OPPOSITION No B 3 046 814

Mediterranean Luxury Hotel, S.A., Gremi Tintorers, 25 A - P.I. Son Castello, 07009 Palma De Mallorca, Spain (opponent), represented by A.A. Manzano Patentes & Marcas S.L., Avda. Pedro Díez, 21 Duplicado 1 Oficina 9, 28019 Madrid, Spain (professional representative)

a g a i n s t

S Hotel Co. Ltd., Nº 150 Dunhua N. Rd. Songshan Dist., 10548 Taipei City, Taiwan (applicant), represented by Casalonga Alicante S.L., Avenida Maisonnave 41-6C, 03003 Alicante, Spain (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 814 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 335 506 for the figurative mark . The opposition is based on European Union trade mark registrations No 14 269 989 for the figurative mark and No 14 270 011 for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

a) The services

The services of the earlier marks on which the opposition is based are, inter alia, the following:

Class 43: Hotels and services for providing food and drink; booking of hotels and accommodation; booking of hotels and accommodation via global telematic networks; agencies for booking hotels and accommodation.

The contested services are the following:

Class 43: Hotel services; boarding houses; hotels; rental of camping equipment; arranging of meals; restaurants; aged care services (accommodation); motels; hotel reservation services; rental of temporary accommodation.

Some of the contested services are identical (e.g. hotel services) or similar (e.g. rental of camping equipment) to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical target the public at large and also, in certain cases such as arranging of meals, at professionals. The degree of attention is expected to be average.

c) The signs

Mark 1 Mark 2
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 are figurative marks consisting of the verbal element ‘S’ depicted in a rather standard black typeface. Underneath this element, arranged one above the other, are the verbal elements ‘PURE SALT’ in black and considerably smaller than the element ‘S’, as well as ‘GARONDA’ (Mark 1) and ‘PORT ADRIANO’ (Mark 2) in grey and smaller still. The bottom of the letter ’S’ crumbles into small pieces which, for the public that understands the word ‘SALT’ (see ‘Global assessment’), may be seen as grains of salt falling. Except for this peculiarity (pieces crumbling off), the stylisation of the earlier marks is rather standard and therefore its impact is very limited.

The contested sign is a figurative mark consisting of a highly stylised letter ‘S’ depicted in black and characterised by the presence of exuberant ornaments (similar to Baroque style) and behind that, slightly overshadowed, the symbol ‘!’, depicted in yellow using a standard typeface. Beneath these elements, and in a much smaller size, there is the verbal element ‘HOTEL’. The stylisation of the ‘S’ is distinctive and, in fact, quite striking, while the remaining elements are standard and therefore devoid of any distinctive character.

It is obvious that the commonalities between the signs reside in the coinciding letter ‘S’ and the dissimilarities mainly in their additional elements. Therefore, the most advantageous scenario for the opponent is the one where the additional element (in English) ‘PURE SALT’ is meaningless since it introduces a differing concept between the signs. Therefore, and for the purpose of this comparison, the Opposition Division will first assess the signs from the part of the public for which it has no meaning, such as the Bulgarian-speaking part of the public.

Although single letters are not per se devoid of any distinctive character, it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks. However, this must be assessed in the context of an examination, based on the facts, focusing on the relevant goods and services (09/09/2010, C‑265/09 P, α, EU:C:2010:508, § 39).

In the present case, the coinciding letter ‘S’ will be perceived as such and does not have any particular meaning in relation to the services concerned and, therefore, it is considered distinctive to an average degree.

The verbal element ‘PURE SALT’ of the earlier marks will be perceived as a meaningless and arbitrary element for the relevant public and, therefore, it is of average distinctiveness. The element ‘GARONDA’ (of Mark 1) will also be perceived as meaningless, and from the element ‘PORT ADRIANO’ (of Mark 2), only ‘Adriano’ could be seen as meaningful (i.e. perceived as a foreign name). In any case, since these elements are not descriptive, allusive or otherwise weak for the relevant services, they are distinctive to an average degree.

The exclamation mark ‘!’ of the contested sign will be perceived as such. Normally punctuation marks are used after a word or sentence to draw attention to it. However, in this case, it seems to have a complementary rather than ancillary role in relation to the element ‘S’. As this element per se has no meaning for the relevant services, it is normally distinctive.

The element ‘HOTEL’ of the contested sign will be understood with its usual meaning and, therefore, it is non-distinctive for the relevant services (e.g. hotel services).

The elements ‘S’ in the earlier marks, as well as ‘S’ and ‘!’ in the contested sign, are the more dominant (visually eye-catching) elements because of their size and position. However, the letter ‘S’ of the contested sign stands out visually in respect to the symbol ‘!’ due to its position (in the foreground), peculiar stylisation and colour (black against yellow). Therefore, the symbol ‘!’, although dominant in terms of size, plays a rather secondary role in respect to the letter ‘S’.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. These findings must be taken into account in the present case in particular, as the coinciding (and dominant) element of the signs consists of the single letter ‘S’ embellished by additional figurative elements, as described above.

Visually, the signs coincide in the Latin letter ‘S’, which is distinctive. However, these letters entirely differ in their graphical depictions. Specifically, the earlier mark is rather standard (albeit the bottom part is crumbling into small pieces), while the contested sign uses a very overloaded and striking ornamentation.

In addition, the signs differ in all their remaining elements (although they are rather secondary for the aforementioned reasons), in particular, ‘PURE SALT’, ‘GARONDA’ (Mark 1) and ‘PORT ADRIANO (Mark 2) versus the exclamation mark in yellow and the non-distinctive word ‘HOTEL’ of the contested sign.

As the signs coincide only in the letter ‘S’ but they are depicted in a very different way and also include additional elements, at most, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the coinciding letter ’S’, but differs in the words ‘PURE SALT’ and ‘GARONDA/PORT ADRIANO’ of the earlier marks and, if pronounced, in the non-distinctive word ‘HOTEL’ of the contested sign.

Therefore, taking the foregoing into account, the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that the compared signs will be associated with the concept of the Latin letter ‘S’, the signs are highly similar. The concept conveyed by the element ‘ADRIANO’ of Earlier Mark 1, which occupies a very secondary position (being at the very bottom of the sign), as well the exclamation mark and the non-distinctive element ‘HOTEL (also secondary), does not significantly influence the perception of the coinciding and dominant letter ‘S’.

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 marks

The distinctiveness of the earlier marks 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 marks will rest on its distinctiveness per se. In the present case, the earlier trade marks 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking all the factors relevant to the circumstances of the case into account. 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).

The services in Class 43 are assumed to be identical. They target the public at large and professional public and the degree of attention is average. The distinctiveness of the earlier marks is average.

The similarities between the signs are limited to the fact that they both contain the letter ‘S’.

It follows from the case-law of the Court that, when assessing the likelihood of confusion between signs comprising the same single letter (in the present case, the dominant element), the visual comparison is, in principle, decisive. Aural and conceptual identities may be overridden by sufficient visual differences between the signs when assessing the likelihood of confusion. Consequently, the way the letter appears in each sign under comparison is conclusive.

As established above, the signs are visually similar (if at all) only to a low degree, aurally similar to a below average degree and conceptually highly similar. The commonalities between the signs are limited to the letter ‘S’. The way it appears in each sign is therefore a decisive factor. The coinciding letter is stylised in very different manners, namely in a standard typeface versus a highly stylised and ornamented typeface. Moreover, the compared signs include additional elements which further differentiate them as described in detail in section c).

Therefore, the signs create sufficiently distinct overall visual impressions for the relevant public to sufficiently distinguish them and avoid likelihood of confusion.

The opponent refers to previous decisions (concerning the comparison of single letters) of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same. This is because the stylisation of the compared single letters is more alike which overall produces similar visual impressions. For instance:

decision of 13/11/2017, R 0779/2017-2;

decision of 19/04/2018, B 2 905 324;

decision of 27/08/2018, B 2 930 496.

Furthermore, in the present case the signs also differ in the additional elements accompanying the single letters.

This absence of a likelihood of confusion equally applies to the part of the public for which the remaining elements of the earlier marks and, in particular, the expression ‘PURE SALT’ is understood. This is because, as a result of the meaning conveyed by the additional elements, the signs will be perceived as being even less alike and conceptually not similar. Moreover, the letter ‘S’ of the earlier marks will likely be perceived as a repetition of the initial letter of the word ‘SALT’ (and, thus, somehow related or reinforcing that concept) and not as a mere Latin letter in an isolated way. Finally, it is likely that the small pieces crumbling from the letter will be seen as grains of salt.

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 signs are obviously not identical.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Michele M. BENEDETTI - ALOISI

Birgit FILTENBORG

Riccardo RAPONI

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.