OPPOSITION No B 3 055 608

Mooons Immobilien GmbH, Handelskai 130, 1020 Vienna, Austria (opponent), represented by Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011 Bucharest, Romania (professional representative)

a g a i n s t

Moon New Era Hotels Know How GmbH, Ahornstraße 47, 71088 Holzgerlingen, Germany (applicant), represented by Zeuner Summerer Stütz, Nußbaumstr. 8, 80336 München, Germany (professional representative).

On 13/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 608 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 17 873 511 for the figurative mark , namely against all the services in Classes 35 and 43. The opposition is based on international trade mark registration No 1 199 537 designating the European Union for the word mark ‘MOOONS’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The services

The services on which the opposition is based are:

Class 35: Franchising, namely consultation and assistance for management, management organization and sales promotion; assistance for the operation of hotels, restaurants and bars, particularly by franchising measures.

Class 42: Construction planning and construction consultation in relation to hotels, restaurants and bars for others.

Class 43: Services of provision and accommodation of guests; operation of hotels and bars; providing provisions for guests in restaurants.

The contested services are:

Class 35: Business analysis, research and information services; Business assistance, management and administrative services; Advertising, marketing and promotional services.

Class 43: Boarding for animals; Rental of furniture, linens and table settings; Services for providing food and drink; Providing temporary accommodation.

2. The signs

MOOONS
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 earlier mark ‘MOOONS’ is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper- or lower-case letters, or in a combination thereof. It will be perceived by the majority of the relevant public as meaningless, and is, therefore, distinctive. It can however not be excluded that a part of the English-speaking part of the relevant public will see it as a misspelling of the word ‘MOONS’, plural of ‘MOON’, an object similar to a small planet that travels around a planet. When perceived as such, the earlier mark has also a normal degree of distinctiveness as it is not descriptive or otherwise weak in relation to the relevant services in Classes 35, 42 and 43.

The contested sign is a figurative mark incorporating four elements over two lines inside a black square. The fact that the applicant described the verbal elements of the contested sign as ‘moon’ at the moment of filing does not automatically imply that the relevant public will perceive the combination of these letters in a clear and definite manner. The Opposition Division does not agree with the opponent that those four symbols will be read as the word ‘MOON’, as it is very likely that the relevant public will perceive the four elements as symbols or devices and not letters; this is because it will perceive the sign as a whole and not make a detailed analysis of the sign. The elements in the first line are not depicted as letters, as the depiction of these elements does not correspond with the usual shape of those letters. The first element looks more like a letter ‘E’ on its side (as in eye-test charts) and the second element, which is a gold square with no hole inside nor round like the letter ‘O’, will be seen as a simple device. As far as the second line is concerned, if those elements are not perceived as devices, they will at most be perceived as the letters ‘ON’, understood at least by part of the relevant public as meaning, inter alia, ‘[p]hysically in contact with and supported by’ (information extracted from Oxford Dictionaries online on 22/05/2019 at https://en.oxforddictionaries.com/definition/on). Furthermore, in the unlikely event that all devices are read as letters, there is no reason why the relevant public would read letters spread over two lines as one word. When perceiving the first element as a letter ‘E’ on its side, the relevant public might even think that the sign is to be read vertically, as ‘EO’.

When perceiving the contested sign, the relevant public will read the words ‘NEW ERA HOTELS’, which are laudatory and rather weak for part of the relevant public and at least part of the relevant services (as they might indicate that the services in Class 35 target hotels and that the services in Class 43 are provided by hotels) and, therefore, have a limited impact, and will see all the remaining elements in the mark as purely figurative or at most as a depiction of the letters ‘E’, ‘ON’ or ‘EO’, which have a normal degree of distinctiveness.

Moreover, the figurative element of the contested sign overshadows the verbal element, ‘NEW ERA HOTELS’, of the sign by virtue of its central position and size. The figurative element is the visually dominant element of the contested trade mark.

Visually, although the signs might coincide at most in two letters, ‘ON’, this will not be perceived by the relevant public as a coincidence, as those letters are positioned in the middle of the earlier mark where they do not play an independent distinctive role. All the remaining elements of the signs are different, as the earlier mark is the word ‘MOOONS’ and the contested sign is composed of the verbal element ‘NEW ERA HOTELS’, and the figurative element containing some non-identifiable or at least difficult to identify, devices/elements, as explained above.

As the signs at most only coincide in irrelevant aspects, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as ‘MOOONS’ and the contested sign as ‘NEW ERA HOTELS’, or maybe by part of the relevant public as ‘ON/EO/N NEW ERA HOTELS’, the sound of the letter ‘O’ being different in both signs due to the fact that it appears three times in the earlier mark and only once in the contested sign.

As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, for part of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

For another part of the relevant public, although it might perceive the concept ‘ON’ in the contested sign and/or ‘MOONS’ in the earlier mark with a specific meaning, as explained above, the signs are not conceptually similar for this part of the relevant public.

As the signs do not coincide in any element or merely coincide in irrelevant aspects, they are dissimilar.

3. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

Chantal VAN RIEL

Saida CRABBE

Marzena MACIAK

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.