OPPOSITION Nо B 3 111 726

 

Distopia Holding B.V., Springweg 60 A, 3511 VT Utrecht, Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative) 

 

a g a i n s t

 

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

On 02/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 111 726 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 133 422 is rejected in its entirety.

 

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

 

REASONS

 

On 17/02/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 133 422 (figurative mark). The opposition is based on, inter alia, Benelux trade mark registration No 994 366 ‘BUNK’ (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.

The opposition is based on two earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 994 366 ‘BUNK’ (word mark).

 

a) The services

 

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

Class 35: Advertising; management of commercial affairs; business administration; administrative services, including administrative services for the acceptance and processing of orders, bookings and orders from third parties; publication of printed advertising material; distribution of advertising material; promotional activities; publicity; business organisation, business and accounting consultancy; marketing; market research and market analysis; commercial and business intermediation in the purchase and sale, import and export, wholesale and retail services, as well as retail services of a web shop for the goods listed in this depot in class 32, food and beverages, beer packages, furniture, interior items, decorative items, gift items and gift packages, beer attributes, including beer glasses, beer mats, coasters and bottle openers, as well as for other commercial products; commercial-business project management; interim management; administrative services in the field of contract management; administrative services in drawing up lease and purchase contracts; trade information; organisation of events for advertising and/or commercial purposes; compilation and management of databases; advice, information and information on the aforementioned services; aforementioned services also via electronic networks, such as the Internet.

Class 43: Restauration (supply of food and drink); hotel services.

The contested services are the following:

 

Class 35: Advertising, marketing and promotional services; advertising; dissemination of advertising matter; promotion and marketing of the goods and services of others via computer and communications networks; advertising services relating to hotels and accommodation; compilation of information into computer databases; business consultancy and advisory services; business project management.

Class 43: Hotels and restaurants, in particular temporary accommodation, providing of guest accommodation and of food and drink, information in connection with services for providing food and drink and temporary guest accommodation via a web platform.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services 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).

Contested services in class 35

Advertising; business project management; advertising, marketing and promotional services; business consultancy and advisory services are identically contained in both lists of services (including synonyms).

The contested dissemination of advertising matter; advertising services relating to hotels and accommodation; promotion and marketing of the goods and services of others via computer and communications networks are included in the opponent's broad category of advertising. Therefore, they are identical.

The contested compilation of information into computer databases overlaps with the opponent's compilation and management of databases. Therefore, they are identical.

Contested services in class 43

The contested hotels and restaurants, in particular temporary accommodation, providing of guest accommodation and of food and drink, information in connection with services for providing food and drink and temporary guest accommodation via a web platform are included in the opponent's broad categories of restauration (supply of food and drink); hotel services. 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 and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention will be relatively high in relation to some of the relevant services in Class 35, such as those related to business management and administration, as these are normally contracted on an infrequent basis, are quite expensive and may have serious consequences for the functioning of a business. The degree of attention is considered average in relation to the remaining services.

Therefore, the relevant public’s degree of attention will vary from average to high, depending on the price, frequency of purchase and the nature of the services.

c) The signs

 

BUNK
Earlier trade mark	Contested sign

 

The relevant territory is 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 Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public, for which the common element ‘BUNK’ is meaningless and therefore has an average degree of distinctiveness.

The contested sign is a figurative mark composed of a the verbal elements ‘Room Mate’, written in stylised orange letters, above the verbal element ‘BUNK’ written in standard upper-case. The English expression ‘Room Mate’ means ‘the person you share a rented room, apartment with’ (information extracted from Collins English dictionary on 27/05/2021 at https://www.collinsdictionary.com/dictionary/english/roommate). This expression will not be understood as such by the French part of the public, who at most, may understand the verbal element ‘Room’ with its English meaning, given that this word is a common English word, habitually used in the hospitality sector. This element, given its meaning, will be weak or non-distinctive for the services related to hospitality, while for the remaining services (such as advertising in Class 35) it will be distinctive.

The verbal element ‘Mate’ is meaningless and therefore, has an average degree of distinctiveness.

As the applicant claims, the element ‘Room Mate’ due to its size and position, dominates the overall composition of the contested sign and is the most eye catching element of the sign, while the verbal element ‘BUNK’ remains secondary, but still perfectly legible.

The earlier mark is a word mark and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the sign is represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the case here.

Visually and aurally, the signs coincide in the component ‘BUNK’ and in its pronunciation, which is the sole element of the earlier mark, while they differ in the additional terms ‘Room Mate’ (and their pronunciation) of the contested sign, that do not have an equivalent in the earlier sign. They also differ in the typeface of the contested sign. Therefore, given the issue regarding the distinctiveness of the element ‘Room’ for part of the services, the signs are visually and aurally similar to at least a below-average degree.  

Conceptually, although at least part of the public in the relevant territory will perceive the meaning of the element ‘Room’ of the contested sign as explained above, the other sign has no meaning in that territory. 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 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).

The services are identical and target the general public as well as professionals whose degree of attention varies from average to high. Furthermore, the signs are visually and aurally similar to at least a below-average degree and conceptually not similar.

Although the signs present some differences, they do share the fully distinctive verbal element ‘BUNK’ which makes up the whole of the earlier mark. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26). As explained in section c), the element ‘BUNK’ of the contested sign occupies a secondary position, but is perfectly legible and is depicted in clear standard upper-case letters (as opposed to the preceding elements). Therefore, contrary to the applicant’s opinion, this coincidence is sufficient to support a likelihood of confusion.

Indeed, the element ‘BUNK’, although it is smaller than the dominant element in the contested sign as mentioned above, will not pass unnoticed by the relevant public. The jurisprudence cited by the applicant (12.06.2007, C-334/05 P, ‘Limoncello’, EU:C:2007:333, § 42, and of 20.09.2007, C-193/06 P, ‘Quicky’, EU:C:2007:539, § 43), which states that only if all the other components of the mark are negligible can the assessment of the similarity be carried out solely on the basis of the dominant element, does not alter this finding, since in this case the coinciding element is the sole element of the earlier mark.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark 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).

Considering all the above, there is a likelihood of confusion for the French-speaking part of the public. Indeed, in accordance with the principle of interdependence addressed above and considering that the earlier sign is reproduced in its entirety in the contested sign, the differences between the signs are easily compensated. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 994 366 ‘BUNK’ (word mark). It follows that the contested trade mark must be rejected for all the contested services.

As the above 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 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, 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

 

 

Marzena MACIAK

Helen Louise MOSBACK

Marta GARCÍA COLLADO

 

 

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.