; Computer software to enable the provision of electronic media via the Internet; Computer software to enable the provision of electronic media via communications networks; Computer software to enable the provision of information via communications networks; Computer software to enable the provision of information via the Internet; Computer game software downloadable from a global computer network; Computer software that permits games to be played; Computer software in the field of electronic publishing; Interactive video software; Data recorded electronically; Recorded data [magnetic]; Prerecorded CD-ROMs; Downloadable publications; Electronic publications, downloadable; Electronic publications recorded on computer media; Electronic publications, downloadable, relating to games and gaming; Multimedia software recorded on CD-ROM; Video game programs; Games software; Downloadable computer games; Computer hardware; Data communications hardware; Computer hardware for telecommunications; Computers and computer hardware; Computer hardware for games and gaming; Computer software, recorded; Data processing programs; Downloadable electronic game programs; Downloadable computer game programs; Computer games programmes downloaded via the internet [software]; Game programs for arcade video game machines; Video games [computer games] in the form of computer programs recorded on data carriers; Time clocks [time recording devices]; Timing apparatus; Time delay generators; Time recording apparatus; Electronic timing control instruments; Electronic timing apparatus; Time measuring instruments (not including clocks and watches); Computer systems; Data processing systems; Computer software for the monitoring of computer systems; Data processing equipment and accessories (electrical and mechanical); Coin-operated mechanisms; Digital tablets.

Class 38: Data transmission services over telematic networks; Packet transmission of data and images; Forwarding messages of all kinds to Internet addresses [web messaging]; Distribution of data or audio visual images via a global computer network or the internet; Transmission of digital information; Transmission of information by electronic means; Computer aided transmission of messages and images; Transmission of data via the Internet; Electronic transmission of messages, data and documents; Computer aided transmission of messages, information and images; Electronic transmission of data and documents via computer terminals; Delivery of messages and data by electronic transmission; Message sending via computer networks; Exchange of messages via computer transmission; Computer communications for the transmission of information; Communications via a global computer network or the internet; Communication of information by computer; Data communication by electronic mail; Communication by electronic mail systems; Electronic data interchange services; Telecommunication services; Electronic transmission of messages and data; Transfer of data by telecommunications; Communication by electronic means; Electronic network communications; Communications services for the exchange of data in electronic form; Providing access to electronic communications networks and electronic databases; Providing access to telecommunication networks; Message sending, receiving and forwarding; Communication of information by electronic means; Communication of data by means of telecommunications; Data communication by electronic means; Communications via multinational telecommunication networks; Provision of telecommunications connections for telephone chat lines; Provision of communications facilities for the interchange of digital data; Digital communications services; Wireless communications services; Interactive communication services; Electronic communications services; Electronic news agency services; News agency services [transmission of news]; Telecommunications services provided via fiber optic, wireless and cable networks; Digital network telecommunications services; Telecommunications services between computer networks; Communication services provided electronically; Communication services for the transmission of information; Communication services for the electronic transmission of data; Data transmission services over telecommunications networks; Communication services for the transmission of information by electronic means; Information transmission services via digital networks; Telecommunication of information (including web pages); Electronic and telecommunication transmission services; Data transmission; Interactive telecommunications services; Mobile media services in the nature of electronic transmission of entertainment media content; Network transmission of sounds, images, signals and data; Remote transmission of data by means of telecommunications; Interactive transmission of video over digital networks; Electronic transmission of instant messages and data; Digital transmission of data via the Internet; Transmission of sound via interactive multimedia networks; Transmission of information via national and international networks; Transmission of database information via telecommunications networks; Transmission of information by electronic communications networks; Transmission of data, messages and information; Transmission of vision via interactive multimedia networks; Transmission of messages, data and content via the Internet and other communications networks; Transmission of messages and images; Transmission of information by data communications for assisting decision making; Transmission and reception [transmission] of database information via the telecommunication network.

Class 41: Providing electronic publications from a global computer network or the Internet, not downloadable; Providing on-line publications; Publication of printed matter and printed publications; On-line publication of electronic books and journals; Publishing of electronic publications; Publication of periodicals and books in electronic form; Publishing by electronic means; Providing publications from a global computer network or the internet which may be browsed; Providing on-line electronic publications, not downloadable; Provision of electronic publications (not downloadable); Providing on-line non-downloadable general feature magazines; Provision of an online magazine featuring information in the field of computer games; Publication of leaflets; Electronic online publication of periodicals and books; Publishing of web magazines; Publication of electronic books and periodicals on the Internet; Publication of books relating to entertainment; Publication of online reviews in the field of entertainment; Publication of electronic magazines; Publication of newspapers, periodicals, catalogs and brochures; Publication of magazines; Publication of multimedia material online; Publication of material which can be accessed from databases or from the internet; Publishing of magazines in electronic form on the Internet; Gambling services; Providing of casino and gaming facilities; Conducting multiple player games of chance; Providing casino facilities [gambling]; Horses (Betting on -); Organization of lotteries; Bookmaking [turf accountancy]; Prize draws [lotteries]; Provision of online information relating to game players; Providing casino facilities; Provision of information relating to racehorses; Provision of information relating to racing; Racing information services; On-line casino services; Casino services; Casino, gaming and gambling services; Wagering services; Betting exchange services; Betting services; Football pools services; On-line gambling services; Sporting results services; Bingo hall services; Bingo services; Services for the operation of computerised bingo; Conducting horse races; Dog races; Arranging of demonstrations for entertainment purposes; Arranging and conducting of meetings in the field of entertainment; Education and training in the field of music and entertainment; Entertainment provided via a global communication network; Entertainment provided by cable television; Providing information about sporting activities; Club recreation facilities (Provision of -); Providing facilities for entertainment; Providing amusement arcade services; Providing on-line video games; Provision of on-line computer games; Providing on-line interactive computer games; Provision of games by means of a computer based system; Providing games; Providing a computer game that may be accessed by users on a global network and/or the internet; Providing slot machine parlors; Provision of information relating to television programmes; Provision of information relating to sports persons; Provision of information relating to movies; Providing online information on computer and video game strategies; Providing on-line information in the field of computer gaming entertainment; Providing information on entertainment through computer networks; Providing information in the field of entertainment by means of a global computer network; Cabarets and discotheques; Planning of shows; Information relating to entertainment, provided on-line from a computer database or the internet; Recreation information; Information relating to computer gaming entertainment provided online from a computer database or a global communication network; Entertainment information; Internet games (non-downloadable); Organising and conducting lotteries; Organizing and arranging exhibitions for entertainment purposes; Organisation of entertainment services; Organisation of entertainment and cultural events; Organization of cosplay entertainment events; Organising events for entertainment purposes; Arranging of visual and musical entertainment; Organising of sports competitions and equestrian contests; Arranging of contests; Organising of sporting events, competitions and sporting tournaments; Organising of recreational events; Organisation of recreational activities; Organising of entertainment; Organisation of group recreational activities; Organisation of recreational tournaments; Arranging of presentations for entertainment purposes; Organising of meetings in the field of entertainment; Booking of seats for shows and sports events; Hosting of fantasy sports leagues; Arranging and conducting of entertainment activities; Arranging and conducting of sports events; Production of cabarets; Provision of audio and visual media via communications networks; Provision of online information relating to audio and visual media; Cable television programming [scheduling]; Providing facilities for game shows; Provision of leisure facilities; Provision of amusement facilities; Provision of entertainment facilities; Providing video entertainment via a website; Provision of on-line entertainment; Providing online entertainment in the nature of game shows; Providing online entertainment in the nature of game tournaments; Providing online entertainment in the nature of fantasy sports leagues; Provision of news relating to sport; Provision of recreational events; Providing leisure and recreation facilities; Providing information, commentary and articles in the field of music via computer networks; Provision of information relating to entertainment online from a computer database of the Internet; Providing information on-line relating to computer games and computer enhancements for games; Providing information to game players about the ranking of their scores of games through the web sites; Provision of recreation information; Provision of entertainment information via the Internet; Provision of entertainment information by electronic means; Providing entertainment information; Information about entertainment and entertainment events provided via online networks and the Internet; Provision of entertainment information via television, broadband, wireless and on-line services; Provision of non-downloadable films and television programs via pay television; Provision of non-downloadable films and television programs via pay-per-view television channels; Provision of recreational areas; Providing sports entertainment via a website; Provision of entertainment services through the media of publications; Providing newsletters in the field of computer games via e-mail; Providing interactive multi-player computer games via the internet and electronic communication networks; Providing a computer game that may be accessed network-wide by network users; Provision of rooms for entertainment; Electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; Entertainment services for sharing audio and video recordings; Entertainment, education and instruction services; Cruise ship entertainment services; Gaming machine entertainment services; Entertainment services in the nature of organizing social entertainment events; Entertainment services in the nature of competitions; Video game entertainment services; Entertainment services by stage production and cabaret; Entertainment services; Discotheque services; Entertainment services relating to sport; Entertainment services relating to competitions; Entertainment provided via the internet; Entertainment services provided at country clubs; Entertainment services provided at nightclubs; Entertainment services provided at a race track; Popular entertainment services; Entertainment provided during intervals of sporting events; Entertainment services provided on-line from a computer database or the internet; Entertainment services provided at discotheques; Interactive entertainment services; Video arcade services; Club [discotheque] services; Cabarets; Information and advisory services relating to entertainment; Information services relating to recreation; Instructional and training services; Electronic games services, including provision of computer games on-line or by means of a global computer network; Electronic game services and competitions provided by means of the internet; Electronic game services provided by means of the internet; Electronic games services provided by means of a global communication network; Electronic games services provided from a computer database or by means of the internet; Electronic games services provided via a global computer network; Night club services [entertainment]; Nightclub services [entertainment]; Provision of club entertainment services; Social club services for entertainment purposes; Club [cabaret] services; Club services [entertainment or education]; Poker game services; Computer and video game amusement services; Game services provided on-line from a computer network; Gaming services for entertainment purposes; On-line gaming services; Games services provided via computer networks and global communication networks; Entertainment services in the nature of sporting events; Play schemes [entertainment/education]; Arranging and conducting of educational events; Education, entertainment and sports; Arranging of conventions for entertainment purposes; Arranging of games; Arranging and conducting of games; Arranging and conducting of competitions [education or entertainment]; Arranging and conducting competitions; Arranging of competitions for education or entertainment; Organization of competitions [education or entertainment]; Organisation of games and competitions; Organisation of competitions and awards; Organising of entertainment competitions; Arranging and conducting of sports competitions; Organising of racing competitions; Organization of electronic game competitions; Organisation of sports tournaments; Arranging of competitions for entertainment purposes; Organisation of e-sports competitions; Organization of competitions; Conducting of competitions on the Internet; Sporting and recreational activities; Provision and management of sporting events; Provision of social club services; Provision of information relating to sporting events; Providing facilities for sports events; Country clubs providing sporting facilities; Organisation of sporting events; Organization of sports competitions; Organising of sporting activities and of sporting competitions; Provision of sporting club facilities; Provision of information relating to sports; Provision of information relating to motor racing; Provision of information relating to jockeys; Providing online newsletters in the fields of sports entertainment; Sports club services; Ticket information services for sporting events; Educational services relating to sports; Advisory services relating to the organisation of sporting events; Ticket procurement services for sporting events; Tournaments (Staging of sports -); Conducting of sports events; Officiating at sports contests; Sporting services; Production of sporting events; Sporting and cultural activities; Providing sports facilities; Sport camp services; Sporting education services; Entertainment, sporting and cultural activities; Booking of sports facilities; Information relating to sports education; Timing of sports events; Providing facilities for sports recreation; Providing facilities for sports tournaments; Organization of sport fishing competitions; Production of sporting events for television; Education, entertainment and sport services; Providing facilities for sporting events, sports and athletic competitions and awards programmes; Provision of sports and recreational services; Organisation of events for cultural, entertainment and sporting purposes; Ticket reservation and booking services for sporting events; Ticket reservation and booking services for recreational and leisure events; Online interactive entertainment; Providing recreation facilities.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 goods in Class 9

The contested Interactive software; Interactive DVDs; Interactive computer software; Interactive game software; Interactive entertainment software; Interactive multimedia computer programs; Interactive entertainment software for use with personal computers; Interactive multimedia computer game programs; Interactive compact discs and CD-ROMs; Interactive computer game programs; Interactive video game programs; Interactive multimedia game programs; Computer programs for using the internet and the worldwide web; Computer programmes for use in telecommunications; Computer programs for video and computer games; Interactive multimedia software for playing games; Software; Computer programs used for electronic cash register systems; Computer programs for connecting remotely to computers or computer networks; Computer programs [downloadable software]; Computer application software featuring games and gaming; Entertainment software; Software for online messaging; Data communications software; Software downloadable from the internet; Multimedia software; Betting software; Computer software for communicating with users of hand-held computers; Computer software for wireless network communications; Interactive computer software enabling exchange of information; Computer software for the administration of on-line games and gaming; Downloadable computer software for the transmission of data; Computer software for wireless content delivery; Computer software for entertainment; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software downloaded from the internet; Downloadable computer software for the transmission of information; Downloadable software; Computer software to enable the provision of electronic media via the Internet; Computer software to enable the provision of electronic media via communications networks; Computer software to enable the provision of information via communications networks; Computer software to enable the provision of information via the Internet; Computer game software downloadable from a global computer network; Computer software that permits games to be played; Computer software in the field of electronic publishing; Interactive video software; Data recorded electronically; Recorded data [magnetic]; Multimedia software recorded on CD-ROM; Video game programs; Games software; Downloadable computer games; Computer software, recorded; Data processing programs; Downloadable electronic game programs; Downloadable computer game programs; Computer games programmes downloaded via the internet [software]; Game programs for arcade video game machines; Video games [computer games] in the form of computer programs recorded on data carriers; Computer software for the monitoring of computer systems are similar to a low degree to the opponent’s provision of amusement facilities; club entertainment services; provision of information for the aforesaid services; all provided in hotels in Class 41. The contested software is or can be in the field of amusement, entertainment, information and/or supporting functions thereof and is, therefore, essential or important for the use of the opponent’s mentioned services that are entertainment, amusement and informational services thereof. Consequently, the contested goods and the opponent’s services may be complementary and can coincide in producer/provider and relevant public.

The opponent’s arranging and conducting conferences, congresses, seminars provided in hotels are in essence training and education services. The contested Prerecorded CD-ROMs; Downloadable publications; Electronic publications, downloadable; Electronic publications recorded on computer media; Electronic publications, downloadable, relating to games and gaming may contain teaching and/or educational material in a given field and are as such essential to the opponent’s services. Therefore, these sets of goods and services are complementary. This is because, in order to supply educational services, it is both helpful and usual to use educational/teaching manuals, etc., which may be provided as pre-recorded discs or electronic publications. Given the link between the goods and services in question, they are similar to at least a low degree. These goods complement the services and can coincide in at least relevant public and distribution channels.

However, the remaining contested goods, namely Network communication apparatus; Interactive terminals; Interactive databases; Interactive video apparatus; Interactive computer systems; Interactive data transfer apparatus; Computer hardware; Data communications hardware; Computer hardware for telecommunications; Computers and computer hardware; Computer hardware for games and gaming; Time clocks [time recording devices]; Timing apparatus; Time delay generators; Time recording apparatus; Electronic timing control instruments; Electronic timing apparatus; Time measuring instruments (not including clocks and watches); Computer systems; Data processing systems; Data processing equipment and accessories (electrical and mechanical); Coin-operated mechanisms; Digital tablets are dissimilar to all the opponent’s services in Classes 41 and 43. The mentioned contested goods do not have any relevant links to any of the opponent’s services. The contested goods include various electronic apparatus, hardware, computer systems, time-related instruments and devices, data processing instruments and specific coin-operated mechanisms. These goods are for the most part specific electronic devices designed to perform specific tasks, as indicated above. Their production requires specialized technological expertise. On the other hand, the opponent’s services consist of various services rendered in hotels, intended to entertain and engage the attention and provide information, sporting and cultural activities, organisation of conferences and seminars, etc. as well as services, such as temporary accommodation and reservation, provision of food and drinks. Although some of the contested goods may be used to perform some of the opponent’s services, this sole circumstance is not sufficient to render the goods and services similar. Different kinds of expertise and resources are required for rendering the opponent’s services and producing the contested goods and the public would not expect them to be offered by the same undertakings. The goods and services have a different nature and purpose. They also target a different public via different channels of distribution and their commercial origin is usually different. In addition, they are not in competition nor are they complementary. Therefore, they are dissimilar.

Contested services in Class 38

The contested services in Class 38 consist of a variety of telecommunication and transmission services. The opponent’s services in Class 41 concern the provision of different entertainment, sporting, training, etc. services within hotels and the opponent’s services in Class 43 concern the provision of temporary accommodation and the provision of food and drinks. The opponent’s services in Classes 41 and 43 and the contested services belong to entirely different industrial fields. They differ in method of use and their specific intended use/purpose is different. They usually differ in providers, distribution channels and targeted public. Furthermore, they are neither complementary to each other nor in competition. Therefore, they are considered dissimilar.

Contested services in Class 41

The below-listed contested services are various entertainment, sports, cultural, training/education services and related information and advisory services thereof:

Gambling services; Providing of casino and gaming facilities; Conducting multiple player games of chance; Providing casino facilities [gambling]; Horses (Betting on -); Organization of lotteries; Bookmaking [turf accountancy]; Prize draws [lotteries]; Provision of online information relating to game players; Providing casino facilities; Provision of information relating to racehorses; Provision of information relating to racing; Racing information services; On-line casino services; Casino services; Casino, gaming and gambling services; Wagering services; Betting exchange services; Betting services; Football pools services; On-line gambling services; Sporting results services; Bingo hall services; Bingo services; Services for the operation of computerised bingo; Conducting horse races; Dog races; Arranging of demonstrations for entertainment purposes; Arranging and conducting of meetings in the field of entertainment; Education and training in the field of music and entertainment; Entertainment provided via a global communication network; Entertainment provided by cable television; Providing information about sporting activities; Club recreation facilities (Provision of -); Providing facilities for entertainment; Providing amusement arcade services; Providing on-line video games; Provision of on-line computer games; Providing on-line interactive computer games; Provision of games by means of a computer based system; Providing games; Providing a computer game that may be accessed by users on a global network and/or the internet; Providing slot machine parlors; Provision of information relating to television programmes; Provision of information relating to sports persons; Provision of information relating to movies; Providing online information on computer and video game strategies; Providing on-line information in the field of computer gaming entertainment; Providing information on entertainment through computer networks; Providing information in the field of entertainment by means of a global computer network; Cabarets and discotheques; Planning of shows; Information relating to entertainment, provided on-line from a computer database or the internet; Recreation information; Information relating to computer gaming entertainment provided online from a computer database or a global communication network; Entertainment information; Internet games (non-downloadable); Organising and conducting lotteries; Organizing and arranging exhibitions for entertainment purposes; Organisation of entertainment services; Organisation of entertainment and cultural events; Organization of cosplay entertainment events; Organising events for entertainment purposes; Arranging of visual and musical entertainment; Organising of sports competitions and equestrian contests; Arranging of contests; Organising of sporting events, competitions and sporting tournaments; Organising of recreational events; Organisation of recreational activities; Organising of entertainment; Organisation of group recreational activities; Organisation of recreational tournaments; Arranging of presentations for entertainment purposes; Organising of meetings in the field of entertainment; Hosting of fantasy sports leagues; Arranging and conducting of entertainment activities; Arranging and conducting of sports events; Production of cabarets; Provision of audio and visual media via communications networks; Provision of online information relating to audio and visual media; Cable television programming [scheduling]; Providing facilities for game shows; Provision of leisure facilities; Provision of amusement facilities; Provision of entertainment facilities; Providing video entertainment via a website; Provision of on-line entertainment; Providing online entertainment in the nature of game shows; Providing online entertainment in the nature of game tournaments; Providing online entertainment in the nature of fantasy sports leagues; Provision of news relating to sport; Provision of recreational events; Providing leisure and recreation facilities; Providing information, commentary and articles in the field of music via computer networks; Provision of information relating to entertainment online from a computer database of the Internet; Providing information on-line relating to computer games and computer enhancements for games; Providing information to game players about the ranking of their scores of games through the web sites; Provision of recreation information; Provision of entertainment information via the Internet; Provision of entertainment information by electronic means; Providing entertainment information; Information about entertainment and entertainment events provided via online networks and the Internet; Provision of entertainment information via television, broadband, wireless and on-line services; Provision of non-downloadable films and television programs via pay television; Provision of non-downloadable films and television programs via pay-per-view television channels; Provision of recreational areas; Providing sports entertainment via a website; Provision of entertainment services through the media of publications; Providing newsletters in the field of computer games via e-mail; Providing interactive multi-player computer games via the internet and electronic communication networks; Providing a computer game that may be accessed network-wide by network users; Provision of rooms for entertainment; Entertainment services for sharing audio and video recordings; Entertainment, education and instruction services; Cruise ship entertainment services; Gaming machine entertainment services; Entertainment services in the nature of organizing social entertainment events; Entertainment services in the nature of competitions; Video game entertainment services; Entertainment services by stage production and cabaret; Entertainment services; Discotheque services; Entertainment services relating to sport; Entertainment services relating to competitions; Entertainment provided via the internet; Entertainment services provided at country clubs; Entertainment services provided at nightclubs; Entertainment services provided at a race track; Popular entertainment services; Entertainment provided during intervals of sporting events; Entertainment services provided on-line from a computer database or the internet; Entertainment services provided at discotheques; Interactive entertainment services; Video arcade services; Club [discotheque] services; Cabarets; Information and advisory services relating to entertainment; Information services relating to recreation; Instructional and training services; Electronic games services, including provision of computer games on-line or by means of a global computer network; Electronic game services and competitions provided by means of the internet; Electronic game services provided by means of the internet; Electronic games services provided by means of a global communication network; Electronic games services provided from a computer database or by means of the internet; Electronic games services provided via a global computer network; Night club services [entertainment]; Nightclub services [entertainment]; Provision of club entertainment services; Social club services for entertainment purposes; Club [cabaret] services; Club services [entertainment or education]; Poker game services; Computer and video game amusement services; Game services provided on-line from a computer network; Gaming services for entertainment purposes; On-line gaming services; Games services provided via computer networks and global communication networks; Entertainment services in the nature of sporting events; Play schemes [entertainment/education]; Arranging and conducting of educational events; Education, entertainment and sports; Arranging of conventions for entertainment purposes; Arranging of games; Arranging and conducting of games; Arranging and conducting of competitions [education or entertainment]; Arranging and conducting competitions; Arranging of competitions for education or entertainment; Organization of competitions [education or entertainment]; Organisation of games and competitions; Organisation of competitions and awards; Organising of entertainment competitions; Arranging and conducting of sports competitions; Organising of racing competitions; Organization of electronic game competitions; Organisation of sports tournaments; Arranging of competitions for entertainment purposes; Organisation of e-sports competitions; Organization of competitions; Conducting of competitions on the Internet; Sporting and recreational activities; Provision and management of sporting events; Provision of social club services; Provision of information relating to sporting events; Providing facilities for sports events; Country clubs providing sporting facilities; Organisation of sporting events; Organization of sports competitions; Organising of sporting activities and of sporting competitions; Provision of sporting club facilities; Provision of information relating to sports; Provision of information relating to motor racing; Provision of information relating to jockeys; Providing online newsletters in the fields of sports entertainment; Sports club services; Educational services relating to sports; Advisory services relating to the organisation of sporting events; Tournaments (Staging of sports -); Conducting of sports events; Officiating at sports contests; Sporting services; Production of sporting events; Sporting and cultural activities; Providing sports facilities; Sport camp services; Sporting education services; Entertainment, sporting and cultural activities; Booking of sports facilities; Information relating to sports education; Timing of sports events; Providing facilities for sports recreation; Providing facilities for sports tournaments; Organization of sport fishing competitions; Production of sporting events for television; Education, entertainment and sport services; Providing facilities for sporting events, sports and athletic competitions and awards programmes; Provision of sports and recreational services; Organisation of events for cultural, entertainment and sporting purposes; Online interactive entertainment; Providing recreation facilities.

The opponent’s services provided in hotels in Class 41 are also various entertainment (provision of amusement facilities; club entertainment services, etc.), sports (health clubs, provision of swimming and gymnastic facilities), educational/teaching (arranging and conducting conferences, congresses, seminars), and provision of information, management, consultancy and advisory services thereof.

Therefore, the opponent’s services cover services belonging to the same sector of entertainment, education/teaching, sports and information thereof. Even if it cannot be excluded that some of the contested services would coincide in numerous relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing services or that they are even identical, these services clearly belong to homogeneous or closely related sectors of services on the market and for the majority of them they are - at least - provided by the same companies, target the same end user and are being provided through the same channels of distribution. Based on this conclusion, none of the above contested services can be considered dissimilar. It follows, therefore, that all the contested services are at least similar to the opponent’s services.

The contested Booking of seats for shows and sports events; Ticket information services for sporting events; Ticket procurement services for sporting events; Ticket reservation and booking services for sporting events; Ticket reservation and booking services for recreational and leisure events are similar either to the opponent’s live music shows; singing services; club entertainment services; all provided in hotels, or to the opponent’s health clubs, provision of swimming and gymnastic facilities; all provided in hotels. These services can coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested Providing electronic publications from a global computer network or the Internet, not downloadable; Providing on-line publications; Providing publications from a global computer network or the internet which may be browsed; Providing on-line electronic publications, not downloadable; Provision of electronic publications (not downloadable); Providing on-line non-downloadable general feature magazines; provision of an online magazine featuring information in the field of computer games; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information consist of providing online electronic publications and concern the provision of content, which may be training material. To that extent, there is similarity between these contested services and the opponent’s arranging and conducting conferences, congresses, seminars; all provided in hotels. These services are complementary and may coincide in provider, relevant public and distribution channels. Consequently, the mentioned services are similar.

However, such link does not exists between the contested Publication of printed matter and printed publications; On-line publication of electronic books and journals; Publishing of electronic publications; Publication of periodicals and books in electronic form; Publishing by electronic means; Publication of leaflets; Electronic online publication of periodicals and books; Publishing of web magazines; Publication of electronic books and periodicals on the Internet; Publication of books relating to entertainment; Publication of online reviews in the field of entertainment; Publication of electronic magazines; Publication of newspapers, periodicals, catalogs and brochures; Publication of magazines; Publication of multimedia material online; Publication of material which can be accessed from databases or from the internet; Publishing of magazines in electronic form on the Internet and the opponent’s services in Classes 41 and 43. The mentioned contested services are publishing services, which include copy editing, production, printing (and its electronic equivalents) and distribution. Publishing consists in the activity of making the prepared text (content) available to the general public, but does not cover the creation of the text. These contested services differ from the opponent’s services in their purpose and method of use. They usually differ in providers, distribution channels and targeted public. Furthermore, they are neither complementary to each other nor in competition. Therefore, they are dissimilar.

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 goods and services found to be (at least) similar or similar to (at least) a low degree are directed both at the public at large and at professional consumers. The degree of attention may vary from average to high, depending on the specialised nature and price of the goods/services, the frequency of purchase, or terms and conditions of the goods and services purchased.

c) The signs

SHANGRI-LA

PLAYSHANGRILA

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘Shangri-la’/‘Shangrila’ and ‘play’, contained in the signs, are meaningful for the English-speaking part of the public. As this will influence the concepts conveyed by the marks at issue, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as consumers in the United Kingdom, Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

Both marks are word marks and as such they have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s). The earlier mark consists of the verbal element ‘SHANGRI-LA’ and the contested sign consists of the verbal element ‘PLAYSHANGRILA’.

While it is acknowledged that the contested sign is composed of a single verbal element, nevertheless, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard, it must be mentioned that in view of the structure of the contested sign and of the respective underlying concepts, it will be broken down into the elements ‘PLAY’ and ‘SHANGRILA’.

The word ‘SHANGRI-LA’ originates from the name of an imaginary valley in the Himalayas, from Lost Horizon (1933), a novel by James Hilton. It has the following meanings: ‘an imaginary, beautiful place, often far away, where everything is pleasant and you can get everything you want’, ‘a remote or imaginary utopia’ (see Collins Dictionary online and Cambridge Advanced Learner's Dictionary online). Bearing this in mind, the elements ‘SHANGRI-LA’ and ‘SHANGRILA’, contained in the signs will be associated with the mentioned meaning, irrespective of the joined representation (without a hyphen) in the contested sign.

The applicant argues that the earlier mark has a less than normal distinctiveness (i.e. a low and limited degree) because the name ‘SHANGRI-LA’ is neither imaginative nor clever and has become a commonplace dictionary word and one which has and still is widely used in popular culture (including in music) due to the well-known connotations and allusive characteristics that are evoked by or through it. Contrary to these allegations, however, the Opposition Division notes that the term ‘shangri-la’ does not evoke any descriptive, non-distinctive or otherwise weak meaning(s) in relation to the goods and/or services in question, and as such, it does not describe any relevant characteristics or features thereof. For these reasons, and in the lack of any evidence demonstrating that ‘shangri-la’ is widely used to describe any relevant characteristics of the goods or services, it is considered that the inherent distinctiveness of this term is normal.

The applicant additionally argued that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘SHANGRI-LA’ or ‘SHANGRILA’. In support of its argument the applicant referred to several trade mark registrations in the EUIPO and TMView database.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. The applicant has not provided any evidence that demonstrates that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element in question. Under these circumstances, the applicant’s claims must be set aside.

The word ‘play’ contained in the contested sign will be associated with ‘take part in a sport, game, or match, etc.’, ‘play a musical instrument, record or a CD’, ‘perform music for people to listen or dance to’, etc. Bearing in mind that the nature of the relevant goods and services (software for games/entertainment, electronic publications relating to gaming, entertainment, sports and closely related services thereof), this element is non-distinctive for the goods and services.

Visually and aurally, the signs coincide in the (sound of the) inherently distinctive verbal element ‘Shangri-la’, which constitutes the only element of the earlier mark and is entirely contained in the second and longer part of the contested sign. Although the coinciding element does not have a hyphen in the contested sign, this difference is merely visual and not of significant impact, as it does not exist on the aural and conceptual level. Also, it is fairly common in English that many words that (should) contain a hyphen, are also written without it.

The signs differ in the element ‘PLAY’ of the contested mark, which has no counterpart in the earlier sign. However, although the differing verbal element ‘PLAY’ appears in the beginning of the contested trade mark, it does not significantly sway the consumers’ attention from the inherently distinctive element ‘SHANGRILA’ that follows. As mentioned above, the element ‘PLAY’ is non-distinctive and will hardly be paid any attention as a trade origin identifier. Bearing in mind the foregoing, it is concluded that the degree of visual similarity between the signs is higher than average and the signs are aurally similar to a high degree.

Conceptually, as indicated above, the verbal element ‘SHANGRI(-)LA’ in the signs will be associated with the same concept. The signs differ in the additional concept of ‘play’ of the contested sign. However, as mentioned above, the element ‘play’ is non-distinctive and can hardly indicate the commercial origin of the relevant goods and services. Therefore, the signs are conceptually similar to a very 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.

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 stage of the proceedings (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

The contested goods and services are (at least) similar or (at least) similar to a low degree to the opponent’s services. The relevant public is both the public at large and professional consumers and the degree of attention may vary from average to high. The inherent distinctiveness of the earlier mark is normal.

The earlier trade mark and the contested sign are visually similar to a higher than average degree and they are aurally similar to a high degree. The signs are conceptually similar to a very high degree.

In the present case, it is considered that the differences between the signs are not capable to offset the high degree of similarity between the signs and a likelihood of confusion exists. The similarities between the signs are on account of the only verbal and inherently distinctive element of the earlier mark, which is represented in its totality in the contested sign, wherein it is the only inherently distinctive element.

While it is true that the signs differ in certain aspects (the hyphen in the earlier mark and the non-distinctive element ‘play’ of the contested sign), the coincidences in the marks clearly prevail and are focused in their inherently distinctive elements. 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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/services covered are from the same or economically linked undertakings.

Indeed, 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).

In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes, that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public. This is likely to be the case even when the public may exercise a higher level of attention, as the similarity of the signs is sufficient for the consumers to consider that the respective goods and services, including those similar to a low degree only, have the same or economically-linked origin.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be (at least) similar or (at least) similar to a low degree to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these dissimilar goods and services cannot be successful.

Since the opposition is partially 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 extensive use or reputation as claimed by the opponent and in relation to similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The opponent claimed that its earlier trade mark has a reputation in the European Union.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been listed above in the ‘Proof of Use’ section (Annexes 1.1 to 1.17, Annexes 2 to 6). Furthermore, following a proof of use request of the applicant, the opponent submitted additional evidence (Item I to X, listed above).

In the present case, the issue of whether or not the additional evidence is acceptable and whether the Office should exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 31/12/2019 (after the relevant substantiation period) can remain open. As it will be seen, even if the additional evidence were taken into account, this would not alter the outcome for the opponent. Likewise, it would not affect the interests of the applicant either. Therefore, the Opposition Division will base the examination on all the evidence submitted, which is the best case scenario in which the opponent’s case can be considered.

In the present case, the contested trade mark was filed on 07/03/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation and for which proof of use was shown, namely all the services in Class 43 (listed above in the section on the grounds of Article 8(1)(b) EUTMR) and the following services in Class 41: photography services; arranging and conducting conferences, congresses, seminars; live music shows, being live performances; audio and video recording services; rental of video recorders; provision of amusement facilities; club entertainment services, nightclub and discotheque services, singing services; health clubs, provision of swimming and gymnastic facilities; organising of wine tastings; club dinning services; provision of information, management, consultancy and advisory services for the aforesaid services; all provided in hotels.

The opposition is directed against the remaining goods and services in Classes 9, 38 and 41 (the dissimilar contested goods and services for which Article 8(1)(b) EUTMR was not upheld).

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Having carefully examined the evidence in its entirety, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation in relation to the relevant services in Classes 41 and 43.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

Therefore, reputation requires recognition of the mark by a significant part of the relevant public. The relevant public in the present case is, both the public at large and a more specialised professional public consisting of business consumers. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings, the Office is restricted in its examination to the facts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier marks have a reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 437/2014‑1, SALSA / SALSA (FIG MARK) et al.).

In the present case, there are sufficient indications in the evidence showing that the earlier trade mark has been subject to use in the European Union and/or that the opponent has undertaken activities with the intention of promoting its brand. However, the Opposition Division is unable to extract any indication as regards the degree of recognition of the trade mark amongst the relevant public and its general position in the EU market.

Even though the opponent provided several documents (e.g. Item II, Annexes 1.4, 1.5, 1.6, 1.9 and 1.10) showing rankings for its brand or information on its position in the relevant market segment, the majority of these documents refer to the global/worldwide market, unspecified territory, or to territories and consumers (Chinese, USA consumers) outside the relevant EU territory. Bearing in mind that only two of the ‘over 100 luxury hotels’ of the opponent are based in the EU, the information about the global market standing and position of the opponent, albeit not unimportant, is of limited informational value as to ascertaining the market share corresponding to the EU. Indeed, although the majority of the hotels of the opponent are located outside the EU, this does not mean that the opponent’s services through these hotels, were not offered or known by EU consumers. Nevertheless, the opponent did not present any information in that regard, such as advertisements in EU media, travel agency offers directed to EU consumers, number of bookings/reservations coming from EU consumers, sales and advertising figures corresponding to the EU.

The list of awards granted to the opponent and included as Annex 1.8 is relevant but the information provided therein is taken from the opponent’s own website and has not been corroborated by the remaining or additional evidence. The press articles are admittedly from independent media and show that the opponent advertised its services; however, it remains unclear whether the opponent’s advertising and promotional efforts of the trade mark led to a certain degree of knowledge amongst the relevant consumers.

Consequently, the market share enjoyed by the services and their position on the market cannot be inferred from the documents submitted and the Opposition Division is unable to ascertain the degree of recognition of the trade mark among the relevant public.

It must be noted that the finding of a reputation of a mark, just as genuine use cannot be based on probabilities or suppositions but must be demonstrated by solid and objective evidence (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22, 12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47).

In the present case, despite showing some use of the trade mark, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public and in the relevant territory; it does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted.

As a result, the evidence does not show the degree of recognition of the trade mark or that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent invoked Article 8(4) EUTMR in relation to the trade name ‘Shangri-La Hotel’ and the domain name ‘shangri-la.com’, ‘shangri-la.com/fr/paris/shangrila/’, used in the course of trade in France.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 07/03/2018. Therefore, the opponent was required to prove that the signs on which the opposition is based, namely the trade name ‘Shangri-La Hotel’ and the domain name ‘shangri-la.com’, ‘shangri-la.com/fr/paris/shangrila/, were used in the course of trade of more than local significance in France prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for services invoked by the opponent, namely the following:

Telecommunications services provided via fiber optic, wireless and cable networks; television broadcasting; on-line transmission of electronic publications; on-line communication services; rental of access time to global computer networks; broadcast of information by means of television; audio, video and multimedia broadcasting via the Internet or other communications networks; automatic telephone answering machines; communication services; e-mail and mailbox services; leasing access time to a computer database and to global computer networks; messaging services; transmission of digital information; online document delivery via a global computer networks.

The evidence submitted by the opponent on 10/05/2019 to prove the use of the signs in the course of trade of more than mere local significance has already been listed above under the ‘Proof of use’ section, including the additional evidence filed on 31/12/2019.

Having examined all the evidence, the Opposition Division considers that the opponent failed to prove that the trade name ‘Shangri-La Hotel’ and the domain name ‘shangri-la.com’ (shangri-la.com/fr/paris/shangrila) were used in the course of trade of more than mere local significance in France in relation to the above-mentioned invoked services.

Although the evidence submitted by the opponent shows use of the trade name ‘Shangri-La Hotel’ and of the domain name ‘shangri-la.com’ in France, this use is not in relation to the above-mentioned services consisting of various telecommunication, transmission, broadcasting, rental thereof, etc. services. It is clear from the evidence that the opponent does not provide any of the relevant services. The fact that the opponent may offer internet connection, TV or other telecommunication services to its guests or clients does not mean that the opponent is actually active in the field of telecommunications. The opponent has not submitted evidence showing that it promotes and sells these services to third parties under the signs at issue. The use must be public, i.e. it must be external and apparent to actual or potential customers of the services.

Therefore, the opponent has not shown use for the services/business activities on the basis of which the opposition was entered.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the services and business activities on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Jakub MROZOWSKI

Liliya YORDANOVA

Monika CISZEWSKA

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.

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