1 ONE | Decision 1982365
Date Published: Sep 25, 2017
OPPOSITION No B 1 982 365
Grupo Posadas, S.A. B. de C.V., Paseo de la Reforma Nº 155 PH-B, Col. Lomas de Chapultepec (México, Distrito Federal) 11000, Mexico (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)
a g a i n s t
Motel One GmbH, Tegernseer Landstrasse 165, 81539 München, Germany (holder), represented by Weickmann & Weickmann Patentanwälte - Rechtsanwalt PartMBB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative).
On 14/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 982 365 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 international registration designating the European Union No 1 076 051 for the figurative mark . The opposition is based on European Union trade mark registration No 6 982 748 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.
- The services
The services on which the opposition is based are, after a decision by the Cancellation Division, No C 8567 of 17/12/2014, and confirmed by the Board of Appeal, No R 0400/2015-2 of 22/01/2016, the following:
Class 39: Packaging and storage of goods; storage of goods in a warehouse or other building for their preservation or guarding; packaging and parcelling of goods before dispatch; rental of diving bells and rental of diving suits.
Class 41: Calligraphy services; dubbing; electronic desktop publishing; layout services, other than for advertising purposes sign language interpretation; subtitling; translation.
The contested services are the following:
Class 35: Management consultancy; professional business consultancy for service enterprises providing food and drink, or temporary accommodation; business economics and business management consultancy for the administration, supervision and control of service enterprises providing food and drink, or temporary accommodation.
Class 43: Services for providing food and drink; temporary accommodation; motel and hotel services; accommodation reservation services.
Class 45: Licencing franchising concepts; legal advice services for franchising concepts of service enterprises providing food and drink, or temporary accommodation, in particular granting of licences and passing on economic know-how to service enterprises providing food and drink, or temporary accommodation.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘in particular’, used in the holder’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested services in Classes 35, 43 and 45
When comparing the contested services in Class 35, which mainly include services rendered by persons or organizations principally with the object of help in the operating or managing of a commercial undertaking, or help in the managing of the business affairs or commercial functions of an industrial or commercial enterprise; in Class 43, which mainly include services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and boards in hotels, boarding houses or other establishments providing temporary accommodation and in Class 45, which mainly include legal services concerning licensing and franchising, with the opponent’s services in Class 39, which mainly include services relating to the packaging of goods and their storing in a warehouse or other building for their preservation or guarding, rental of diving equipment and in Class 41, services such as calligraphy services; dubbing; electronic desktop publishing; layout services, other than for advertising purposes, sign language interpretation; subtitling; translation, these services are all dissimilar. They differ in nature and purpose. They are not in competition or complementary to each other. These services have a different origin, distribution channels and they target a different public.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 85(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 holder in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Martin MITURA | Chantal VAN RIEL | Saida CRABBE |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.