of the Fifth Board of Appeal
of 5 July 2016
In Case R 1407/2015-5
Peninsula Investments Company Limited
PO Box 3945
Applicant / Appellant
represented by Taylor Wessing LLP, 5 New Street Square, EC4A 3TW, London, United Kingdom
Pº de la Castellana, 280
Opponent / Respondent
represented by Elzaburu, S.L.P., Miguel Angel, 21, ES-28010 Madrid, Spain
APPEAL relating to Opposition Proceedings No B 2 394 362 (European Union trade mark application No 12 529 806)
The Fifth Board of Appeal
composed of G. Humphreys (Chairperson), A. Pohlmann (Rapporteur) and A. Szanyi Felkl (Member)
Registrar: H. Dijkema
gives the following
By an application filed on 23 January 2014, Peninsula Investments
Company Limited (‘the applicant’) sought to register the word
for goods and services in Classes 16, 39 and 43, among them the following in Class 43:
Class 43 ‒ Services for providing food and drink; temporary accommodation; hotel services; resort hotel and lodging services; hotel reservation services; rental of holiday accommodation; restaurants; snack-bars; bar services; arranging of wedding receptions; rental of chairs, tables, table linen and glassware; information and advice relating to all these services.
The application was published on 6 May 2014.
On 6 August 2014, SIGLA, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all services listed above at para. 1.
The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
The opposition was based on the following earlier right:
European Union trade mark No 9 044 751, of the word mark FUNDY, filed on 21 April 2010 and registered on 14 September 2010 for the following goods and services:
Class 29 ‒ Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats;
Class 30 ‒ Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice;
Class 43 ‒ Restaurant services (food); temporary accommodation.
The opponent based its opposition on all the above-mentioned goods and services covered by its earlier mark and directed it against the services of the mark applied for as mentioned in paragraph 1 above.
By decision of 19 May 2015 (‘the contested decision’), the
Opposition Division upheld the
The contested ‘services for providing food and drink; restaurants; snack-bars’ are identical to the opponent’s ‘restaurant services (food)’.
The contested ‘temporary accommodation; hotel services; resort hotel and lodging services; rental of holiday accommodation’ are identical to the opponent’s ‘temporary accommodation’.
The contested ‘hotel reservation services’ are similar to a high degree to the opponent’s ‘temporary accommodation’.
The contested ‘bar services’ and the opponent’s ‘restaurant services (food)’ are also similar to a high degree.
The contested ‘arranging of wedding receptions; rental of chairs, tables, table linen and glassware; information and advice relating to all these services [services for providing food and drink; temporary accommodation; hotel services; resort hotel and lodging services; hotel reservation services; rental of holiday accommodation; restaurants; snack-bars; bar services; arranging of wedding receptions; rental of chairs, tables, table linen and glassware]’ are similar to the opponent’s services.
Visually and aurally, the signs are similar to the extent they coincide in the letters ‘F-U-N-D’, which form the beginning of the two signs.
Conceptually, the element ‘LAGOON’ of the contested sign will be associated, by at least the English-speaking public, with a small body of water. Therefore, the signs will not be similar for the part of the public who understands this word. For the part of the public that does not understand the word ‘LAGOON’, this element will not draw consumers’ attention entirely away from the similarities between the signs.
Given the above coincidences, the signs are considered to be similar.
The services found to be identical or similar are directed at the public at large with an average degree of attention.
Given all the above similarities, there is a likelihood of confusion on the part of the public.
On 17 July 2015, the applicant filed an appeal against the contested
decision, requesting that the decision be
The opponent did not file any observations in reply.
The arguments raised in the statement of grounds may be summarised as follows:
The contested decision failed to take sufficient account of the significant visual and aural differences between the marks, as it focused almost exclusively on the coincidence of the first four letters of each mark (F-U-N-D).
‘FUNDU LAGOON’ is visually a longer mark than ‘FUNDY’ as it consists of two words and this affects the overall impression of the mark. The additional word would not be disregarded by the average consumer of the services; therefore it should not be disregarded in the overall assessment of the sign.
Also, the relevant consumer would not disregard the word ‘LAGOON’, which is not negligible, has its own distinctive character, is fanciful and not descriptive of the Class 43 services covered. The Office erred in supposing that consumers would presume that ‘FUNDU’ was merely descriptive of a type of lagoon or that ‘LAGOON’ has no independent distinctive character in relation to the goods covered by the application.
The Opposition Division placed undue importance on the beginning of the marks, failing to assess the marks as a whole.
The difference in the last letter of the words ‘FUNDU’ and ‘FUNDY’ is will also be noticed by the consumers, as they would research carefully before buying the services. This has a visual impact on the overall impression of the marks, and also aurally.
Moreover, any aural similarity between ‘FUNDU’ and ‘FUNDY’ is offset by the addition of the word ‘LAGOON’ in the applicant’s mark.
Given the nature of the applicant’s and the opponent’s services provided, it can be expected that the consumers will take more than the usual care before booking or purchasing such services, including services for providing food and drink. Particularly given that some of these services may be expensive and can play a significant role for the consumers’ comfort and peace of mind. Therefore, the consumers will tend to pay careful attention to the signs under which these services are sold.
The Opposition Division erred in failing to consider the high degree of attention that the relevant public will pay to the marks, even in the absence of the opportunity to compare them side by side.
The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.
The appeal is, however, not well founded.
Article 8(1)(b) EUTMR
Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
The risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case (09/07/2003, T‑162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30‑33).
The perception of the marks in the minds of the relevant public for the services in question plays a decisive role in the global assessment of the likelihood of confusion.
As the earlier trade mark is a European Union trade mark, the relevant public for assessing a likelihood of confusion between the marks consists of consumers in the European Union.
The targeted public of the goods at issue is composed of the average consumer in the European Union, who is reasonably well informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The services at issue are mainly restaurant and hotel services including ancillary services like bar services, arranging of wedding receptions or the rental of chairs, tables, table linen and glassware. These services are partly directed to the general public and partly to professionals, e.g. in the gastronomy or hotel sector. In the global assessment of the likelihood of confusion the group with the lower level of attention must be taken into account (15/07/2011, T-221/09, ERGO Group, EU:T:2011:393, § 21 and 15/02/2011, T-213/09, Yorma’s EU:T:2011:37, § 25; see also, 19/04/2013, T-537/11, Snickers, EU:T:2013:207, § 27 and the case-law cited therein).
Hotel and restaurant services do not by nature target a segment of the market having special needs but are addressed to any kind of travellers or persons wishing to find temporary accommodation or a place to have food and/or drink (13/06/2012, T-277/11, EU:T:2012:295, iHotel, § 42). Depending on the circumstances affecting the choice of a hotel or restaurant, the degree of attention will vary from average to high (17/09/2012, R 588/2012-4, THOMPSON HOTELS / THOMSON et al.). In particular, as regards temporary accommodation, the level of attention paid at the moment of purchase or selection of the services at issue will be at least average, given that those services are usually not selected on a daily basis and may be relatively expensive (02/06/2016, T-510/14 and T-536/14, Park Regis, EU:T:2016:333, § 40).
Comparison of the services
In assessing the similarity of the services, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37), the usual origin and the relevant public of the goods or services.
The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).
The contested ‘services for providing food and drink; temporary accommodation; hotel services; resort hotel and lodging services; hotel reservation services; rental of holiday accommodation; restaurants; snack-bars; bar services’ are identical or highly similar to the ‘restaurant services (food); temporary accommodation’ of the earlier mark. This was not contested by the opponent.
Moreover, the services ‘arranging of wedding receptions; rental of chairs, tables, table linen and glassware; information and advice relating to all these services’ of the contested mark are similar to ‘restaurant services (food); temporary accommodation’ of the opposing mark. It is common for hotels and restaurants to also rent out chairs, tables, table cloths or glassware when needed (e.g. for catering). The services are complementary and target the same user (31/10/2014, R 968/2014-5, THAI MANGO (fig.) / MANGO TREE (fig.), § 17; 02/10/2014, R 2028/2013-1, Cafe Prag (fig.) / CAFE PRAG (fig.), § 27; 18/03/2011, R 1039/2010-4, SHAKTI AYURVEDA CENTER / AYUSHAKTI, § 17). It is also a well-known fact that hotels often also organise wedding receptions. Therefore, these services have the same commercial origin and are provided for the benefit of the hotel’s clients but also for external clients. Finally, in order to run the services provided by a hotel or restaurant, it is necessary to respond to requests sent by customers and provide information about the services. Information and advice services are indispensable for operating the services of temporary accommodation and are, therefore, complementary. The services are directed at the same consumers and are likely to be provided by the same undertakings. Thus, all those services are similar, which was not contested by the opponent in the appeal proceedings.
Comparison of the signs
The signs to be compared are the following:
The relevant territory is the European Union.
The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspects (02/12/2009, T-434/07, Solvo, EU:T:2009:480, § 31; 13/09/2010, T-149/08, Sorvir, EU:T:2010:398, § 29; 14/04/2011, T-466/08, Acno focus, EU:T:2011:182, § 52).
The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41).
The contested sign is a word mark consisting of two words, namely ‘FUNDU’ and ‘LAGOON’. The earlier European Union trade mark is a word mark consisting of one single word, namely ‘FUNDY’.
The Board will first examine the dominant and distinctive elements of the signs at issue before evaluating their similarity.
The words ‘FUNDU’ and ‘FUNDY’ will be perceived as fanciful words without any meaning by the relevant public in the European Union. Even if ‘Fundy’ is the name of a national park in Canada, as stated by the Opposition Division, it is unlikely that the public in the relevant territory will know this. The additional term ‘LAGOON’ of the contested mark will be understood by the English-speaking consumers in the European Union as a shallow body of water separated from a larger body of water by barrier islands or reefs. The Board takes the view that the word ‘FUNDU’ of the contested sign plays a more important role in the perception of the consumers than the subsequent term ‘LAGOON’, for the following reasons.
Firstly, it should be borne in mind that consumers normally attach more importance to the beginnings of words (see, to that effect, 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 54; 17/03/2004, T‑183/02 and T‑184/02, Mundicor, EU:T:2004:79, § 81). It is therefore likely that the public will pay more attention to the first word ‘FUNDU’ than to the subsequent term ‘LAGOON’ of the contested sign.
Secondly, bearing in mind that the services at issue are restaurant and hotel services, at least the English-speaking consumers in the European Union will assume that the hotel or restaurant is situated near a lagoon when being confronted with the sign ‘FUNDU LAGOON’. If the lagoon is an unknown place the word ‘lagoon’ would simply be perceived as a synonym for lake, bay, reservoir or gulf. In general, the notion ‘lagoon’ is often associated with images of tropical islands, crystal clear water in different shades of blue and green, white sandy beaches and palm trees. The evocation of these positive images is welcomed and desired by any hotel or restaurant owner even if the establishment is not situated in tropical regions. The word ‘lagoon’ of the contested sign could also refer to a famous tourist destination such as the Venetian Lagoon in Italy, the Mar Menor in Spain or the Blue Lagoon in Iceland. To sum up, the ‘Lagoon’ component of the contested mark is likely to be seen by the English-speaking consumers in the European Union as a suggestive reference to the place where the restaurant or hotel service is offered (compare with 02/06/2016, T-510/14 and T-536/14, Park Regis, EU:T:2016:333, § 76, in which the General Court confirmed that the component ‘Park’ of a trade mark for hotel and restaurant services was ‘highly evocative and even descriptive of the services at issue’ since it referred, ‘in particular to the presence of large gardens or ornamental grounds’).
It is with this in mind that the similarity of the conflicting signs has to be assessed.
Visually, the element ‘FUNDU’ of the contested sign is similar to the word ‘FUNDY’ of the earlier mark. The contested mark contains the additional word ‘LAGOON’. Although that additional component must not be disregarded its role is less important than that of the words ‘FUNDU’, for the reasons explained above (see paras 31-33 above). Overall, the signs are similar to a certain degree.
Phonetically, the pronunciation of ‘FUNDY’ and ‘FUNDU’ is similar from the perspective of the public in the European Union. Although the additional word of the mark applied for has to be taken into account when evaluating the phonetic similarity between the signs, it is undeniable that the marks overlap in the pronunciation of the element ‘FUND-’. The marks, therefore, have a degree of phonetic similarity between them.
Conceptually, there are no indications that the consumers in the European Union would associate the terms ‘FUNDU’ or ‘FUNDY’ with any specific meaning (see above para. 31). The word ‘LAGOON’ will be associated by the English-speaking public with a shallow body of water separated from a larger body of water by barrier islands or reefs (see above para. 31). When being confronted with the term ‘FUNDU LAGOON’ in relation with restaurant or hotel services the English-speaking consumers will think of a hotel or restaurant being situated near a lagoon. On the other hand, a conceptual comparison cannot be made from the perspective of those consumers who do not understand the meaning of the word ‘Lagoon’.
Consequently, the signs are similar overall due to the presence of the similar elements ‘FUNDU’ and ‘FUNDY’.
Distinctiveness of the earlier mark
Since the opponent did not claim the earlier mark’s enhanced distinctiveness through use, the assessment must rest on its distinctiveness per se. The Board agrees with the Opposition Division that the term ‘FUNDY’ enjoys a normal degree of distinctiveness for hotel and restaurant services from the relevant public in the European Union.
Global assessment of likelihood of confusion
A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That 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. The global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods and/or services covered. Accordingly, a lesser degree of similarity between these goods and/or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). In the case at hand, most of the services are identical or highly similar. Even if one took the view that the conflicting signs were overall similar only to a low degree a likelihood of confusion would still exists, based on the interdependence principle.
Moreover, the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (02/06/2016, T-510/14 and T-536/14, Park Regis, EU:T:2016:333, § 91). In this respect, consumers tend to remember similarities rather than dissimilarities between signs.
Moreover, it is common in the hotel market for a principal mark to appear in various forms, depending on the type of service offered (02/06/2016, T-510/14 and T-536/14, Park Regis, EU:T:2016:333, § 93). In such circumstances it is conceivable that the public targeted may regard the restaurant or hotel services designated by contested sign ‘FUNDU LAGOON’ as a specific range of services coming from the same provider as the earlier mark ‘FUNDY’. The Board considers that the component ‘LAGOON’ is less dominant and distinctive than the word ‘FUNDU’, due to its position at the end of the mark and because it will be perceived by the English-speaking public in the European Union as referring to the presence of a lagoon near the hotel or restaurant (see above para. 33).
It follows from all the above that at least the English-speaking public within the European Union may assume that the conflicting marks derive from the same or economically-linked trade origins. In that respect, it should be noted that, in order for registration of a European Union trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) EUTMR exists in part of the European Union (see 14/12/2006, T‑81/03, T‑82/03 and T‑103/03, Venado, EU:T:2006:397, § 76 and the case-law cited therein). Consequently, the Board confirms as stated in the contested decision that there is a risk of confusion between the marks in conflict with respect to identical and similar services in Class 43, pursuant to Article 8(1)(b) EUTMR,.
The appeal is, therefore, dismissed.
Since the applicant is the losing party in the appeal proceedings within the meaning of Article 85(1) EUTMR, it must bear the fees and costs pursuant to Article 85(6) EUTMR.
In accordance with Article 85(6) EUTMR and Rule 94(7)(d) CTMIR, the Board fixes the amount of costs to be reimbursed by the applicant to the opponent at EUR 550 for the representation costs with respect to the appeal proceedings. The apportionment of costs foreseen in the contested decision remains unchanged.
On those grounds,
Dismisses the appeal;
Orders the applicant to bear the opponent’s representation costs in the appeal proceedings fixed at EUR 550.
A. Szanyi Felkl
05/07/2016, R 1407/2015-5, FUNDU LAGOON / FUNDY