OPPOSITION No B 2 940 073

Karisma Hotels & Resorts Corporation, Ltd., P.O. Box 3175, Road Town, Virgin Islands (British) (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB — Patentanwälte Rechtsanwälte, Hollerallee 32, 28209, Bremen, Germany (professional representative)

a g a i n s t

Benchamark Capital, S.L., Calle Balbino Marrón, 3 Planta 3 Mód. 15, 41018 Seville, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -4° Of. 412, 28013, Madrid, Spain (professional representative).

On 10/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 940 073 is partially upheld, namely for the following the contested services:

Class 39: Travel arrangement; transport.

Class 41: Sporting and cultural activities; organization of parties; discotheque services; provision of entertainment facilities in hotels; entertainment services provided by hotels leisure services; entertainment services.

Class 43: Temporary accommodation; restaurant services; providing temporary accommodation; provision of food and drink; rental of furniture, linens and table settings; boarding for animals; hotel restaurant services; hotel catering services; consultancy services relating to hotel facilities; electronic information services relating to hotels; restaurant services provided by hotels; resort hotel services; hotel accommodation services; booking of hotel accommodation; booking agency services for hotel accommodation; travel agency services for reserving hotel accommodation; hotels, hostels and boarding houses, holiday and tourist accommodation.

2. European Union trade mark application No 16 472 623 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 16 472 623 for the figurative mark , namely against all the services in Classes 39, 41 and 43. The opposition is based on European Union trade mark registration No 10 678 316 for the word mark ‘AZUL’. The opponent invoked Article 8(1)(b) EUTMR.

DECISION ON THE REVOCATION – ARTICLE 103 EUTMR

Where the Office has made an entry in the Register or taken a decision which contains an obvious error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

The reason for the revocation is that the decision contained an obvious procedural error attributable to the Office, namely that the dictum does not include provision of entertainment facilities in hotels in Class 41 which were found similar to the earlier goods and services and, thus, for which the opposition had been successful.

On 17/07/2018, the opponent asked the Office to correct the Dictum part of the decision and to provide a corrected version of the decision.

The parties were informed of this error on 29/28/2018 and the Office gave a deadline to submit any observations. The applicant did not submit any observations.

Therefore the decision notified on 13/07/2018 is hereby revoked and replaced with the present decision.

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 41: Travel agency services, namely, arranging entertainment bookings for travel vacations.

Class 43: Hotel, resort hotel and restaurant services; travel agency services, namely, arranging temporary accommodation for travel vacations.

The contested services are the following:

Class 39: Travel arrangement; transport.

Class 41: Education and instruction; sporting and cultural activities; organisation of parties; discotheque services; provision of entertainment facilities in hotels; entertainment services provided by hotels; rental of audio-visual apparatus; leisure services; entertainment services; training services relating to the cleaning of hotels; publishing by electronic means; publication of texts.

Class 43: Temporary accommodation; restaurant services; providing temporary accommodation; provision of food and drink; rental of furniture, linens and table settings; boarding for animals; hotel restaurant services; hotel catering services; consultancy services relating to hotel facilities; electronic information services relating to hotels; restaurant services provided by hotels; resort hotel services; hotel accommodation services; booking of hotel accommodation; booking agency services for hotel accommodation; travel agency services for reserving hotel accommodation; hotels, hostels and boarding houses, holiday and tourist accommodation.

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

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

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 services in Class 39

The contested travel arrangement; transport have relevant points in common with the opponent’s arranging temporary accommodation for travel vacations in Class 43. These services can target the same public and can be provided by the same companies. Travelling necessarily involves accommodation and transport services (e.g. in particular the hiring of vehicles) and vice versa. Moreover, the services are commonly offered together by travel agencies in the form of package holidays. Therefore, these services are similar.

Contested services in Class 41

The contested provision of entertainment facilities in hotels; entertainment services provided by hotels; leisure services; entertainment services include, as broader categories, or overlap with the opponent’s arranging entertainment bookings for travel vacations. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested organisation of parties; discotheque services overlap with the opponent’s arranging entertainment bookings for travel vacations. Therefore, they are identical.

The contested sporting and cultural activities are similar to a low degree to the opponent’s arranging entertainment bookings for travel vacations, as they usually have the same relevant public and distribution channels.

The contested rental of audio-visual apparatus; education and instruction; publishing by electronic means; publication of texts; training services relating to the cleaning of hotels are dissimilar to the opponent’s services. In essence, they are of a different nature and are neither in competition nor complementary. The contested services are dissimilar to all the opponent’s services invoked as the basis of the opposition because they have nothing in common. They have different natures and purposes, target different end users, are distributed and sold through different channels and outlets, and are produced by different undertakings. They are neither in competition nor complementary.

Contested services in Class 43

Restaurant services; resort hotel services are identically contained in both lists of services.

The contested temporary accommodation; providing temporary accommodation include, as broader categories, the opponent’s arranging temporary accommodation for travel vacations. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested holiday and tourist accommodation are included in the broad category of the opponent’s hotel services. Therefore, they are identical.

The contested provision of food and drink includes, as a broader category, the opponent’s restaurant services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical.

The contested hotel restaurant services; hotel accommodation; restaurant services provided by hotels; hotel accommodation services; booking of hotel accommodation; hotel catering services; consultancy services relating to hotel facilities; electronic information services relating to hotels are included in the broad category of the opponent’s hotel services. Therefore, they are identical.

The contested booking agency services for hotel accommodation; travel agency services for reserving hotel accommodation are included in, or overlap with, the opponent’s arranging temporary accommodation for travel vacations. Therefore, they are identical.

The contested hostels and boarding houses are highly similar to the opponent’s hotels, as they have the same nature and purpose (temporary accommodation), they may be offered through the same channels and they have the same consumers. Furthermore, they may be in competition.

The contested boarding for animals relates to the provision of accommodation for animals and is nowadays often provided as part of the services offered by hotels. In addition, there are also hotels that specifically target animals. The contested services and the opponent’s hotels have the same purpose and are likely to be provided by the same undertakings through the same distribution channels. Therefore, these services are considered identical.

The contested rental of furniture, linens and table settings are similar to a low degree to the opponent’s hotels. It is a well-known fact that hotels often also organise wedding receptions, conference events, business meetings, etc., and rent meeting rooms, facilities, etc., to hotel clients and also to external clients. The services may target the same end users and are likely to be provided by the same undertakings through the same distribution channels.

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 to varying degrees are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price.

3. The signs

AZUL
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘AZUL’, of which the earlier mark is composed, is meaningful in certain territories; for example, in Spain it means ‘blue’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, as the element has no meaning for this part of the public.

The earlier trade mark is a word mark, consisting of the single verbal element ‘AZUL’, which is distinctive.

The contested sign is a figurative mark containing the verbal elements ‘ALUZ’, in large black upper case letters, followed by the word ‘COLLECTION’ in black upper case letters with a dot on each side. In addition, a figurative element, , is depicted underneath the verbal elements.

The verbal element ‘ALUZ’ has no meaning and is therefore distinctive. The word ‘COLLECTION’ is a French word referring to ‘a group of similar things that you have deliberately acquired, usually over a period of time’. As regards the figurative element , part of the public might see the letters ‘C’ and ‘O’ depicted one above the other, referring either to the verbal element ‘COLLECTION’, as it is appears immediately above the figurative element, or to ‘COMPANY’. The opponent argues, however, that it might also be seen by a part of the public as the number ‘8’. The elements ‘COLLECTION’, ‘COMPANY’ and ‘CO’ are rather common in trade and commerce, and would not be seen as particularly distinctive in relation to the relevant services, in relation to which they would merely indicate a particular line of services under the ‘ALUZ’ trade mark or refer to the company providing those services. If the figurative element is seen as the number ‘8’, it will have a lower than average degree of distinctiveness in relation to the relevant services, since it might indicate the number of the collection of the relevant services. Therefore, the word ‘ALUZ’, which has an average degree of distinctiveness, is the most distinctive element of the contested mark.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

In any case, the word ‘ALUZ’ is the dominant element in the contested sign, as it is the most eye-catching by virtue of its position and size.

Visually, the signs coincide in the letters ‘A’, ‘Z’, ‘U’ and ‘L’, which comprise the entire earlier mark and the dominant element of the contested mark. Both signs begin with the same letter, ‘A’, and the letter ‘U’ is in the same (third) position. Furthermore, the earlier mark and the beginning of the contested sign have the same structure, as their consonants and vowels are placed in the same positions. The signs differ, however, in the reverse order of the letters ‘L’ and ‘Z’, in the less distinctive and dominant elements, ‘COLLECTION’ and , and in the stylisation of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘A’, ‘Z’, ‘U’ and ‘L’, present in both signs. The pronunciation differs, however, in the sound of the letters ‛Z’ and ‘L’, which are in reverse order, and in the weak and less dominant elements ‘COLLECTION’ and , which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the contested sign. The earlier mark has no meaning in the relevant territory under consideration. 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.

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 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.

5. Global assessment, other arguments and conclusion

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.

As concluded above, the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s services and are directed at the public at large and at business customers. The degree of attention will vary from average to high.

The earlier trade mark has a normal degree of distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The signs are visually and aurally similar to an average degree, due to the commonalities in the letters ‘A’, ‘Z’, ‘U’ and ‘L’, which comprise the entire earlier mark and the dominant element of the contested mark. These verbal elements differ only in the consonants ‘Z’ and ‘L’, which are in reverse order. The signs also differ in the less distinctive and dominant elements, ‘COLLECTION’ and of the contested sign and in the graphic depiction of the contested mark. However, these differences do not allow the public to safely distinguish between the marks.

The presence of the less distinctive elements, ‘COLLECTION’ and , the latter of which could be perceived as ‘CO’, in the contested sign, together with the similarities between the verbal elements ‘AZUL’ and ‘ALUZ’ will make it likely that the relevant public, even those consumers with a higher degree of attention, would believe erroneously that the services provided under the trade marks had the same commercial origin or that there was a commercial or industrial link between the two signs.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 10 678 316. It follows that the contested trade mark must be rejected for the services found to be identical or similar to varying degrees. The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cynthia DEN DEKKER

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

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.