OPPOSITION No B 3 073 809

Room Mate, S.A, c/Velazquez 50, 3ª planta, 28001 Madrid, Spain (opponent), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative)

a g a i n s t

Debliteck Services Ltd, Shop 3 – 4, 148 Faneromenis Avenue, PO Box 421, 6035 Larnaca, Cyprus (applicant), represented by George Myrants, 9 Carrington Square, Harrow HA3 6TF, United Kingdom (professional representative).

On 03/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 809 is partially upheld, namely for the following contested services:

Class 39: Transport; travel arrangement; travel agency services, namely, making reservations and bookings for transportation and providing information and reviews concerning travel on the Internet, over computer networks and global communication networks; organizing and arranging travel activities, namely, tours, travel to events and travel to attractions; making reservations for travel activities, namely for tours, travel to events and travel to attractions; providing information about tours and travel to events and attractions; organizing sight-seeing tours; travel and tour information services; travel and tour ticket reservation services; arranging bookings of day trips and sight-seeing tours; provision of information relating to travel and travel destinations; reservations and bookings of ground transport, air transport and water transport; travel itinerary management services; providing a website that aggregates travel information from multiple sources and manages and maintains the data to provide travel solutions to travellers and others; providing information, news and commentary in the field of travel; travel management, namely management of accommodations and transportation; advisory services relating to travel; computerised information services relating to travel; information relating to travel (services for the provision of-); arrangement of travel to and from hotels.

Class 43: Services for providing food and drink; temporary accommodation; hotels, hostels, boarding houses, holiday and tourist accommodation; hotel information; hotel services; hotel reservations; resort hotels; arranging hotel accommodation; hotel reservation services; appraisal of hotel accommodation; provision of hotel accommodation; reservation of hotel accommodation; hotel room booking services; hotel reservation services provided via the Internet or via mobile application software; travel agency services for making hotel reservations; providing online information relating to hotel reservations; travel agency services, namely, making reservations and bookings for hotel, lodging and temporary accommodation; providing hotel and lodging services for others, namely, providing and relaying information including booking payment information, in connection with reservations and bookings for temporary lodging and providing reviews of hotels on the Internet, over computer networks and global communication networks; travel agency services, namely, making reservations and bookings for restaurants, hotels and apartments; providing accommodation information, namely ratings of accommodations with the use of stars, under reviews and the like; providing temporary accommodation information services; making reservations and bookings for temporary accommodations and providing temporary accommodation information over computer networks, global computer communication networks and mobile networks; temporary accommodation reservation services, namely, providing confirmations of bookings of temporary accommodations to customers via email.

2. European Union trade mark application No 17 957 824 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 957 824 for the word mark ‘HOTEL MATE’. The opposition is based on, inter alia, European Union trade mark registration No 13 380 514 for the word mark ‘ROOM MATE HOTELS’. The opponent invoked Article 8(1)(a) and (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 European Union trade mark registration No 13 380 514 for the word mark ‘ROOM MATE HOTELS’, which covers the broadest scope of services.

a) The goods and services

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

Class 43: Providing of food and drink for guests; Hotels and temporary accommodation.

The contested goods and services are the following:

Class 9: Computer software; mobile applications; downloadable mobile applications; downloadable application software; downloadable computer application software for mobile digital electronic devices and global computer communications networks; application software for use with smartphones and tablets (downloadable); computer software and downloadable mobile applications for booking reservations for hotels, lodgings, apartments and temporary accommodation; computer software and downloadable mobile applications for accessing information relating to hotels, lodgings, apartments and temporary accommodation; computer software and downloadable mobile applications for accessing travel information, hotel and restaurant recommendations and travel information guides; computer software and downloadable mobile applications for posting reviews, ratings and recommendations in relation to hotels, businesses providing temporary accommodation and activities in the fields of entertainment, travel, tourism and restaurants; computer software and downloadable mobile applications for travel, accommodation and car rental reservations, bookings, information, and customer loyalty and rewards programs in connection therewith; computer software and downloadable mobile applications, in particular for travel planning, travel arrangement, travel itinerary management and travel expense management; computer databases relating to hotels, lodgings, apartments and temporary accommodation; downloadable computer application software for mobile digital electronic devices and global computer communications networks for booking reservations for hotels, lodgings, apartments and temporary accommodation, accessing information relating to hotels, lodgings, apartments and temporary accommodation, accessing hotel and restaurant recommendations and travel information guides, and posting reviews, ratings and recommendations; software for the manipulation, processing, transmission, dissemination and display of data and information relating to maps travel, position, navigation, routing, location, geographical point-of-interest information, hotels and businesses providing temporary accommodation; software for calculating and displaying travel routes; computer application software for mobile phones, namely, software that allows users to find, research, analyse, compare and book special offers and promotions in the fields of travel, tourism, hotels, lodging and temporary accommodation; downloadable mobile application software facilitating and enabling users to book and reserve hotel rooms, post reviews and recommendations about hotels, receive correspondence and notifications from hotels, and make payments.

Class 35: Advertising services; marketing services; advertising services relating to hotels; advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks; business management; business administration; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; conducting customer loyalty and incentive programs for commercial promotion and for advertising purposes; business consulting and management services in the field of travel, travel planning and the operation of travel-related businesses; retail sales in the field of travel related data, documents, maps, guides and other travel related products and information; retail sales in the field of travel accessories, books, apparel and similar products of interest to tourists and travellers; providing on-line price comparisons of travel, hotel, lodging and temporary accommodation services; providing a searchable directory of travel information for obtaining data and information from others via the internet; providing a searchable directory of information relating to hotels, lodging and temporary accommodation; providing on-line information to others, namely advertisements or solicitations; conducting customer loyalty, reward, affinity and incentive programs for commercial promotion and for advertising purposes; conducting customer loyalty, reward, affinity and incentive programs for commercial promotion and for advertising purposes in relation to the travel, tourism and hotel industry; business consulting services in the field of travel, travel planning and hotels; providing airfare and hotel rate comparison information; management of hotel incentive schemes; administrative hotel management; providing hotel rate comparison information.

Class 39: Transport; travel arrangement; travel agency services, namely, making reservations and bookings for transportation and providing information and reviews concerning travel on the internet, over computer networks and global communication networks; organizing and arranging travel activities, namely, tours, travel to events and travel to attractions; making reservations for travel activities, namely for tours, travel to events and travel to attractions; providing information about tours and travel to events and attractions; organizing sight-seeing tours; travel and tour information services; travel and tour ticket reservation services; arranging bookings of day trips and sight-seeing tours; provision of information relating to travel and travel destinations; reservations and bookings of ground transport, air transport and water transport; travel itinerary management services; providing a website that aggregates travel information from multiple sources and manages and maintains the data to provide travel solutions to travellers and others; providing information, news and commentary in the field of travel; travel management, namely management of accommodations and transportation; advisory services relating to travel; computerised information services relating to travel; information relating to travel (services for the provision of-); arrangement of travel to and from hotels.

Class 43: Services for providing food and drink; temporary accommodation; hotels, hostels, boarding houses, holiday and tourist accommodation; hotel information; hotel services; hotel reservations; resort hotels; arranging hotel accommodation; hotel reservation services; appraisal of hotel accommodation; provision of hotel accommodation; reservation of hotel accommodation; hotel room booking services; hotel reservation services provided via the internet or via mobile application software; travel agency services for making hotel reservations; providing online information relating to hotel reservations; travel agency services, namely, making reservations and bookings for hotel, lodging and temporary accommodation; providing hotel and lodging services for others, namely, providing and relaying information including booking payment information, in connection with reservations and bookings for temporary lodging and providing reviews of hotels on the internet, over computer networks and global communication networks; travel agency services, namely, making reservations and bookings for restaurants, hotels and apartments; providing accommodation information, namely ratings of accommodations with the use of stars, under reviews and the like; providing temporary accommodation information services; making reservations and bookings for temporary accommodations and providing temporary accommodation information over computer networks, global computer communication networks and mobile networks; temporary accommodation reservation services, namely, providing confirmations of bookings of temporary accommodations to customers via email.

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.

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 ‘in particular’, used in the applicant’s list of goods in Class 9, indicates that the specific goods 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.

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 goods cover software, including computer software, software for mobile digital electronic devices and downloadable mobile applications. Although the opponent’s services of providing of food and drink and temporary accommodation might be the subject matter, or a content, of the contested software, contrary to the arguments of the opponent, this factor alone does not give rise to any degree of similarity as the contested goods and the opponent’s services do not coincide in any relevant aspect: they have different natures, purposes and methods of use, they are neither in competition nor complementary in the sense that one is indispensable for the use of the other. Hotels and restaurants are not normally engaged in the development of software. Rather, they would outsource the development of such software to IT companies. Therefore, these goods and services are clearly provided by different undertakings with expertise in completely different areas.

Consequently, the contested goods in Class 9 and the opponent’s services are dissimilar.

Contested services in Class 35

The contested services in Class 35 comprise advertising, marketing, business management business administration, business consulting, retail sales and commercial information.

Although the opponent’s services of providing of food and drink and temporary accommodation might be the subject matter of these contested services, this factor alone does not give rise to any degree of similarity as the contested services and the opponent’s services do not coincide in any relevant aspect: they have different natures, purposes and methods of use, they are neither in competition nor complementary in the sense that one is indispensable for the use of the other. These services are provided by different undertakings with expertise in completely different areas.

Consequently, the contested services in Class 35 and the opponent’s services are dissimilar.

Contested services in Class 39

The contested transport also covers transportation of tourists to and from hotels. These type of services are often provided by hotels.

Therefore the contested transport; travel arrangement; travel agency services, namely, making reservations and bookings for transportation and providing information and reviews concerning travel on the internet, over computer networks and global communication networks; organizing and arranging travel activities, namely, tours, travel to events and travel to attractions; making reservations for travel activities, namely for tours, travel to events and travel to attractions; providing information about tours and travel to events and attractions; organizing sight-seeing tours; travel and tour information services; travel and tour ticket reservation services; arranging bookings of day trips and sight-seeing tours; provision of information relating to travel and travel destinations; reservations and bookings of ground transport, air transport and water transport; travel itinerary management services; providing a website that aggregates travel information from multiple sources and manages and maintains the data to provide travel solutions to travellers and others; providing information, news and commentary in the field of travel; travel management, namely management of accommodations and transportation; advisory services relating to travel; computerised information services relating to travel; information relating to travel (services for the provision of-); arrangement of travel to and from hotels are similar to the opponent’s temporary accommodation as they usually coincide in provider, distribution channels and relevant public.

Contested services in Class 43

Services for providing food and drink; temporary accommodation; hotels are identically included in both lists of services (including synonyms).

The contested hostels, boarding houses, holiday and tourist accommodation are included in the broad category of the opponent’s temporary accommodation. Therefore they are identical.

The remaining contested services, namely hotel information; hotel reservations; hotel reservation services; appraisal of hotel accommodation; reservation of hotel accommodation; hotel room booking services; hotel reservation services provided via the internet or via mobile application software; travel agency services for making hotel reservations; providing online information relating to hotel reservations; travel agency services, namely, making reservations and bookings for hotel, lodging and temporary accommodation; providing hotel and lodging services for others, namely, providing and relaying information including booking payment information, in connection with reservations and bookings for temporary lodging and providing reviews of hotels on the internet, over computer networks and global communication networks; travel agency services, namely, making reservations and bookings for restaurants, hotels and apartments; providing accommodation information, namely ratings of accommodations with the use of stars, under reviews and the like; providing temporary accommodation information services; making reservations and bookings for temporary accommodations and providing temporary accommodation information over computer networks, global computer communication networks and mobile networks; temporary accommodation reservation services, namely, providing confirmations of bookings of temporary accommodations to customers via email are in essence information and reservation services relating to the provision of food and drink and temporary accommodation.

They are similar to the opponent’s services of providing of food and drink for guests; hotels and temporary accommodation, as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

ROOM MATE HOTELS	HOTEL MATE
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 English verbal elements ‘HOTEL’, ‘HOTELS’ and ‘ROOM’ will be understood with their English meanings by the significant majority, if not all, of the relevant public in the European Union, especially in relation to the relevant services of temporary accommodation, since English is commonly used in the tourism industry. Moreover, the word ‘hotel’ is identical or has a very similar equivalent in the majority of European languages.

The coinciding verbal element ‘MATE’ has different meanings in various European languages. For example, in English it means (colloquially) a friend or a fellow comrade. In Spanish it means matt, dull (not shiny), in French matt, pale (feminine singular form). In some languages this element is meaningless.

For economy of proceedings and in order to avoid multiple variants of the conceptual comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark and the contested sign are both word marks. As such they have no dominant (eye-catching) elements.

The elements ‘ROOM’, ‘HOTEL’ and ‘HOTELS’ are weak/non-distinctive, since the relevant public will perceive them as an indication of the kind of the services and/or the place of their provision and/or their destination and/or the subject matter of the reservation and information services.

The coinciding element ‘MATE’, with its meaning as indicated above, has no direct relation to the relevant services, and is therefore distinctive to an average degree.

Visually and aurally the signs coincide in (the sound of) the independent distinctive element ‘MATE’ and the non-distinctive element ‘HOTEL*’ (which in the earlier mark has an additional ‘S’ and is placed in a different position in relation to the word ‘MATE’). The signs differ in (the sound of) the initial verbal element of the earlier mark, ‘ROOM’, which has limited distinctiveness and therefore also a limited impact on the perception of the sign, despite its initial position.

Therefore, the signs are visually and aurally similar to an above average degree.

Conceptually, both signs convey the concepts of the adjective understood as ‘matt, not shiny’ and ‘a hotel’, the latter being non-distinctive in relation to the relevant services. The earlier mark also conveys the concept of ‘a room’, which is of limited distinctiveness for the relevant services.

Therefore, the signs are conceptually similar to an above average 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.

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, despite the presence of some weak/non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) 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 come from the same undertaking.

The goods are partly identical, partly similar and partly dissimilar. The degree of attention of the relevant public is average. The signs are visually, aurally and conceptually similar to an above average degree. The earlier mark, as a whole, has an average degree of inherent distinctiveness, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 380 514 for the word mark ‘ROOM MATE HOTELS’. 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 services found to be identical or similar 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 goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No 3 088 160 for the word mark ‘ROOM MATE HOTELS’ covering hotel services in Class 43;

 Spanish trade mark registration No 2 608 117 for the figurative mark covering catering services; temporary accommodation in Class 43.

Since these marks are either identical to the mark already compared, or less similar on account of the additional figurative elements, and cover the same or a narrower scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

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

María del Carmen COBOS PALOMO

Anna ZIOŁKOWSKA

Begoña URIARTE VALIENTE

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.