OPPOSITION No B 3 056 720

Hotel Arena B.V., ‘s-Gravesandestraat 51, 1092 AA Amsterdam, Netherlands (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative)

a g a i n s t

Hotel Malmö Arena AB, Box 31055, 200 49 Malmö, Sweden (applicant), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 720 is upheld for all the contested services.

2. European Union trade mark application No 17 875 210 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 875 210 for the figurative mark namely against all the services in Classes 35, 41 and 43. The opposition is based on, inter alia, Benelux trade mark registration No 966 769 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 966 769.

1. The services

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

Class 35: Advertising; business management; business administrations; office functions; commercial management of enterprises; commercial management of matters into the box of executive office lining by other enterprises; professional guiding by hotel situations, involving hotels, bars and clubs; merchandise; arranging and organising advertising events and advertisement transmission; organisation of promotional actions and activities, involving openings, demonstrations and product presentation; commercial management; import and export of, into and and retail of, retail services and distributorship services services in the field of consumers products, namely magnetic data media, personal care products, clothing, mode and -accessories, furniture, house accessories, interior articles, works of art, fabrics, textile goods and printed matter, foodstuffs, foodstuff, stationery, games, electronic and household products, software; drawing up of statistics; market canvassing, research and analysis; opinion polls; datasets into a central file; administrative database management; organisation of fairs, events and exhibitions for commercial or advertising purposes; aforementioned services also into the box of franchising; information, information and consultancy on the aforesaid services; all aforementioned services not all via electronic way, including the internet.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; training, courses and workshops, including the remember and production of educational material for that purpose; arranging and organising conferences, seminars, congresses, symposiums, lectures, workshops and other such educational and cultural activities; organisation of fairs and exhibitions for educational, relaxation, musicals, cultural and festive uses; entertainment; composition, arranging and performing of mode, music, dancing, theatrical and other entertainment programs and events and spectacle; the production of photographic reporting, movies and video films; composition and rendered of training, courses, workshops, ‘master classes’ and seminars; the publishing, loan, publishing and being available for newsletters, books, newspapers, magazines, pamphlets, leaflets, printed matter and other leaflets and publications; arranging of fairs and exhibitions for educational and cultural purposes; the arranging of club and dancing evening (leisure); organisation of educational, musicals and/or cultural events and demonstrations; information, information and consultancy on the aforesaid services; all aforementioned services not all via electronic way, including the internet.

Class 43: Restaurants (providing food and beverages); temporary accommodations; hotels; restaurant and catering services; caterer services and catering; letting of rooms for meeting, reception, occasion, exhibitions services, purses, congresses, conferences, workshops, seminars and other such events; the preparing and meal-serving services; information, information and consultancy on the aforesaid services, not all provided via electronic way, including the internet.

The contested services are the following:

Class 35: Business management of hotels; secretarial services provided by hotels; hotel management service [for others]; consultancy services relating to the administration and management of hotels.

Class 41: Night club services [entertainment]; entertainment services; live demonstrations for entertainment; party planning [entertainment]; hospitality services (entertainment); providing entertainment information; organising of entertainment; provision of rooms for entertainment; provision of entertainment facilities in hotels; organisation of conferences, exhibitions and competitions; consultancy and information services relating to arranging, conducting and organisation of conferences; arranging and conducting of conferences, congresses and symposiums.

Class 43: Services for providing food and drink; providing temporary accommodation; reception services for temporary accommodation [management of arrivals and departures]; providing information about temporary accommodation via the internet; temporary accommodation reservations; hotel services; hotel restaurant services; booking of hotel accommodation; hotel catering services; providing exhibition facilities in hotels; rental of conference rooms; catering services for conference centers; provision of conference facilities; hiring of furniture for conferences.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

All of the contested services in this class, namely business management of hotels; secretarial services provided by hotels; hotel management service [for others]; consultancy services relating to the administration and management of hotels are identical to the opponent’s business management; business administrations; office functions; commercial management; information, information and consultancy on the aforesaid services; all aforementioned services not all via electronic way, including the internet, because the opponent’s services include or overlap with the contested services.

Contested services in Class 41

All of the contested services in this class, namely night club services [entertainment]; entertainment services; live demonstrations for entertainment; party planning [entertainment]; hospitality services (entertainment); providing entertainment information; organising of entertainment; provision of rooms for entertainment; provision of entertainment facilities in hotels; organisation of conferences, exhibitions and competitions; consultancy and information services relating to arranging, conducting and organisation of conferences; arranging and conducting of conferences, congresses and symposiums are identical to the opponent’s entertainment; arranging and organising conferences, seminars, congresses, symposiums, lectures, workshops and other such educational and cultural activities; information, information and consultancy on the aforesaid services; all aforementioned services not all via electronic way, including the internet, because the opponent’s services include or overlap with the contested services.

Contested services in Class 43

The contested services for providing food and drink; providing temporary accommodation; reception services for temporary accommodation [management of arrivals and departures]; providing information about temporary accommodation via the internet; temporary accommodation reservations; hotel services; hotel restaurant services; booking of hotel accommodation; hotel catering services; providing exhibition facilities in hotels; rental of conference rooms; catering services for conference centers; provision of conference facilities are identical to the opponent’s temporary accommodations; hotels; restaurant and catering services; information, information and consultancy on the aforesaid services; all aforementioned services not all via electronic way, including the internet, because the opponent’s services include or overlap with the contested services.

The contested hiring of furniture for conferences is similar to the opponent’s catering services; all aforementioned services not all via electronic way, including the internet. The companies that provide catering services for an event frequently also rent the necessary material, such as chairs and tables. Therefore, the contested services may have the same providers, distribution channels, and target the same public.

2. 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.

Most of the services found to be identical or similar target the public at large. However, some, such as consultancy services relating to the administration and management of hotels, target business customers with specific professional knowledge or expertise, especially business customers in the field of temporary accommodation.

The public’s degree of attentiveness may vary from average to high, depending on the specialised nature and sophistication of the services purchased.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The earlier mark is a figurative mark, consisting of the verbal elements ‘HOTEL’ and ‘ARENA’ written in upper-case letters in a standard font, and four red stars underneath these. The verbal element ‘HOTEL’ is a basic word in all official languages of the Benelux, namely Dutch, French (written as ‘hôtel’) and German, and will be automatically associated with the category or kind of establishment that either renders the services at issue, or where these are rendered. It is therefore descriptive and non-distinctive for the services at issue. The verbal element ‘ARENA’, also identically contained in both signs, is a Dutch and German word with the same meaning as in English, namely a level area surrounded by seating, in which sports, entertainments, and other public events are held. It is likely that at least a substantial part of the French-speaking part of the relevant public will perceive the same meaning, since its French equivalent ‘arène’ is very close. As it follows the descriptive word ‘HOTEL’, it will be perceived as the name of the hotel that renders the services, or where these are rendered. The word ‘ARENA’ may be allusive, and therefore weak, in relation to some of the services at issue, such as entertainment services and arranging and conducting of conferences, congresses and symposiums, as it could describe the type of establishment where these services are rendered. However, it is not semantically linked with other relevant services , such as those in Class 35, and therefore has a normal degree of distinctiveness for these services. The figurative depiction of four red stars will be associated with a four-star hotel. Therefore, this element is non-distinctive.

The contested sign is a figurative mark, consisting of the verbal elements ‘MALMO’, ‘ARENA’ and ‘HOTEL’, with all these elements positioned underneath each other. The figurative element is a stylised, very basic red crown positioned above the letter ‘O’ of the element ‘MALMO’, exactly where a diaeresis (two dots) is written in the name of the Swedish city ‘Malmö’. This figurative element will not have a significant impact on the relevant public, since the depiction of a crown is commonly used on labels and in trade marks for decorative purposes or as symbols of quality. The verbal element ‘MALMO’ will be known by the relevant public as one of the biggest cities in Sweden, even in Scandinavia, and will therefore be perceived as descriptive within the contested sign as merely indicating the geographical location where the relevant services are rendered. As far as the distinctiveness of the elements ‘HOTEL’ and ‘ARENA’ is concerned, reference is made to the findings above.

In any case, the degree of distinctiveness of the common elements ‘HOTEL’ and ‘ARENA’ — although not distinctive or weak for some services — is on an equal footing and has no impact on the comparison because the differentiating elements do not play a more distinctive or dominant role within either sign, as has been explained above.

Visually and aurally, the signs coincide in the verbal elements ‘HOTEL’ and ‘ARENA’ (which take a different position in the respective signs), and their sounds. They differ in (the sound of) the contested sign’s verbal element ‘MALMO’ and in their figurative elements, which are non-distinctive.

Therefore, taking into account that the signs coincide in all the verbal elements of the earlier mark, they are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. With the difference that the contested sign conveys information on the geographical location of the establishment (that renders the services or where the services are rendered), the signs will be associated with the same meaning and are therefore conceptually highly similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no 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 in relation to some of the relevant services, despite the presence of some non-distinctive elements in the mark, as stated above in section c) of this decision, and as low in relation to other relevant services.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The services are partly identical and partly similar, and they target the general public and business customers with specific professional knowledge or expertise. The degree of attention varies from average to high. The earlier mark enjoys an average or low degree of inherent distinctiveness depending on the services concerned. The signs are visually and aurally similar to at least an average degree, whereas they are conceptually similar to a high degree.

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). Account is also taken of the fact that, in general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). The difference caused by the different verbal element ‘MALMO’ at the beginning of the contested sign is outweighed by the fact that the signs share the elements ‘ARENA’ and ‘HOTEL’ as independent and observable elements. The signs’ respective figurative elements cannot alter this outcome as these are non-distinctive.

Admittedly, the degree of distinctiveness of the earlier mark is low for part of the services at issue. However, the low degree of distinctiveness cannot prevent the opposition from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102).

Therefore, taking into account the identity or similarity of the contested services and the relevant public’s imperfect recollection, it cannot be excluded that the relevant consumers, even if they have a high degree of attention, will perceive the contested mark as a variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), in that it merely points out the geographical location of the establishment (that renders the services or where the services are rendered), and they will therefore assume that the services covered are from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 966 769. It follows that the contested trade mark must be rejected for all the contested services.

As the aforementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Zuzanna STOJKOWICZ

Christophe DU JARDIN

Ferenc GAZDA

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.