BOTEL | Decision 2504127 - JOSEL, S.L. v. Chedi Consultancy B.V.

Date Published: Oct 2, 2017

OPPOSITION No B 2 504 127

Josel, S.L., Calle Urgel, 230, 08036 Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Chedi Consultancy B.V., NDSM-pier 3, 1033 RG Amsterdam, Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative).

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 504 127 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 13 262 357, namely against all the services in Class 43. The opposition is based on Spanish trade mark registration No 2 521 802. 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 the following:

Class 43: Services for providing food and drink; temporary accommodation.

The contested services are the following:

Class 43: Services for providing food and drink (supply and preparation of food and drink); catering and hospitality services, including bar and bistro services; temporary accommodation; reservation and providing of accommodation and temporary accommodation; mediation in the rental of temporary accommodation; rental of temporary space for gatherings, receptions and parties, including themed parties; preparing of dishes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the Internet.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’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 goods or services include, inter alia, the nature and purpose of the goods or 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 Class 43

The contested services for providing food and drink (supply and preparation of food and drink); temporary accommodation; all the aforesaid services whether or not via electronic channels, including the Internet are also contained in the opponent’s list of services (including synonyms). Therefore, they are identical.

The contested catering and hospitality services, including bar and bistro services; preparing of dishes; all the aforesaid services whether or not via electronic channels, including the Internet are included in the broad category of, or overlap with, the opponent’s services for providing food and drink. Therefore, they are identical.

The contested reservation and providing of accommodation and temporary accommodation; mediation in the rental of temporary accommodation; rental of temporary space for gatherings, receptions and parties, including themed parties; all the aforesaid services whether or not via electronic channels, including the Internet are included in the broad category of, or overlap with, the opponent’s temporary accommodation. Therefore, they are identical.

The contested information and consultancy relating to the aforesaid services (services for providing food and drink (supply and preparation of food and drink); catering and hospitality services, including bar and bistro services; temporary accommodation; reservation and providing of accommodation and temporary accommodation; mediation in the rental of temporary accommodation; rental of temporary space for gatherings, receptions and parties, including themed parties; preparing of dishes); all the aforesaid services whether or not via electronic channels, including the Internet are auxiliary services to the earlier services for providing food and drink and temporary accommodation, which are carried out by the same undertakings. The providers, distribution channels, and relevant public of these services coincide and the services in question are frequently rendered in combination with each other. Therefore, they are considered to be highly similar.

2. 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 and highly similar are directed at the public at large. Given that the services are accessible to and used by a large majority of the relevant public on a regular basis and they do not require any specialist knowledge or expertise, the degree of attention is considered average.

3. The signs

B-HOTEL
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 the word mark ‘B-HOTEL’. The contested sign is a figurative mark, composed of the verbal element ‘BOTEL’, depicted in stylised upper case red letters.

Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.

In the earlier mark, the public in the relevant territory will perceive the letter ‘B’ as a letter of the Latin alphabet (see, for example, 08/05/2012, T-101/11, G, EU:T:2012:223, § 56).

It will perceive the word ‘HOTEL’ in the earlier mark as ‘a hostelry establishment occupying a building totally or partially with the exclusive use of its services (entrances, lifts, stairs, etc.) and offering accommodation and food services’ (see, for example, Español Oxford Living Dictionaries at https://es.oxforddictionaries.com/definicion/hotel). Therefore, the Opposition Division considers that the word ‘HOTEL’ will be perceived by the relevant public as a suggestion of the nature of the relevant services in Class 43, which are all related to accommodation and food and drink services, and is, therefore, non-distinctive for all the services at issue. Consequently, the letter ‘B’ is the more distinctive element of the sign.

As regards the contested sign, the verbal element ‘BOTEL’ has no meaning for the relevant public and is, therefore, of an average distinctiveness. As the contested sign is composed of a single element, namely the stylised verbal element ‘BOTEL’, the mark has no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in the sequence of letters ‘B*OTEL’, which forms the entire verbal element of the contested sign and appears in the earlier mark, ‘B-HOTEL’. However, these letters are part of one word in the contested sign, ‘BOTEL’, whereas in the earlier mark the letter ‘B’ forms the first element of the mark, while the letters ‘OTEL’ are part of the second word of the mark, ‘HOTEL’.

The two verbal elements, ‘B’ and ‘HOTEL’, of the earlier mark are clearly distinguished as separate elements by a hyphen, whilst the contested sign consists of one single word. The differences in the structure of the signs are evident and will immediately draw the consumer’s attention. Furthermore, the element ‘HOTEL’ in the earlier mark will be perceived as non-distinctive by the relevant public and will be paid less attention by the relevant public. Therefore, the coincidence in a string of letters is not clearly perceived, since the common letters, ‘B’ and ‘OTEL’, are separated into different elements and, therefore, these common letters cannot be identified as individual elements in the marks.

The marks also differ visually in the colours and the particular stylisation of the verbal element of the contested sign.

Therefore, bearing in mind all the above, it is considered that the earlier mark and the contested sign are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘B’ and ‘OTEL’, present identically in both signs. The letter ‘H’ in the word ‘HOTEL’ of the earlier mark will not be pronounced in Spanish. The pronunciation differs insofar as the earlier mark will be pronounced as two separate elements in three syllables, [BE] and [O-TEL], whereas the contested sign will be pronounced as one word in two syllables, [BO-TEL].

The fact that the earlier mark is composed of two separate elements in three syllables establishes a somewhat different rhythm and fluidity from the pronunciation of a single word consisting of two syllables in the contested sign.

Therefore, in terms of aural impression, the marks are similar to a low degree.

Conceptually, as seen above, the word ‘HOTEL’ in the earlier mark, albeit non-distinctive, conveys a concept for the public in the relevant territory. Furthermore, the letter ‘B’ in that mark will be perceived as a letter of the Latin alphabet. However, as explained above, the contested sign has no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services under comparison are identical and highly similar.

The signs are visually and aurally similar to a certain degree on account of the letter sequence that they have in common, ‘B(*)OTEL’. However, they differ in the additional letter and the hyphen in the earlier mark and in the particular graphical depiction of the contested sign. The letters that the signs have in common, ‘B(*)OTEL’, are separated partly in different syllables (‘BE-O-TEL’ versus ‘BO-TEL’), and their differing structures (i.e. two separate elements in the earlier mark as opposed to a single element in the contested sign) influence significantly the pronunciation of the marks. These features of the signs are clearly perceptible and will not go unnoticed by the relevant public.

Regarding the conceptual comparison, the marks have no concepts in common that would lead the public to associate one with the other. The common letters, ‘B’ and ‘OTEL’, form the only element of the contested sign, ‘BOTEL’, whereas they are separated into different elements in the earlier mark, in which the letter ‘B’ will be perceived as such, while the letters ‘OTEL’ are part of the meaningful word ‘HOTEL’. Consequently, the common letters cannot be identified as individual elements in the marks. The public compares the marks as a whole. There is no reason to assume that the relevant consumer will artificially join the elements of the earlier mark into one single word or split the contested sign into two separate words.

Therefore, the mere coincidence in a string of letters is not sufficient for the marks to convey similar overall impressions.

The Opposition Division finds that the differences between the signs due to their different structures and number of elements will enable the relevant consumers to safely distinguish between them and will not lead consumers to associate the services, even those that are identical, with the same undertaking or economically linked undertakings, let alone confuse the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benjamin Erik WINSNER

Boyana NAYDENOVA

Pedro JURADO MONTEJANO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.