OPPOSITION No B 3 060 163

Hoteles Catalonia, S.A., C/ Corcega, 323-325, 08037 Barcelona, Spain (opponent), represented by Durán - Corretjer, S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Whitecap Bay Investments B.V., John M. Keynesplein 13, 1066EP Amsterdam, Netherlands (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez Nº 21-23 5º A-B, 03002 Alicante, Spain (professional representative).

On 02/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 163 is upheld for all the contested services.

2. European Union trade mark application No 17 898 117 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 17 898 117 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 617 392 for the figurative mark . 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.

a) The services

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

Class 43: Services for providing food and drink, restaurant and bar services.

The contested services are the following:

Class 43: Temporary accommodation; hotel restaurant services; hotels, hostels and boarding houses, holiday and tourist accommodation; restaurant services provided by hotels; arranging of meals in hotels; hotel reservations.

The contested hotel restaurant services; restaurant services provided by hotels; arranging of meals in hotels are included in, or overlap with, the opponent’s broader category services for providing food and drink. Therefore, they are identical.

The contested temporary accommodation; hotels, hostels and boarding houses, holiday and tourist accommodation are similar to the opponent’s services for providing food and drink as they can coincide in distribution channels, the relevant public and the provider of the services.

The contested hotel reservations relate to, inter alia, the provision of various types of accommodation. Providers of these types of services often offer services such as the opponent’s restaurant and bar services on their premises. They can have the same providers, distribution channels and relevant public. In view of these considerations, it is not unusual for the services in question to be provided by the same undertaking or linked undertakings, and consumers expect this to be the case. All these services are also used in conjunction, restaurant services for example being an integral part of the services offered by a hotel. Therefore, these services are similar.

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 are directed at the public at large and the degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 is a stylised depiction of the letter ‘B’ and the word ‘LOVED’; the two elements are in light grey upper-case letters depicted in fonts of different sizes and using different typefaces. Although some consumers might note a difference in the shade of grey of the elements, it is very difficult to perceive and hence will be considered negligible. Therefore the earlier mark will be assessed as being in one colour, namely grey.

The earlier mark does not have a dominant element. The mark will be perceived, by the vast majority of the public, as two elements ‘B’ and ‘LOVED’, because of the larger size of the element ‘B’, but as one unit due to the lack of a space between them.

The contested sign is a composite mark comprising stylised words placed in three lines. The word ‘Beloved’ occupies the entire top line; it is depicted in a slightly stylised black font.

The word ‘Beloved’ and the combination ‘BLOVED’ do not exist as such in Spanish and these words will be meaningless for a part of the relevant public. Nevertheless, it cannot be excluded that the Spanish public may relate the combination ‘BLOVED’ and the word ‘Beloved’ with the common English word ‘love’ (25/06/2015, R 1675/2014‑1, PARFUMS LOVE / LOVE et al., § 38; 08/07/2011, R 883/2010‑2, babyTOlove (FIG.MARK) / babylove et al., § 39), meaning (as a noun) ‘a strong feeling of affection; a great interest and pleasure in something’ or (as a verb) ‘feel deep affection or sexual love for (someone)’ (information extracted from Oxford Dictionaries Online on 24/07/2019 at http://www.oxforddictionaries.com/definition/english/love).

Regardless of whether or not the public can see any meaning in the abovementioned verbal elements of the signs, these words do not describe any characteristics of the services and therefore are distinctive.

The second line in the contested sign contains the expression ‘Playa Mujeres, Mexico’, depicted in significantly smaller size than the word ‘Beloved’, but in the same typeface. However, regardless of whether the relevant public associates the expression with a known place, it is inevitable that it will assume that ‘Playa Mujeres, Mexico’ is the place where the services are provided. This is because ‘Mexico’ is the name of a country and ‘Playa Mujeres’ will be understood as the name of a beach that is famous and known for the relevant services. Therefore, this element is non-distinctive for the services in question.

At the bottom of the sign, in significantly different typeface, colours and size, and visually separated from the remaining elements, is the phrase ‘EXCELLENCE GROUP’. The equivalent Spanish word ‘grupo’ is close enough to the English word to allow the Spanish–speaking consumers to infer the same meaning. For the same reason the word ‘EXCELLENCE’, meaning ‘the quality of being excellent’ can also be associated with the Spanish equivalent ‘excelencia’ or even to ‘excelente’, meaning ‘stands out for its optimal qualities’, (information extracted from Diccionario de la lengua española - Real Academia Espanola on 25/07/2019 at https://dle.rae.es/?id=HBZRybi; translation provided by the examiner). The relevant public will understand ‘EXCELLENCE GROUP’ as referring to a group of undertakings called Excellence, the name of the group having laudatory connotations (in Spanish excelente). Therefore, its distinctiveness is weak and of a secondary nature.

The contested sign is a composite figurative mark composed of several verbal elements in different sizes and styles, as explained above.

In assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark.

(23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 35; 28/04/2004, C‑3/03 P, Matratzen + Matratzenmarkt Concord (fig.), EU:C:2004:233).

Therefore, considering the entire structure of the contested sign, the most dominant element is ‘Beloved’. All other elements are of secondary importance, as they are visually subordinate, and in smaller fonts.

Furthermore, it is reasonable to accept that ‘Beloved’ is the only element that the public will use as a reference to the trade mark. This is due to the characteristics of the expressions placed on the second and third lines in the contested sign and also due to the Courts’ conclusion that the average consumer tends to abbreviate a mark that includes several elements in order to make it easier to pronounce, and to remember the beginning of a sign more than its ending (14/02/2019, T‑63/18, TORRO Grande Meat in Style (fig.) / TORO et al., EU:T:2019:89, § 52).

Aurally, considering the usual Spanish pronunciation of the relevant letters, the public will pronounce the elements ‘BLOVED’ and ‘Beloved’ both as [be-loved]. Although the earlier mark will be perceived as one element, it is not excluded that the letter ‘B’ can be pronounced separately as /be/, as it is depicted in a noticeably larger size than the rest of the letters. Considering all the above, the remaining elements of the contested sign will not be pronounced. Therefore, the signs are aurally identical.

Visually, the signs coincide in the letters ‘B*LOVED’, which constitute the entire element of the earlier mark and almost the entire dominant first element of the contested sign. The additional letter ‘E’ in the contested sign may not even be noticed by the relevant public as it is in a position that does not attract much visual attention. Although the words are stylised in a different manner, the level of stylisation is not high. Furthermore the consumers are accustomed to the stylisation of verbal elements in marks and they will perceive it as a merely decorative depiction of the verbal elements.

The remaining elements of the contested sign ‘Playa Mujeres, Mexico’ and ‘EXCELLENCE GROUP’ are of secondary importance, non-distinctive or weak.

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

Conceptually, for that part of the public that will associate the element ‘Beloved’ and the earlier mark with the same concept of ‘love’ the signs are similar to an average degree. The remaining elements will not be entirely disregarded but, as already explained above, they are of a non-distinctive or weak character.

For the other part of the public that will not see any meaning in ‘BLOVED’ and ‘Beloved’ the signs are not conceptually similar. However, the remaining elements in the contested sign have concepts so the contested sign will have some meaning.

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 has no clear, specific or unambiguous meaning for any of the goods and 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.

e) Global assessment, other arguments and conclusion

As concluded above, the relevant services are partly identical and partly similar to an average degree. They are directed at the general public who have an average degree of attention. The earlier mark is endowed with an average degree of inherent distinctiveness, which affords it a normal scope of protection.

The signs are visually similar to an average degree and aurally identical. Depending on the consumer’s perception, the signs can be conceptually similar to a high degree or not conceptually similar. However, when the signs are perceived as conceptually not similar, this is on account of the presence of other elements that are non-distinctive or weak.

The similarity between the signs results from the fact that the verbal element constituting the earlier mark is almost entirely reproduced in the contested sign where it plays a dominant role. While the differences will not be overlooked, they are confined to the font and non-distinctive and weak elements, all being of secondary importance. Therefore, they are not enough to outweigh the similarities between them.

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).

In this case, it is likely that, due to their imperfect recollection of the signs, consumers will overlook the differences between ‘BLOVED’ and ‘Beloved’, which are visually not very obvious, not being in the first or last letter of the signs. Moreover, the difference in the letter ‘E’ does not alter the perception of the signs as being related to ‘love’, for the public that is going to see such a connection, and may be compensated for by the pronunciation of the letter ‘B’ as /be/.

Moreover, the Opposition Division notes that it is a common practice for service providers to make variations of their trade marks, for example by altering the font or colours, or adding verbal or figurative elements to them, in order to denote new service lines, or to endow their trade mark with a new, modernised image. Accordingly, in this case the element ‘Playa Mujeres, Mexico’ may lead the consumer to believe that the contested sign is a variation of the earlier mark that contains an indication of the place of the services and that the element ‘EXCELLENCE GROUP’ indicates the name of the provider.

Therefore, it is very likely that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or an economically linked) commercial origin not only to the services that are identical but also to the services that are similar.

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 opponent’s Spanish trade mark registration No 3 617 392. It follows that the contested trade mark must be rejected for all contested services.

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

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Andrea VALISA

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.