OPPOSITION No B 2 976 937

Signature Living Hotel Limited, Millennium House, 60 Victoria Street, Liverpool, United Kingdom (opponent), represented by CSY Herts, Helios Court 1 Bishop Square Hatfield, Hertfordshire AL10 9NE United Kingdom (professional representative)

a g a i n s t

Derag Deutsche Realbesitz AG + Co. KG, Fraunhoferstr. 2, 80469 Munich, Germany (applicant) represented by LS-IP Loth & Spuhler Intellectual Property Law Partnerschaft von Rechtsanwälten mbB, ALPHA-Haus, Garmischer Strasse 35, 81373 Munich, Germany (professional representative).

On 01/04/2019 the Opposition Division takes the following

DECISION:

1. Opposition No B 2 976 937 is partially upheld, namely for the following services:

All the contested services in Class 43.

2. European Union trade mark application No 16 481 418 is rejected for all the above services. It may proceed for the remaining services

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 481 418 for the word mark ‘Living Hotels Signature’. The opposition is deemed to be based on:

• UK trade mark registration No 2 621 188 for the word mark ‘SIGNATURE LIVING’ for which the opponent invoked Article 8(1)(a) and 8(1)(b) EUTMR.

• Non-registered trade mark for the same word mark for hotel services; rental of temporary accommodation; rental of apartments; rental of serviced apartments; bar and restaurant services; advertising and promotion in respect of the aforementioned services for which the opponent invoked Article 8(4) EUTMR and more precisely the common law tort of passing off as protected in the UK.

Preliminary Remark

In the Notice of Opposition, the opponent also referred to the EU in the context of Article 8(4) EUTMR and in the accompanying writ, the opponent also referred to the fact that they ‘attracted customers throughout the EU’.

The Opposition Division notes that non-registered trade marks are not harmonised at EU level and these rights are completely governed by national laws. Consequently, an EU non-registered trade mark as such does not exist and it is only at member state level that such rights can form a valid basis for opposition under these grounds.

In the event that the Opponent wished to invoke such rights for each Member State it, at least has to specify the Member State in accordance with Rule 15(2)(b) EUTMIR (in the version in force at the time of filing of the opposition).

According to Rule 17(2) EUTMIR (in the version in force at the time of filing of the opposition), if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR (in the version in force at the time of filing of the opposition), and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

As noted previously, the Opposition is therefore deemed to continue on the basis of the rights identified in ‘Reasons’.

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 43: Temporary accommodation, hotel, restaurant and bar service, holiday accommodation.

The contested services are the following:

Class 35: Advertising in relation to hotels, marketing, sales promotion, marketing studies and market surveys; Business management and organization consultancy; Personnel management consulting; Professional business consulting; Commercial information agencies; Commercial intermediation services; Mediation of trade business for third parties; Business management of hotels; Online advertising on a computer network in relation to hotels; Search engine optimisation for sales promotion; Employment agencies, placement services, personnel recruitment, word processing, secretarial services.

Class 36: Real estate services; Arranging letting of real estate, Rental of offices (real estate), Rental of apartments; Property administration and management services; Real estate management; Real estate brokerage.

Class 43: Hotel services; Restaurants, Cafés, Cafés, Services for providing food and drink in snack-bars; Accommodation bureaux (hotels, boarding houses), temporary accommodation reservations; Rental of temporary accommodation, Rental of meeting rooms, Rental of portable buildings.

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 43

The contested hotel services; Restaurants are equally designated by the earlier right leading to identity.

Restaurant and bar services from the earlier right are identical to the contested cafés (listed twice), services for providing food and drink in snack-bars. Indeed, restaurant services are essentially the provision of food and drink within an establishment set up for this purpose, thus including or overlapping with the contested services.

The contested accommodation bureaux (hotels, boarding houses), temporary accommodation reservations; Rental of temporary accommodation, Rental of meeting rooms are included in the broad term temporary accommodation from the earlier right leading to identity. The same assertions and outcome are applicable to the contested rental of portable buildings considering that temporary accommodation can also include renting a cabin, holiday chalets and caravans and similar.

Contested services in Classes 35 and 36

The contested services in Class 35 concern advertising, business administration, management and consultancy as well as general administrative services. Even considering that some of these services are specifically aimed at hotels, this is not indicative in itself of any degree of similarly.

On the one hand, advertising services 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, which 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, websites, videos, the internet, etc.

On the other hand, business services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The general administrative services consist of office functions.

The fact that the services protected by the earlier mark may well use these contested services is not material, since the question is rather that of providing such services to third parties. The opponent’s arguments that they operate their own rental and property business and even have their own online careers portal for engaging with prospective employment candidates cannot be considered. Indeed, the opponent argues that the relevant public would therefore expect a hotel chain to provide personnel services. Nonetheless, the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services. Any actual or intended use not stipulated in the list of goods/services is not relevant for comparison since it is part of the assessment of likelihood of confusion in relation to services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Considering the wording of the services protected by the earlier mark, the opponent’ arguments cannot succeed. Furthermore there is no market reality to support the opponent’ assertions that the public would go to a hotel when looking for employment related services for example.

The services in Class 36 relate to real estate in general and its administration. Even though these services relate to ‘accommodation’ the fact remains that the services protected by the earlier mark relate to short-term, holiday accommodation but not permanent housing (even if for a set period of time). Whereas the services in Class 36 would be provided by real estate providers the services of the earlier mark are provided by hotels and similar.

In short, none of the services designated by the contested mark in Classes 35 and 36 coincide in any relevant points of contact with those of the earlier right, their nature and purpose differs as do their providers, consumers and distribution channels furthermore they do not share a complementary nature nor are they in competition with one another. Consequently, all these services are dissimilar.

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.

The services found to be identical are aimed at both the average consumer and the professional public (rental of meeting rooms for example). The degree of attention may vary from average to high since some of these services may be costly thus warranting an enhanced degree of attention.

3. The signs

SIGNATURE LIVING	Living Hotels Signature
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 SIGNATURE LIVING would most probably be understood as referring to the idea of ‘a unique or even exclusive lifestyle’ but it is rather abstract and is by no means, a coined expression. Likewise, the contested sign is also difficult to read as a complete semantic unit but it does have the notion of a hotel that is alive (perhaps in the sense of constant evolvement) and unique/exclusive.

Contrary to the applicant’s assertions, it has to be considered that ‘Hotels’ is non-distinctive in conjunction with the relevant services and as such it is an element that will not be given much weighting as it lacks trade mark value. With this in mind, any conceptual divergence is therefore diminished. Indeed, both signs coincide in the same notion of living in a unique or exclusive fashion which may indeed lead to these elements of the signs as being of a limited distinctiveness in conjunction with the services. However, given that both signs coincide in these elements and the only differentiator is a non-distinctive component, the signs are conceptually similar to an average degree.

Visually and aurally the signs are similar to an average degree since the only difference lies in the non-distinctive ‘hotels’ and the reverse positioning of the remaining verbal components. In this regard, the applicant’s arguments on the different beginnings being more important have to be set aside. This consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

The applicant has argued that the signs are not similar due to the differences in typeface, however, the difference in upper and lower case is immaterial since protection is sought for the wording itself. Further the applicant’s argument on the differences in structure is not sufficient to overcome the identified similarities, particularly given the non-distinctive nature of the additional word in the contested sign.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 may be understood as referring to the fact that the services are rendered in a unique or exclusive fashion, which may lead to the distinctiveness being slightly below average.

5. 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).

In the case at hand, the services are partly identical and partly dissimilar and aimed at both the public at large and professionals displaying a degree of attention that may vary from average to high. The signs are similar to an average degree and the earlier right has a distinctive character which is slightly below average.

Indeed, even in admitting the slightly below average distinctive character of the earlier mark, the fact remains that the earlier mark is fully featured in the contested mark albeit in a reversed order and with a non-distinctive element in the middle. In this regard, it has to be borne in mind that consumers rarely have the chance to compare marks directly and must trust in the imperfect picture retained in their minds. This applies both to those displaying an average degree of attention and those with a high degree of attention (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26 and 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Furthermore, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (judgment of 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Consequently, considering the principle of interdependence mentioned above, the similarity in the signs coupled with the identity of the services, is sufficient to lead the public to err.

However, with regards to the dissimilar services, as the 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.

Considering all the above, there is a likelihood of confusion on the part of the public and the opposition is partially well founded on the basis of the opponent UK trade mark for the services found identical. It follows that the contested trade mark must be rejected in this regard. Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark as claimed by the opponent. Likewise, a possible enhanced degree of distinctiveness of the earlier mark would be irrelevant with regard to the services found to be dissimilar. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness given that the latter cannot overcome the dissimilarity of the services.

The opposition will proceed for the services found dissimilar in Classes 35 and 36.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the remaining services are obviously not identical.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

The fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered, and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the contested trade mark was filed on 17/03/2017 with no priority claim. Therefore, the opponent were required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent sign has been used in the course of trade for

Hotel services; rental of temporary accommodation; rental of apartments; rental of serviced apartments; bar and restaurant services; advertising and promotion in respect of the aforementioned services.

Within the substantiation period, the opponent filed the following evidence as concerns use:

• Witness Statement from the opponent’s director dated 24 April 2018 together with Exhibits 1 to 13 as defined below. The witness statement refers to SIGNATURE LIVING, as the main house mark of the largest hotel operator in the city of Liverpool where it has purportedly received national exposure in the media. The opponent refers to the importance of Liverpool in the United Kingdom for tourism and business and was the 6th most visited city in the United Kingdom for international visitors and 7th most visited city for domestic visitors in 2016. The opponent claims they have had considerable success in Liverpool and that they have expanded their business operations to other large UK cities.

• Exhibits 1-3, 5: Extracts from the opponent websites signatureliving.co.uk, signatureresidential.co.uk and archive.org for signatureliving.co.uk and http://signatureinvestments.co.uk/property-portfolio. The extracts concern the opening of the first Signature Living hotel in 2008 and refer to the beginnings and their ongoing mission to provide hotel services. The information on ‘Signature Residential’ is similar insofar as the beginnings in 2004 are referred to, as well as the residential accommodation that the opponent are responsible for. The waybackmachine archives show the timelines for the websites from 2007-2018 as well as captures concerning property investments made between 17/03/2016 and 15/03/2017.

• Exhibits 4 and 6 and 12-13: Articles from press; Liverpool Echo (11/02/2016), Insider Media (17/03/2017); Apprentice Eye (21/07/2015) and Liverpool Business News (2017. The first article states ‘Hotels group Signature Living will add £24.2m to Liverpool economy this year’. The article explains that research by the opponent itself shows that the hotel is attracting between 3000 and 4000 guests each week with occupancy levels at 98%. The second article concerns plans to open other hotels around the world. The third article refers to the opportunities for employment for young people. Finally, the last article refers to an estimated £1.4million being spent on national media coverage for the opponent’s new Shankly Hotel in Liverpool. Reference is made to coverage in several national newspapers as well as being featured on the television.

• Exhibit 7: Report dated 02/06/2016 concerning a talk to Alt Valley Business Network. The talk was given by the opponent’s director (Lawrence Kenwright) to an audience of 40.

• Exhibit 8: Brochures from 2013 and 2016 concerning Signature Living hotel, restaurant and bar services as well as residential apartment development.

• Exhibit 9: Breakdown of EU visitors to the Signature hotels (13/07/2016-13/06/2017). This merely features an excel table, no source, no date, with a listing of countries from around the world. United Kingdom is featured with 104 953 visitors.

• Exhibit 10: Tourism data summary for Liverpool, July 2016 from NorthWestResearch. The information shows that Liverpool was the 6^th most visited city in the UK for international visitors, 7^th in England for domestic visitors and gives information on the number of visitors to Liverpool. Hotel supply in Liverpool shows there are 68 hotels offering 7847 rooms (2015). There is also a table for hotel occupancy but no information of where. There is also information about events and attractions in Liverpool.

• Exhibit 11: Extract from signaturecareers.co.uk

Before commencing, it is important to revert to the arguments from the applicant who claims that the evidence is insufficient for a variety of reasons including lack of indications concerning the business activities and transactions in this regard, the mark itself, as well as the relevant period. The witness statement is also disregarded by the applicant as this derives from the opponent itself and is not supported by any supporting documents. The applicant notes that any figures are mostly internal and there are no annual accounts, order confirmations or invoices that back up the opponent’s assertions. The information concerning tourism is rather irrelevant in this sense, according to the applicant. In short, the applicant finds this requisite has not been fulfilled.

In response to the applicant’s observations, the opponent answered that a witness statement is a viable form of evidence and also responded to the applicant’s claims on the deficiencies. The opponent also took the opportunity to submit further evidence to rebut the applicant’s claims. These consist of:

• Statistical information from Google showing visitors to the Signature Living website (01/09/2013-31/03/2015). The information concerns countries from all over the world but to give an example, in the United Kingdom 441 transactions were made which accounts for 95.66% of the total transactions. Revenue was 144 519.80 (GBP) with an average session duration of 3 minutes.

• Information from DueDil regarding its partnership with the London Stock Exchange Group to identity 1000 companies that inspire Britain in 2018. In the alphabetical index, ‘Signature Living’ can be seen with a revenue of 6-10 million (GBP).

• Article from ‘Hello’ magazine (dated 25/04/2018) concerning the opponent and his family, the article has several statements such as ‘The couple have a number of prestigious hotels in Liverpool, including 30 James Street (the former headquarters of the White Star Line, owners of the Titanic). They also have hotels in Cardiff and Belfast, where The George Best Hotel is scheduled to open next year’.

• Article from www.boutiquehotelier.com (16/08/2016) regarding a 150k (GBP giveaway from the owners of hotel group Signature Living. The article further states that ‘former retail entrepreneurs decided to embark on a new adventure in 2008 and have since built the company to be worth over £500m, comprising 13 hotels and development projects across the UK.’. Mention is made of six hotels and seven hotel projects in 2018/2019.

Assessment of the evidence

It is important to note that when evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves but may contribute to proving use on the market in combination with other documentation and information.

Though it is true that the applicant’s comments are quite piecemeal, the Opposition Division rather concurs that even when taking the evidence as a whole, it is severely flawed.

Despite the fact that Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

Indeed, whilst the statement is indeed acceptable, it derives from the opponent itself thus its probative value is dependent on the remaining evidence. The more independent and impartial the supporting materials, the higher the probative value of the statement becomes.

However, the remaining evidence largely emanates from the opponent itself or indeed, the source cannot be identified, thus reducing the credibility of the information as is the case with exhibits 1-3, 5, 8-9 and 11. Indeed these pieces of evidence come from the opponent’s own websites and brochures and do not really give any indications on the actual business transactions. Likewise the information in exhibit 7 is of very limited value because again, the talk was given by the opponent to an extremely reduced audience. The information concerning tourism is also largely irrelevant to the question of whether the opponent has made more than mere local use of its unregistered mark in conjunction with the claimed activities. Even the more relevant articles which indeed appear to be more impartial are rather inconclusive. The opponent has argued that the fact that the mayor of Liverpool has also agreed on the ‘$24.2m’ injection to the city of Liverpool in 2016 does not seem to be based on any verifiable data, at least that data has not been made available to the Opposition Division in such a way that would allow for a connection to be made. Moreover, the injection is based on future forecasting provided by the opponent but on the basis of what information is unknown. The articles concerning employment opportunities and media coverage do not add any firmer ground; the former sheds no light on the issue whilst the latter is not supported by any evidence and can only be said to be based on hear-say, at least in the context of the evidence.

As to the second batch of evidence, it is true that pursuant to Article 8(5) EUTMDR the Office must exercise its discretion under Article 95(2) EUTMR and decide whether or not to accept belated facts or evidence of substantiation. In this regard, the second batch of evidence was submitted in response to the applicant’s arguments on the insufficiency of the first batch.

However, in view of the above, even taking into account the second batch, the Opposition Division is not convinced that the opponent has managed to prove use of its sign for the services to an extent that can be considered as more than mere local use.

The statistical information from Google is indeed impartial but there is no information about what the transactions were for. The fact that the opponent is listed as an inspirational company is also of rather reduced probative value; firstly the information derives from a period of time after the filing date of the contested mark and secondly there is no information again on the services. The ‘Hello’ magazine article again is from a posterior date and whilst it does indeed refer to ‘prestigious hotels’, there is no further information and indeed from the subsequent comment it is not clear whether or not the hotels are merely prestigious due to their location. In fact, the article centres more around the people and the personal problems that they have had.

The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (judgment of 18/04/2013, T-506/11 and T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 4748).

The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 158-159). To consider the geographic and economic impact, the intensity of use has to be assessed as does the length of use, the spread of the goods (location of customers) and advertising for example.

The Opposition Division is of the opinion that there is insufficient objective information to comply with the requirements of this condition. For example, the economic dimension is very difficult to gauge without resorting to suppositions. Though some of the evidence mentions impressive figures they are not backed up in any way. Likewise, the expensive media coverage is not demonstrated by the evidence and surely the opponent would have been able to submit copies of the articles, TV excerpts etc to support this point.

Further, though there is some limited evidence regarding property development there is nothing about the other activities aside from the hotel services. However, even then the evidence is not clear. For example, presence on the internet is not necessarily indicative of use; the brochures have no information on how and where they were circulated and in what quantities. More importantly, the information only relates to Liverpool so the geographical expanse is not substantiated. Indeed, even considering the specific nature of the hotel business, namely that clients may come from all corners of the country/world, there is no concrete information about these transactions or the clients. There is no information about the bookings made, invoices and clearly there is a complete omission of any independent, clear, reliable or audited evidence. Even client reviews are missing which may have helped develop the connections enabling the Opposition Division to come to a firm conclusion. In this respect, the information from Google regarding revenue and transactions is also very difficult to decipher since there is no information bout the transactions and how can it be surmised that this relates to booking a hotel room, booking a meal or booking a meeting room for example, amongst other possibilities.

To sum up, the evidence is severely flawed and the Opposition Division is unable to determine from the materials submitted by the opponent, whether or not the sign has been used within the course of trade of more than mere local significance for the services claimed. Consequently, the question of the admissibility of the belated evidence can be set aside since, in any regard, it is incapable of changing the conclusion.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded in this regard.

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

Richard BIANCHI

Vanessa PAGE

Denitza STOYANOVA-VALCHANOVA

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.