OPPOSITION No B 3 093 543

Metropolitan Spain S.L., Galileu, 186 baixos, 08028 Barcelona, Spain (opponent), represented by Aguilar I Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Transport for London (statutory authority), 5 Endeavour Square Stratford, E20 1JN London, United Kingdom (applicant), represented by Csy London, 10 Fetter Lane EC4A 1BR, London United Kingdom (professional representative).

On 30/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 543 is upheld for all the contested services in Class 43.

2. European Union trade mark application No 18 063 620 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 063 620, namely against all the services in Class 43. The opposition is based, inter alia, on the Spanish trade mark registration No 3 675 225 . The opponent invoked, inter alia, 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 Spanish trade mark registration No 3 675 225.

a) The services

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

Class 43: Services for providing food and drink; temporary accommodation; bar and restaurant services; catering services; provision of facilities for events, meetings and temporary offices; restaurants reservation; hotels and temporary accommodation reservations; nurseries, day-care and elderly care facilities.

The contested services are the following:

Class 43: Services for providing food and drink; cafés; bars; restaurants; grill restaurants; bistros; carvery restaurants; tapas bars; delicatessens [restaurants]; pizza parlours; ice-cream parlours; canteens; canteen services; cafeteria services; tea rooms; coffee shops; coffee supply services for offices [provision of beverages]; business catering services; corporate hospitality [provision of food and drink]; food preparation; food sculpting; food preparation for others on an outsourcing basis; catering services; outside catering services; organisation of catering for birthday parties; banqueting services; arranging of wedding receptions [venues]; arranging of wedding receptions [food and drink]; mobile catering services; mobile restaurant services; providing food and drink via a mobile truck; supplying of meals for immediate consumption; fast food restaurants; take-out restaurant services; takeaway services; self-service restaurants; self-service cafeteria services; salad bars; juice bars; snack-bar services; serving of alcoholic beverages; bar services; beer garden services; pubs; wine bars; wine tasting services (provision of beverages); sommelier services; cocktail lounge services; night club services [provision of food]; club services for the provision of food and drink; private members drinking club services; private members dining club services; personal chef services; information relating to cookery, food and drink provided on-line from a computer database on the internet; provision of information relating to bars and restaurants; reservation services for the booking of meals; consultancy services in the field of food and drink catering; cookery advice; providing information in the nature of recipes for drinks; providing information about bartending and bar services; providing reviews of restaurants and bars; operating membership accommodation; hotel services for preferred customers; hotels, hotel services, hostels, boarding houses, holiday and tourist accommodation; boarding house services; guesthouses; guest house services; motels; motel services; resort hotels; resort hotel services; hotel catering services; hotel restaurant services; hiring of marquees, pavilions; rental of tents; providing campground facilities; hiring of temporary office space; room booking; room hire services; room rental for exhibitions; rental of meeting rooms; rental of rooms for social functions; providing community centres for social gatherings and meetings; provision of facilities for board meetings, conferences, exhibitions, conventions; hiring of furniture for conferences, exhibitions, presentations; rental of lighting apparatus, furniture; rental of kitchen worktops, non-electric cooking heaters; rental of cooking apparatus; rental of catering equipment; rental of food service apparatus; rental of chocolate fountains, cotton candy making machines, popcorn poppers; rental of drink dispensing machines; rental of water dispensers; rental of bar equipment; rental of bed linen, quilts, pillows, blankets, beds; rental of chairs, tables, tableware, table linen, glassware, cutlery; rental of floor coverings, rugs, carpets, curtains, wall hangings, towels, furnishings for hotels; accommodation services for functions; hospitality services; reception services for temporary accommodation; accommodation bureau services [hotels, boarding houses]; consultancy services relating to hotel facilities; rating of holiday accommodation; electronic information services relating to hotels; hotel reservation services provided via the internet; booking agency services for hotel accommodation; booking of hotel accommodation; tour operator services for the booking of temporary accommodation; travel agency services for booking accommodation; temporary accommodation reservation services; letting of holiday accommodation; provision of information relating to hotels and temporary accommodation; child care services; children’s crèches; nurseries; provision of information about crèche services; pet day care services; animal boarding; boarding for pets; cattery services; boarding kennel services; pet hotel services; provision of consultancy and information about the aforesaid services.

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.

All the contested services can be divided in four main categories: provision of food and drink; temporary accommodation; rental of furniture, linens, table settings and equipment for the provision of food and drink; nurseries, day-care and elderly care facilities.

The opponent’s services cover those belonging to the same above categories as well as catering services. Even if it is possible that some of the contested services may coincide in numerous relevant criteria such as their nature, purpose, their complementarity, whether they are competing services or that they are even identical, these services clearly belong to homogeneous sectors on the market. Furthermore, the majority of them have – at least – the same provider, target the same end user and are being offered through the same distribution channels. In view of these considerations, none of the contested services can be considered dissimilar.

Consequently, contrary to the applicant’s arguments, it must be concluded that all the contested services are at least similar to a low degree to the opponent’s services.

b) Relevant public — degree of attention

The average consumer of the category of services 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 at least similar to a low degree are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the services.

The signs

	METROPOLITAN LINE
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 word element ‘METROPOLITAN’ common in both signs is similar to the Spanish adjective ‘METROPOLITANO’. This element is understood by the relevant public in the sense of ‘belonging to a metropolis and suburb’ (information extracted from Diccionario Real Academia Espanola on 18/11/2020 at https://dle.rae.es/metropolitano?m=form). It may be allusive of a characteristic of the services, namely the place where these services are offered. Therefore, it has a below average degree of distinctiveness in relation to the services concerned.

The word elements ‘LOUNGE CAFE RESTAURANT’ of the earlier mark will be understood as referring to a place where people can relax and/or food and drinks are provided. These verbal elements are descriptive for the following services ‘services for providing food and drink; temporary accommodation; bar and restaurant services; catering services; provision of facilities for events, meetings and temporary offices; restaurants reservation; hotels and temporary accommodation reservations’ and therefore non-distinctive. Moreover, they are weakly distinctive for the remaining services, namely ‘nurseries, day-care and elderly care facilities’, because they allude to the fact that these services are provided in places, such as, for instance, hospitals and residences, where there are also bar and restaurant areas.

The black rectangular background of the earlier mark has a purely decorative nature and, therefore, is not distinctive. When a sign consists 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 sign in question by its verbal element than by describing its figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The word element ‘LINE’ of the contested sign will be understood by the relevant public, given the close similarity with the corresponding Spanish word ‘LINEA’. As this verbal element will be perceived as referring to a particular group or kind of products or as a line of services, it is weakly distinctive of the relevant services. Despite the aforesaid finding, contrary to the applicant’ arguments, the earlier mark, taken as a whole, will be meaningless in the context of the services concerned.

Furthermore, on the basis of the information provided in the Annex 4, the applicant infers that the contested sign will be understood by the relevant public as an expression referring to the famous London underground line because many Spanish people visit London every year. However, it cannot be assumed that all the visitors in UK or London understand the language in view of that piece of evidence. Otherwise, the applicant’s reasoning would be applicable to any consumer in the European Union, given the variety of the London tourists. Furthermore, Annex 4 states that ‘websites, brochures, leaflets, signs and so on need to be available in Spanish’. Clearly, the average Spanish consumer will be not able to recognise English words and so the contested sign as an expression. Finally, ‘METROPOLITAN LINE’ cannot even be considered as a basic English word.

The verbal element ‘METROPOLITAN’ in the earlier mark is the dominant element as it is the most eye-catching because of its size and position in the sign.

Visually and aurally, the signs coincide in the common word element ‘METROPOLITAN’ and its sound. However, they differ in the word elements ‘LOUNGE CAFE RESTAURANT’ of the earlier mark that will most probably not be pronounced because of its small size, secondary position and also descriptive/weakly distinctive character. This is because since consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44), and tend to shorten marks containing several words. Furthermore, the signs differ in the weak word element ‘LINE’ of the contested sign and its sounds and in the non-distinctive black label of the earlier mark.

Therefore, the signs are visually similar to an average degree and, given the fact that the figurative element as indicated above is not pronounced, they are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the verbal element ‘METROPOLITAN’, included in both signs, will be associated with the same meaning explained above, the signs are conceptually similar to an 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.

c) 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the services.

Furthermore, it must be recalled that since the earlier mark under examination is a registered mark in Spain, the presumption of its validity applies and therefore it has at least the minimum degree of distinctiveness (24/05/2012, C‑196/11 P, F1‑Live, EU:C:2012:314, § 40‑41).

According to the case-law of the Court of Justice, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (by analogy, 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, 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, § 61).

d) 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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 and 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The relevant services are at least similar to a low degree. They target the public at large and business customers. The degree of attention may vary from average to high. The earlier mark has a below average degree of distinctiveness.

The signs are visually and conceptually similar to an average degree and aurally highly similar because they share the first verbal element ‘METROPOLITAN’. Contrary to the applicant’s observations, this word element has a stronger impact on the consumer’s perception compared to the verbal elements ‘LOUNGE CAFE RESTAURANT’ of the earlier mark and ‘LINE’ of the contested sign which are non-distinctive or weak in relation to the services concerned.

Therefore, in view of the overall similarity between the signs, it cannot be ruled out that the relevant public could be led to believe that the identical and similar to varying degrees services in question come from the same undertaking or economically-linked undertakings despite the limited distinctiveness of the earlier mark (by analogy, 14/02/2008, T‑189/05, Galvalloy, EU:T:2008:39, § 71; 06/06/2013, T‑411/12, Pharmastreet, EU:T:2013:304, § 37 and 41; 29/03/2012, T‑547/10, Calcimatt, EU:T:2012:178, § 36; 05/02/2010, R 287/2009-1, AquaDrop / aquatop, § 28).

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 Spanish trade mark registration No M 3 675 225 . It follows that the contested trade mark must be rejected for all the contested services.

The applicant argues that the mark METROPOLITAN is commonly registered in the EU for services in Class 43 by providing examples of such registrations (Annex 3). The mere submission of extracts from the EUTM Register in Annex 3 does not make it possible to establish that products bearing these marks and the services are actually marketed and rendered in Spain, the relevant public is accustomed to seeing that element and its distinctive character has thus been weakened because of its frequent use. The fact that many marks may exist on the Register that contain the term ‘METROPOLITAN’ for the relevant contested services in Class 43 is, as such, not particularly decisive, since it does not prove that these marks are used on the market (02/12/2014, T‑75/13, Momarid, EU:T:2014:1017, § 85; 08/03/2013, T‑498/10, David Mayer, EU:T:2013:117, § 77; 24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 68).

As the earlier right as indicated above leads to the success of the opposition and to the rejection of the contested trade mark for all the contested 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8 (5) EUTMR.

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

Aldo BLASI

Birgit FILTENBORG

Francesca CANGERI

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.