MI CASA 4 YOU | Decision 2722786
Date Published: Oct 1, 2017
OPPOSITION No B 2 722 786
Engelinus Wolthuis, Hoofdweg 68, 9615 AD Kolham, Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative)
a g a i n s t
Ghisa Holding B.V., Monte Viso 25, 1060 PE Amsterdam, Netherlands (applicant).
On 24/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 722 786 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 017 056 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 017 056. The opposition is based on, inter alia, Benelux trade mark registration No 988 783. The opponent invoked Article 8(1)(a) and (b) EUTMR.
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
The opposition is based on more than one earlier trade mark. The Opposition Division will first examine the opposition in relation to the opponent’s Benelux trade mark registration No 1 319 228.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Software for online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals.
Class 42: Hosting electronic platforms.
Class 43: Short-term house rental, rental of condominium and apartments, time-shares (short-term rental of accommodations); online reservation, booking for temporary lodging, temporary accommodations and vacation rentals.
The contested goods and services are the following:
Class 9: Software for online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals.
Class 42: Providing an electronic platform through global computer and mobile networks for users to find temporary lodging, temporary accommodations and vacation rentals.
Class 43: Providing online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals; rental of short-term houses, condos and apartments, time-shares and temporary accommodations.
Contested goods in Class 9
Software for online reservation, booking and search services for temporary lodging, temporary accommodations and vacation rentals are identically contained in both lists of goods.
Contested services in Class 42
The contested providing an electronic platform through global computer and mobile networks for users to find temporary lodging, temporary accommodations and vacation rentals are included in the broad category of the opponent’s hosting electronic platforms. Therefore, they are identical.
Contested services in Class 43
The contested providing online reservation, booking services for temporary lodging, temporary accommodations and vacation rentals; rental of short-term houses, condos and apartments, time-shares are identical to the opponent’s short-term house rental, rental of condominium and apartments, time-shares (short-term rental of accommodations); online reservation, booking for temporary lodging, temporary accommodations and vacation rentals, either because they are identically contained in both lists (including synonyms) or, in the case of providing online search services for temporary lodging, temporary accommodations and vacation rentals; rental of temporary accommodations, because the opponent’s services include, are included in or overlap with the contested services.
- The signs
Earlier trade mark | Contested sign |
The signs are identical.
- Conclusion
Both the signs and the contested goods and services are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.
As the earlier Benelux trade mark registration No 1 319 228 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Konstantinos MITROU | Frank MANTEY | Martin EBERL |
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.