OPPOSITION No B 3 108 085

TUI AG, Karl-Wiechert-Allee 4, 30625 Hannover, Germany (opponent), represented by Karsten Fischer, Karl-Wiechert-Allee 4, 30625 Hannover, Germany (professional representative)

a g a i n s t

Albufeira Hotel G.M.B.H. & Co. Betriebs KG, Largo Jacinto D’ Ayet, Nº 7, 8200‑071 Albufeira, Portugal (applicant), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon 14, 1249‑103 Lisboa, Portugal (professional representative).

On 24/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 085 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 07/01/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 102 700 ‘ROCAMAR’ (word mark). The opposition is based on European Union trade mark registration No 17 337 627 ‘TUI BLUE ROCADOR’ (word 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.

a) The services

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

Class 43: Temporary accommodation; providing food and drink; accommodation bureau services; providing and rental of holiday homes, apartments and flats; room reservation services; hotel reservations; hotel services; motels; catering for the provision of food and beverages; boarding houses; rental of meeting rooms; bar services; restaurants; providing of food and drink in internet cafés; consultancy by means of call centres or hotlines in the field of accommodation bureaux, organisation and rental of holiday homes, temporary accommodation reservations and hotel reservation services, services for providing of food and drink and temporary accommodation.

The contested services are the following:

Class 43: Hotel services; serving food and drinks; providing temporary accommodation.

Hotel services; providing temporary accommodation are identically contained in both lists of services (including synonyms).

The contested serving food and drinks is included in the broad category of the opponent’s providing food and drink. 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

TUI BLUE ROCADOR	ROCAMAR
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 signs are the word marks ‘TUI BLUE ROCADOR’ and ‘ROCAMAR’.

The component ‘TUI’ will be perceived by part of the relevant public (the average consumer) as a fanciful word without any particular meaning in relation to the services concerned and is, therefore, distinctive to a normal degree. For another part of the relevant public, such as the English-speaking part, it refers to a ‘New Zealand honeyeater, Prosthemadera novaeseelandiae, having a glossy bluish-green plumage with white feathers at the throat: it mimics human speech and the songs of other birds’ (information extracted from Collins Dictionary on 18/03/2021 at https://www.collinsdictionary.com/dictionary/english/tui). Since it has no meaning in relation to the services at issue, it is distinctive to a normal degree.

In its observations, the opponent correctly points out that the component ‘BLUE’ is part of the basic English vocabulary known by the majority of the relevant public in the European Union, who will easily understand it as the common term for the adjective/colour (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). This word has no clear or direct meaning in relation to the services concerned. Therefore, it must be considered distinctive.

The opponent also states that the common component of the signs ‘ROCA*’, placed at the beginning of ‘ROCAMAR’ and ‘ROCADOR’, refers to the Spanish word roca, meaning ‘rock’ (information extracted from Lexico on 18/03/2021 at https://www.lexico.com/es-en/traducir/roca). The Opposition Division notes that, even if ‘ROCA*’ refers to ‘rock’, this is only true for the Spanish-speaking part of the relevant public. The component ‘*MAR’ is also a Spanish word, meaning ‘sea’ (information extracted from Lexico on 18/03/2021 at https://www.lexico.com/es-en/traducir/mar). Therefore, the Spanish-speaking part of the relevant public might perceive the verbal element ‘ROCAMAR’ as referring to a ‘rock in the sea’. However, in the event that the verbal element ‘ROCAMAR’ has a meaning for the Spanish-speaking part of the relevant public, this meaning would only help those consumers to more easily distinguish between the signs. The examination of the opposition will proceed as if the component ‘ROCADOR’ of the earlier mark and the verbal element ‘ROCAMAR’ of the contested sign are invented terms without a particular meaning, which for the opponent is the best light in which the opposition can be examined. Consequently, they have an average degree of distinctiveness.

The opponent argues that the small aural differences due to the two additional words of the earlier mark are insufficient to evoke a different overall aural impression between the contested sign and the last component of the earlier mark. Moreover, according to the opponent, this fact is also sufficient to create a strong visual and conceptual similarity between the earlier mark and the contested sign.

Visually and aurally, however, the signs only coincide in the string of letters/sounds ‘ROCA*’ (which forms only part of a verbal element) and their last letter, ‘*R’. They differ in the appearance and pronunciation of the additional last letters ‘*MAR’ in the earlier mark and ‘*DOR’ in the contested sign. Furthermore, the additional first two components/sounds ‘TUI BLUE’ in the earlier mark create a sufficient difference between the signs’ visual and aural impressions.

The opponent states that the component ‘ROCADOR’ is visually significant due to the fact that both verbal elements (‘ROCADOR’ and ‘ROCAMAR’) contain the same first component ‘ROCA*’, and that the average consumer tends to attach the greatest importance to the distinctive verbal elements of a trade mark. However, the beginnings of the signs are different, which is an important differentiating factor. The beginning of a trade mark will, in general, have a greater impact on consumers, who will tend to focus their attention there rather than on the ends of marks, as mentioned above.

Therefore, the signs are visually and aurally similar at most to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark’s component ‘BLUE’ as explained above, the other sign has no meaning in that territory. Contrary to the opponent’s arguments, since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the services are identical. They are directed at the public at large with an average degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar at most to a low degree and conceptually not similar. This is due to the fact that, although the verbal elements contain the same string of letters ‘ROCA*’, the remaining letters in the respective elements differ. Furthermore, the additional distinctive component ‘TUI BLUE’, placed at the beginning of the earlier mark, creates a sufficient distance between the signs’ overall impressions.

In support of its arguments, the opponent referred to the reasoning of a previous judgment (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594). This judgment held that there may be a likelihood of confusion on the part of the public where the goods or services are identical and where the contested sign is a juxtaposition of another party’s company name with a registered mark that has a normal degree of distinctiveness and an independent distinctive role in that sign, although it may not by itself determine the sign’s overall impression. The Opposition Division is of the opinion that the principles set out in the judgment referred to by the opponent cannot be applied in the present case. The element ‘ROCADOR’ occupies the third position in the earlier mark and is similar to the contested sign only insofar as it shares its first four letters ‘ROCA*’ and last letter ‘*R’. Two completely different words are thus created, ‘ROCADOR’ and ‘ROCAMAR’. In addition, the signs differ in the presence of additional and distinctive elements in the earlier mark. Therefore, this argument of the opponent must be set aside.

Therefore, the differences between the marks at issue are clearly perceivable by the consumers and sufficient to exclude any likelihood of confusion between the marks, despite the identity of the contested services with those of the earlier mark.

Considering all the above, even with identical services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Valeria ANCHINI

Claudia SCHLIE

Biruté SATAITE-GONZALEZ

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.