OPPOSITION No B 2 415 761

Delos Hospitality LLC, 2771 Centerville Road, Suite 400, Wilmington, Delaware 19808, United States of America (opponent), represented by TLT LLP, One Redcliff Street, Bristol BS1 6TP, United Kingdom (professional representative)

a g a i n s t

Staywell Hospitality Group Pty Ltd, Level 10, 80 Clarence Street, Sydney, New South Wales 2000, Australia (applicant), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford’s Inn, London EC4A 1BL, United Kingdom (professional representative).

On 19/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 415 761 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 876 918, namely against all services in Classes 35, 36 and 43, for the figurative sign . The opposition is based on the following earlier rights:

• European Union trade mark registration No 11 488 145 for the word mark ‘STAY WELL’;

• European Union trade mark registration No 11 488 161 for the word mark ‘STAY WELL BY DELOS’;

• international trade mark application designating the European Union No 1 203 760 for the figurative mark .

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION of International trade mark application designating the European Union No 1 203 760

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

In the present case, the evidence filed by the opponent consists of an extract from the EUIPO eSearch database.

However, the evidence from the EUIPO eSearch database is not sufficient to substantiate the opponent’s earlier trade mark, because such extracts are not accepted as valid evidence for this kind of earlier mark.

For international registrations, the only acceptable databases are ROMARIN and TMView. This approach is in line with Rule 19(2)(a) EUTMIR, namely that the opponent must submit a copy of the registration certificate or equivalent documents emanating from the administration by which the trade mark was registered. Furthermore, an exception to this rule is not provided for in Title XIII of the EUTMR. The current practice came into force on 01/07/2012 and applies to all oppositions filed on or after that date.

The opposition was filed on 30/09/2014. Consequently, the extracts from the EUIPO eSearch database are not acceptable and are therefore insufficient to substantiate the opponent’s earlier international trade mark application No 1 203 760.

The opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension, on 20/04/2015.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier right.

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.

1. The services

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

Class 37: Building construction of hotel rooms and consultation services relating thereto.

Class 40: Custom manufacturing of interior decor and furnishings for hotel rooms that promote health and well-being, and consulting related thereto.

Class 42: Design of hotel rooms, interior decor and furnishings and consultation services relating thereto; design of interior decor and furnishings for hotel rooms that promote health and well-being.

Class 43: Hotel services.

The contested services, after limitations, are the following:

Class 35: Advertising, marketing, promotion and publicity services for hotels and services apartments; business management for hotels and services apartments; business administration for hotels and services apartments; administration of the business affairs of retail stores, advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network; retail services connected with the sale of cosmetics and beauty products, precious metals and stones, jewellery, watches, timepieces and clocks, paper, printed matter, stationery, bags, rucksacks, backpacks, cases, wallets, purses, briefcases, carry-alls, satchels, book bags, sports bags, bum bags, handbags, messenger bags, duffel bags, garment carriers, suitcases, trunks and travelling bags, clutch bags, coin purses, key cases, leather key chains, shoulder bags, tote bags, travel bags, umbrellas, parasols, homewares, glassware, porcelain, earthenware, textiles and textile goods, clothing, footwear, headgear, toys, games, playthings, sporting articles and equipment, food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements and smokers articles; online electronic retail services connected with the sale of cosmetics and beauty products, precious metals and stones, jewellery, watches, timepieces and clocks, paper and paper goods, printed matter, stationery, leather goods and bags, homewares, glassware, porcelain, earthenware, textiles and textile goods, clothing, footwear, headgear, toys, games, playthings, sporting articles and equipment, food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements and smokers articles; promotional services for hotels, restaurants, bars, resorts; business management of hotels.

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.

The contested advertising, marketing, promotion and publicity services for hotels and services apartments; all the aforesaid services also provided on-line from a computer database or via the global communications network; promotional services for hotels, restaurants, bars, resorts consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

These services are fundamentally different in nature and purpose from the provision of many other services. The fact that some services may appear in advertisements is insufficient for finding similarity. Therefore, advertising, marketing, promotion and publicity services for hotels and services apartments; all the aforesaid services also provided on-line from a computer database or via the global communications network; promotional services for hotels, restaurants, bars, resorts are dissimilar to the opponent’s services that could be advertised.

The contested business management for hotels and services apartments; business administration for hotels and services apartments; administration of the business affairs of retail stores, advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network; business management of hotels consist of services rendered to help in the working or management of various undertakings. These services and the opponent’s services in Classes 37, 40, 42 and 43, although all referring to hotels and some targeting the same public, namely hotel owners, are usually rendered by different companies, as they belong to different market sectors. They are neither complementary nor in competition. They have different purposes and natures. These services are considered dissimilar.

The contested retail services connected with the sale of cosmetics and beauty products, precious metals and stones, jewellery, watches, timepieces and clocks, paper, printed matter, stationery, bags, rucksacks, backpacks, cases, wallets, purses, briefcases, carry-alls, satchels, book bags, sports bags, bum bags, handbags, messenger bags, duffel bags, garment carriers, suitcases, trunks and travelling bags, clutch bags, coin purses, key cases, leather key chains, shoulder bags, tote bags, travel bags, umbrellas, parasols, homewares, glassware, porcelain, earthenware, textiles and textile goods, clothing, footwear, headgear, toys, games, playthings, sporting articles and equipment, food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements and smokers articles; online electronic retail services connected with the sale of cosmetics and beauty products, precious metals and stones, jewellery, watches, timepieces and clocks, paper and paper goods, printed matter, stationery, leather goods and bags, homewares, glassware, porcelain, earthenware, textiles and textile goods, clothing, footwear, headgear, toys, games, playthings, sporting articles and equipment, food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements and smokers articles consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. The natures, purposes and methods of use of these services are different from those of all the opponent’s services. They are neither in competition nor complementary and they have different commercial origins and distribution channels and target a different public. These services are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

There is no need to assess the claimed ‘family of marks’ or ‘marks in a series’ claimed for the earlier trade marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to be likelihood of confusion. The result would be the same, even if the opponent had proven that it owned a family of marks.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Magnus ABRAMSSON

Katarzyna ZANIECKA

Dorothée SCHLIEPHAKE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.