OPPOSITION No B 2 440 934

Montage Hotels & Resorts, Llc, 1 Ada Parkway, Suite 250, Irvine California 92618, United States of America (opponent), represented by Carpmaels & Ransford (Trade Marks) Llp, One Southampton Row, London WC1B 5HA, United Kingdom (professional representative)

a g a i n s t

Multi Montage Ab, Kurödsvägen 13A, 45155 Uddevalla, Sweden (applicant), represented by Advokatfirman Lindahl Kb, P.O. Box 11911, 404 39, Göteborg, Sweden (professional representative).

On 22/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 440 934 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 939 401. The opposition is based on European Union trade mark registrations No 6 349 666, No 10 890 234 and No 11 539 012. 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.

1. The goods and services

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

EUTM No 6 349 666

Class 37: Real estate development; construction of residential properties.

EUTM No 10 890 234

Class 36: Real estate brokerage and management services, namely, management of real estate, condominiums and apartments; leasing and rental of condominiums and apartments; real estate selection and acquisition; research services relating to real estate selection; real estate procurement for others.

Class 37: Real estate development services; supervising and managing building construction and site development.

Class 43: Bar services; cocktail lounge services; restaurant services; banquets and banqueting services; bistro services; cafe services; cafeteria services; coffee shop services; canteen services; snack bar services; wine bar services; take away food services; catering services; services for providing food, drink and meals; cooking services; food preparation services; temporary accommodation; hotel services; hotel services for preferred customers; accommodation reservations; accommodation and catering; preparation of food, drink, meals and refreshments; accommodation finding and accommodation agency services for holiday makers, tourists and travelers; temporary accommodation reservation services; travel agency services for booking and making accommodation and hotel reservations; arranging of food, drink, meal and catering for wedding receptions; arranging of wedding reception venues; child care and child minding services; guest houses; hospitality services (accommodation, food and drink); provision of facilities for conferences, exhibitions and conventions; rental and booking of rooms and meeting rooms; rental of chairs, tables, table linen, glassware; reservation of hotel accommodation and meal; resort hotels; resort lodging services; booking and providing hotel and temporary accommodation and restaurant places; booking services for hotels; information, consultancy and advisory services in relation to the foregoing.

EUTM No 11 539 012

Class 35: Management and operation of condominiums, hotels, and apartments for others.

Class 36: Real estate brokerage and management services, namely, management of real estate, hotels, condominiums and apartments; leasing and rental of condominiums and apartments; real estate procurement for others.

Class 37: Real estate development services; real estate site selection;  supervising and managing building construction and site development.

Class 43: Bar services; cocktail lounge services; restaurant services; banquets and banqueting services; bistro services; café services; cafeteria services; coffee shop services; canteen services; snack bar services; wine bar services; take away food services; catering services; services for providing food, drink and meals; cooking services; food preparation services; temporary accommodation; hotel services; resort services; hotel and resort services for preferred customers; accommodation reservations; accommodation and catering; preparation of food, drink, meals and refreshments; accommodation finding and accommodation agency services for holiday makers, tourists and travellers; temporary accommodation reservation services; travel agency services for booking and making accommodation and hotel reservations; arranging of food, drink, meal and catering for wedding receptions; arranging of wedding reception venues; child care and child minding services; guest houses; hospitality services (accommodation, food and drink); provision of facilities for conferences, exhibitions and conventions; rental and booking of rooms and meeting rooms; rental of chairs, tables, table linen, glassware; reservation of hotel accommodation and meal; resort services; booking and providing hotel and temporary accommodation and restaurant places; booking services for hotels; information, consultancy and advisory services in relation to the foregoing.

The contested goods and services are the following:

Class 19: Building and construction materials and elements, not of metal.

Class 20: Furniture and furnishings.

Class 37: Construction consultation; Building, construction and demolition; Building maintenance and repair; Building repair; General building contractor services; On site building project management.

Class 42: Surveying and exploration.

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

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and 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.

Contested goods in Class 19

The contested goods are non-metallic building materials. The opponent’s services include construction services, real estate services of various types, restauration services and travel services. The contested goods and the opponent’s services have a different nature, purpose and methods of use. The services are intangible whereas goods are tangible. The goods and services are not in competition and not complementary, contrary to the arguments of the opponent. It is not reasonable to assume that the provider of construction materials also provides construction services or vice versa. The goods/services have different distribution channels and consumers. The contested goods are dissimilar to all the services of the opponent.

Contested goods in Class 20

The contested goods are furniture and furnishings. The opponent’s services include construction services, real estate services of various types, restauration services and travel services. The contested goods and the opponent’s services have a different nature, purpose and methods of use. The services are intangible whereas goods are tangible. The goods and services are not in competition and not complementary, contrary to the arguments of the opponent. It is not reasonable to assume that the provider of furniture also provides construction services or vice versa. The goods/services have different distribution channels and consumers. The contested goods are dissimilar to all the services of the opponent.

Contested services in Class 37

The contested Building, construction services include, as broader categories the opponent’s construction of residential properties in EUTM No 6 349 666. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

General building contractor services; On site building project management are identically contained also in the opponent’s lists of services (including synonyms) in EUTM No 10 890 234 and No 11 539 012.

The contested Building maintenance and repair; Building repair; Construction consultation; demolition are similar to opponent’s construction of residential properties as they can coincide in provider, end user and distribution channels.

Contested services in Class 42

Surveying is the study or practice of measuring altitudes, angles, and distances on the land surface so that they can be accurately plotted on a map in preparation for the setting out on the ground of the positions of proposed construction or engineering works. Exploration is an action of searching an area for natural resources. The opponent’s services include construction services, real estate services of various types, restauration services and travel services. The contested services and the opponent’s services have a different nature, purpose and methods of use. While it is true that a surveyor’s work precedes that of a builder the services nevertheless represent separate areas of expertise and, are not in competition contrary to the arguments of the opponent. The fact that liaison will take place between building and surveying professionals in the planning of a construction project is not sufficient for the services at issue to be considered complementary. It is not reasonable to assume that the provider of surveying and exploration services also provides construction services or vice versa. The services have different distribution channels and consumers. The contested services are dissimilar to all the services of the opponent.

2. 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 or similar are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

MONTAGE
Earlier trade marks	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 earlier marks all consist of the same word mark. It has no dominant elements.

The contested sign is a figurative mark. It contains word elements in a stylised typeface. There are two letters, ‘MM’ in very large script and underneath them are two words ‘Multi Montage’ in much smaller typeface. The large letters ‘MM’ are the dominant elements of the mark due to their size and placement.

The word MONTAGE in the earlier mark refers to the process of assembling, putting up, mounting something. The word as such is present in the French, Dutch and Danish languages and has very close equivalents in all the languages of the European Union. The word will be perceived as having some allusive significance vis a vis the services at issue, especially in respect of construction services, which nowadays include assembly operations in respect of smaller or even pre-fabricated buildings. Moreover this allusiveness will be perceived in relation to construction supervision and management and also for real estate development services as these all involve building-related projects which may include assembly processes. The word is therefore considered to be somewhat weak in respect of all services in class 37 of the earlier marks.

The word MONTAGE in the contested mark refers to the process of assembling, putting up, mounting something. The word as such is present in French, Dutch and Danish languages and has very close equivalents in all the languages of the European Union. The word is considered to be weak in respect of all services in class 37 of the contested mark for the reasons stated above .

The word MULTI refers to many or much and is a commonly and widely used and understood prefix in all European Union languages. The word is weak for all services in class 37.

Visually, the signs coincide in the weak elements MONTAGE. However, they differ in the remaining word elements MM, which is the dominant element, and in a weak element MULTI of the contested mark, which are not present in the earlier marks. The marks also differ in the overall stylisation and set up of the contested mark.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters forming the weak element MONTAGE, present identically in both signs. The pronunciation differs in the sound of the letters MM forming the dominant element in the contested mark, as well as in the sound of the letters forming the weak element MULTI of the contested mark, which have no counterparts in the earlier signs.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the public in the relevant territory will perceive weak elements MULTI (in the contested mark) and MONTAGE in all marks, as explained above, and will also perceive the dominant and distinctive element MM as a combination of letters in the contested sign.

The conceptual similarity in the marks is limited only to the weak element MONTAGE.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 marks are 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 marks must be seen as low for part of the goods and services in question, namely for all services in Class 37.

5. Global assessment, other arguments and conclusion

The goods and services were considered to be partly identical, partly similar and partially dissimilar. The similarity of the signs is limited to the extent of the weak element MONTAGE.

Furthermore, the contested sign also contains the additional verbal elements MULTI, and the dominant letters MM, the latter being configured to match the width of the words below. Although the element MULTI is considered weak, the remaining distinctive and dominant element MM, placed in the beginning of the sign, will be pronounced foremost and will not be overlooked. .

The marks give a different impression as a result of these clear differences listed above. Besides, the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind. These differences are considered to be sufficient to counteract the fact that some of the services are identical and/or similar. The differences between the marks are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the abovementioned imperfect recollection principle.

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

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

Richard THEWLIS

Erkki Münter

Vít MAHELKA

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.