OPPOSITION No B 2 960 162

HMG s.r.o., Hybernska 1674/42, 110 00 Prague, Czech Republic (opponent), represented by Advokátní Kancelář Vyšanská & Majer, Korunni 810/104F, 101 00 Prague, Czech Republic (professional representative)

a g a i n s t

Dan Hotels LTD, 111 Hayarkon St, 63571 Tel Aviv, Israel (applicant), represented by Euromarks, PO Box 123, 1400 AC, Bussum, Netherlands (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 960 162 is upheld for all the contested services.

2. European Union trade mark application No 16 869 117 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 869 117 for the figurative mark namely against all the services in Class 43. The opposition is based on, inter alia, Czech trade mark registration No 339 919 for the word mark ‘Hotel KING DAVID’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Czech trade mark registration No 339 919 for the word mark ‘Hotel KING DAVID’.

a) The services

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

Class 43: Bar services, cafés, hotel services, motel services, guesthouses, temporary accommodation, rental of meeting rooms, provision of hotel accommodation, restaurants, hotel reservations, hotel catering services, accommodation bureaux [hotel, boarding houses], catering.

The contested services are the following:

Class 43: Temporary accommodation; Accommodation bureau services; Booking of accommodation for travellers; Holiday accommodation services; Hospitality services [accommodation]; Provision of information relating to the booking of accommodation; Provision of temporary furnished accommodation; Room booking; Hotels, hostels and boarding houses, holiday and tourist accommodation; Accommodation bureaux [hotels, boarding houses]; Booking of hotel rooms for travellers; Booking services for hotels; Hotel accommodation services; Hotel reservations; Hotel services; Motels; Provision of hotel accommodation; Event facilities and temporary office and meeting facilities; Accommodation services for meetings; Providing accommodation for meetings; Providing conference rooms; Providing convention facilities; Provision of conference facilities; Provision of facilities for board meetings; Provision of facilities for conventions; Provision of facilities for exhibitions; Provision of food and drink; Banqueting services; Bar services; Bistro services; Booking of restaurant seats; Cafeterias; Canteens; Club services for the provision of food and drink; Cocktail lounge services; Delicatessens [restaurants]; Restaurant services; Catering; Catering services for the provision of food; Hotel catering services.

The relevant factors relating to the comparison of the services include, inter alia, the nature and purpose of the services, the distribution channels, the sales outlets, the providers, the method of use and whether they are in competition with each other or complementary to each other.

Temporary accommodation, accommodation bureau services, accommodation bureaux [hotels, boarding houses]; booking services for hotels; hotel reservations; hotel services, hotels, motels; provision of hotel accommodation; bar services Cafeterias; restaurant services; catering; hotel catering services are identically contained in both lists of services (including synonyms).

The contested booking of hotel rooms for travellers is included in the broad category of the opponent’s hotel reservations. The contested catering services for the provision of food are included in the opponent’s catering. The contested delicatessens [restaurants] are included in the opponent’s restaurants. The contested hotel accommodation services; holiday accommodation services; hospitality services [accommodation]; provision of temporary furnished accommodation; hostels and boarding houses, holiday and tourist accommodation are included in the broad category of the opponent’s temporary accommodation. Therefore, all the above-mentioned contested services are identical to the opponent’s services.

The contested booking of accommodation for travellers; room booking include, as broader categories, or overlap with, the opponent’s hotel reservations. The contested provision of food and drink include, as a broader category, the opponent’s restaurants. 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 event facilities and temporary office and meeting facilities; accommodation services for meetings; providing accommodation for meetings; providing conference rooms; providing convention facilities; provision of conference facilities; provision of facilities for board meetings; provision of facilities for conventions; provision of facilities for exhibitions overlap with the opponent’s rental of meeting rooms. Therefore, they are identical.

The contested banqueting services; bistro services; canteens; club services for the provision of food and drink; cocktail lounge services overlap with the opponent’s catering. Therefore, they are identical.

The contested booking of restaurant seats is similar to a high degree to the opponent’s restaurants. This is because they have the same purpose (enable people to have meals in restaurants) and distribution channels. Furthermore, the public is the same and the services are obviously complementary to each other.

The contested provision of information relating to the booking of accommodation consists of information which is rendered along with the provision of the services protected by the earlier mark, namely hotel reservations. Therefore, the services under comparison have the same purpose (enable customer to choose and book accommodation). They are complementary to each other and usually are rendered in the same places, by the same providers, to the same consumers. Therefore, they are similar to a high degree.

As could be seen for the comparison above, the applicant’s assertions on the dissimilarity of some of its services (such as hotel reservations, room booking, booking services for hotels) with the opponent’s services must be put aside. The applicant claims that its services consisting of booking of accommodation and booking information are dissimilar to the opponent’s services as the former are generally not offered by hotels themselves but by companies such as booking.com. In this regard it must be noted that regardless the kind of entities that usually render such services, hotel reservations are literally included in the list of services for which the earlier mark enjoys protection.

b) 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 a high degree are directed at the public at large or business customers. The degree of attention is average.

c) The signs

Hotel KING DAVID
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 verbal element ‘Hotel’ of the earlier mark will be understood as having the same meaning as in English. In relation to the relevant services ‘Hotel’ may indicate their characteristics, such as their nature, being hotel services, or the place where the services are rendered, namely that the provision of food and drink takes place at a hotel. Therefore, this verbal element directly describes the services in question and is considered non-distinctive.

The relevant public will understand the coinciding verbal element ‘KING’ of both marks (which is a basic English word) as ‘a male sovereign who is the official ruler of an independent state’ (information extracted from Collin’s Dictionary on 20/12/2018 at https://www.collinsdictionary.com/dictionary/english/king). However, this element is also frequently used to denote something having superior quality and, therefore, has some laudatory connotations. As for the coinciding verbal element ‘David’, which will be regarded a male name, bearing in mind that it has no meaning in relation to the relevant services, it is considered distinctive. Moreover, when perceived together, the verbal elements ‘KING’ and ‘DAVID’ will bring to mind the second king of the Hebrews who united Israel as a kingdom with Jerusalem as its capital. In this case, the distinctiveness of this element, as a whole, is normal.

The letters ‘KD’ included in the contested sign will not be perceived by the public independently of the other verbal elements of the sign. As they precede the word combination ‘KING DAVID’ they will be regarded merely as an abbreviation of that word combination. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (judgment of 15/03/2012, joined cases C-90/11 and C-91/11, Strigl & Securvita, EU:C:2012:147, § 32, 34 and 40). Therefore, the distinctiveness of this element is closely linked to the distinctiveness of the word combination it precedes.

The figurative element of the contested mark being a simple depiction of a crown merely reinforces the verbal element ‘KING’ of the contested sign. Moreover, this element is commonly used to denote luxury or superior quality and, therefore, has a laudatory connotation. In such case, it is considered that the distinctiveness of this element is weak. Moreover, 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).

The Hebrew characters included in the contested sign will not be understood by the majority of the relevant public, but will rather be perceived as some Hebrew figurative element that is not totally without distinctiveness. Nevertheless, it must be noted that the impact of this element is rather reduced given that the characters will not be memorable.

The contested sign has no element which could be considered to be more dominant (eye-catching) than other elements. The horizontal lines present in the trade mark divide it into three more or less equal parts which all have similar impact on the visual impression created by the mark.

Visually, the signs coincide in their distinctive verbal elements ‘KING DAVID’. They differ in the non-distinctive element ‘Hotel’ of the contested sign. Moreover, they differ in the letters ‘KD’, the figurative elements and the general composition of the contested mark.

Therefore, taking into account that the marks coincide in their most distinctive elements which, being verbal, attract more attention of the public, as explained above, the signs are similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal elements ‛KING DAVID’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive verbal element ‛Hotel’ of the earlier sign and the letters ‘KD’ of the contested sign.

Therefore, as the signs coincide in their distinctive elements that take up most of the signs at issue, they are considered similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with king David, the signs are conceptually identical in that respect. The additional elements of both signs are not sufficient to differentiate the marks. The non-distinctive element ‘Hotel’ of the earlier mark will not be regarded as identifying the commercial origin of the goods. The additional elements of the contested mark, that is the crown, Hebrew letters and the acronym ‘KD’, only reinforce the concept of a Jewish king. Therefore, the signs are as, a whole, at least conceptually highly similar.

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

d) 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the services are identical or highly similar. The relevant public’s degree of attention is average. The signs are visually similar to an above average degree, aurally similar to a high degree and conceptually similar to at least a high degree.

The signs coincide in their distinctive elements. The words ‘King David’ are the only distinctive elements of the earlier mark and the most distinctive elements of the contested sign. Consequently, the marks have the concept of a historical Hebrew king in common. In the Opposition Division’s view, all the additional elements of the contested sign only reinforce the abovementioned concept and will therefore not help the consumers to differentiate between the marks. Moreover, as stated above, the public will generally pay less attention to the figurative elements of the contested sign. In this regard it must be noted that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, but also where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

In the present case, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or economically linked) commercial origin to the services. It must be borne in mind that it is common practice for manufacturers and service providers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them to endow the trade mark with a new, modern image. Moreover, consumers are well accustomed to marks being stylised and embellished with logotypes and other devices. Therefore, the Opposition Division finds that the relevant consumer may perceive the contested sign as a sub-brand of the earlier mark, as both marks have a distinctive element ‘KING DAVID’ in common (see, by analogy, 23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, the applicant’s arguments on its ‘derived reputation’ must be put aside. Moreover, the Opposition Division notes, that contrary to the applicant’s claims, this does not mean that any well-known marks in general are no longer protected once a EUTM application is filed. If the applicant has any well-known marks that are similar to the earlier right in this case, those well-known rights usually could be enforced against the earlier right in infringement proceedings. Nevertheless, the validity of the earlier mark in is not the subject matter of this proceeding. Therefore, it is also not to the Opposition Division to assess whether or not the earlier mark has been registered in good or bad faith. Moreover, as both parties admitted that the applicant failed to invalidate the earlier mark, it must be considered fully enforceable against the contested mark in this case.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the Czech trade mark registration No 339 919 for the word mark ‘Hotel KING DAVID’. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right ‘Hotel KING DAVID’ leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sofia SACRISTAN MARTINEZ

Marta Maria CHYLIŃSKA

Tu Nhi VAN

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.