OPPOSITION No B 3 078 862

Romantik Hotels & Restaurants AG, Kaiserstr. 53, 60329 Frankfurt am Main, Germany (opponent), represented by MAS & P: Miess Altherr Sibinger und Partner Rechtsanwälte Partnerschaftsgesellschaft, Kaiserring 48-50, 68161 Mannheim, Germany (professional representative)

a g a i n s t

Francesco Ponte, via Riccardo Wagner 8, 90139 Palermo, Italy (applicant).

On 09/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 862 is upheld for all the contested services.

2. European Union trade mark application No 18 018 619 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 18 018 619 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 17 565 086 (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 European Union trade mark registration No 17 565 086.

a) The services

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

Class 43: Providing temporary accommodation; hotels, hostels and boarding houses, holiday and tourist accommodation; providing food and drink; hotels; temporary accommodation reservations; accommodation bureaux [hotels, boarding houses]; rental of meeting rooms; information relating to hotels and restaurants.

The contested services are the following:

Class 43: Provision of temporary furnished accommodation; providing temporary housing accommodations; arranging and providing temporary accommodation; providing temporary lodging for guests; providing temporary accommodation in holiday homes; providing temporary accommodation in holiday flats; providing temporary accommodation as part of hospitality packages; providing information about temporary accommodation via the internet; providing temporary accommodation in boarding houses; travel agency services for booking temporary accommodation.

The contested arranging and providing temporary accommodation is identically contained in the opponent’s list of services (with slightly different wording).

The contested provision of temporary furnished accommodation; providing temporary housing accommodations; providing temporary lodging for guests; providing temporary accommodation in holiday homes; providing temporary accommodation in holiday flats; providing temporary accommodation as part of hospitality packages; providing temporary accommodation in boarding houses all refer to the provision of various types of temporary accommodation. They are included in the broad category of the opponent’s providing temporary accommodation. Therefore, they are identical.

The contested providing information about temporary accommodation via the internet overlaps with the opponent’s information relating to hotels and restaurants. Therefore, they are identical.

The contested travel agency services for booking temporary accommodation overlaps with the opponent’s providing temporary accommodation. Therefore, they are identical.

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 are directed at the public at large.

The degree of attention is average.

c) The signs

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).

Both signs under comparison are figurative marks composed of both verbal and figurative elements, as seen in the table above.

The verbal element ‘HOTELS’ of the earlier mark, or its singular form ‘hotel’, will be understood by the relevant public as ‘a commercially run establishment providing lodging and usually meals for guests, and often containing a public bar’ (information extracted from Collins English Dictionary on 08/03/2020 at https://www.collinsdictionary.com/dictionary/english/hotel). The verbal element ‘Apartments’ of the contested sign is a plural form of the word ‘apartment’, which will convey, due to its proximity to similar equivalents (e.g. appartement in French, appartamento in Italian, apartament in Romanian, apartmán in Slovak, apartamento in Spanish) and/or widespread use within the relevant territory, at least for a significant part of the relevant public, the meaning of ‘a set of rooms for living in, usually on one floor of a large building’ (information extracted from Collins English Dictionary on 08/03/2020 at https://www.collinsdictionary.com/dictionary/english/apartment). Bearing in mind that the relevant services are related to the provision of temporary accommodation and information thereto, it is considered that these elements are non-distinctive for these services, as they merely describe their kind, that is, the type of establishment where said services are provided.

The verbal element ‘Romantic’ of the contested sign, due to its similar equivalents in the official languages of the European Union (e.g. romantický in Czech/Slovak, romantique in French, romántico in Spanish, romantisk in Swedish) will also be understood by the public in the relevant territory as, for example ‘something that is beautiful in a way that strongly affects your feelings’ (information extracted from Collins English Dictionary on 08/03/2020 at https://www.collinsdictionary.com/dictionary/english/romantic). A similar meaning will be attributed to the word element ‘ROMANTIK’ of the earlier mark, which in some languages (e.g. Czech and Slovak) additionally refers to ‘a person who is romantic, as in being idealistic, amorous, or soulful’ (information extracted from Collins English Dictionary on 08/03/2020 at https://www.collinsdictionary.com/dictionary/english/romantic). Taking into account that the relevant services concern the provision of temporary accommodation and information thereto, the distinctiveness of the verbal elements ‘Romantic’ and ‘ROMANTIK’ is slightly reduced, to a below-average degree, as both elements evoke romantic/positive aspects of those services.

Apart from the verbal elements ‘ROMANTIK’ and ‘HOTELS’, the earlier mark also contains a depiction of a building with cutlery and a key inside, which alludes to the type of services provided by the opponent. Therefore, this figurative element of the earlier mark is weak for the relevant services. The two horizontal lines above and below the verbal element ‘ROMANTIK’ are merely decorative in the mark.

In the contested sign, there are two red lines above the verbal element ‘Romantic’ arranged in a manner resembling a roof. This figurative element is also weak for the relevant services, as it only refers to their type.

As regards the figurative aspects of the signs (figurative elements, stylisations of the verbal elements and colours), the fact remains that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘ROMANTI*’/‘Romanti*’ of their top verbal elements, and they differ in the final letter of these elements, ‘K’ in the earlier mark versus ‘c’ in the contested sign. They further differ in their non-distinctive verbal elements, ‘HOTELS’ of the earlier mark versus ‘Apartments’ of the contested sign, and in their weak figurative elements, the stylisations of their verbal elements, and the colours used, which, however, as explained above, have less impact on the consumers’ perception.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘ROMANTI*’/’Romanti*’, present identically in both signs in their top verbal elements. The signs differ in the sound of the final letter of these elements, ‘K’ in the earlier mark and ‘c’ in the contested sign, which, in some parts of the relevant territory (e.g. in those countries where English is understood) will be pronounced identically. The signs further differ in the sound of their non-distinctive verbal elements, ‘HOTELS’ of the earlier mark versus ‘Apartments’ of the contested sign (if these are pronounced).

Therefore, the signs are aurally highly similar, if not identical (in the case of English-speaking parts of the public).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their particular elements. As both signs will be associated with the concept of a romantic stay in temporary accommodation, they are 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.

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 a non-distinctive and weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested services are identical to the opponent’s services and they target the public at large with an average degree of attention. The earlier trade mark has a normal degree of inherent distinctiveness for the relevant services.

The conflicting signs are visually similar to an average degree, aurally similar to a high degree (if not identical for part of the public), and conceptually similar to a high degree, as explained in section c) of this decision. This is because both signs coincide in their most distinctive verbal elements, ‘ROMANTIK’/‘Romantic’ respectively (by which the relevant public will refer to the signs), except in the final letter.

The differences between the signs, as indicated above, may either go unnoticed by the relevant public (the final letter of their top verbal elements, ‘K’ versus ‘c’), are non-distinctive for the relevant services (the verbal elements at the bottom part of the signs, ‘HOTELS’ versus ‘Apartments’), or are weak and/or have less impact on the consumer’s perception (the figurative elements, stylisations of the verbal elements, and colours). Therefore, these elements are not sufficient to counteract the similarities of the signs.

Indeed, 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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example, by altering the typeface or colours, or by adding verbal or figurative elements to them in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is therefore conceivable that the relevant public will regard the services designated by the conflicting signs as belonging to two types of temporary accommodation services provided by the same undertaking.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 565 086. It follows from the above that the contested sign must be rejected for all the contested services.

As the earlier European Union trade mark registration No 17 565 086 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 right 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, he 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

Begoña URIARTE VALIENTE

Martin MITURA

Boyana NAYDENOVA

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.