motel one | Decision 2283706
Date Published: Oct 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 283 706
Grupo Posadas, S.A. B. de C.V., Av. Prolongación Paseo de la Reforma No. 1015,
Torre A, Piso 9, Gol. Santa Fé Cuajimalpa, Del. Cuajimalpa de Morelos, C.P. 05348,
Ciudad de México, México, Ciudad de México 05348, Mexico (opponent),
represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén
DarÃo, 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 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 283 706 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 1 150 554 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.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 283 706 page: 2 of 5
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 goods
After a decision rendered by the Cancellation Division (17/12/2014, CD, No 8567 C),
subsequently confirmed by the Board of Appeal (22/01/2016, BoA, No R 400/20152),
the services on which the opposition is based are 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: Business management consultancy; professional business
consultancy for service enterprises providing food and drink, or
temporary accommodation; professional business consultancy and
organizational consultancy for the management, supervision and
control of service enterprises providing food and drink, or temporary
accommodation; professional business consultancy for franchising
concepts.
Class 43: Services for providing food and drink; temporary accommodation;
motel and hotel services; accommodation reservation services.
Class 45: Licensing franchising concepts; legal advice services for franchising
concepts of service enterprises providing food and drink, or temporary
accommodation, in particular granting of licenses 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
(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
Decision on Opposition No B 2 283 706 page: 3 of 5
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Decision on Opposition No B 2 283 706 page: 4 of 5
Contested services in Classes 35, 43 and 45
The contested services in Class 35 are usually rendered by specialist companies
such as business consultants. These companies gather information and provide tools
and expertise to enable their customers to carry out their business or provide
businesses with the necessary support to acquire, develop and expand market
share. The contested services in Class 43 essentially consist of the provisioning of
temporary accommodation as well as food and drink. The contested services in Class
45 are legal services concerning licensing and franchising.
These services have no connection with the opponent’s services which are
essentially related to the packaging and storing of goods or to the rental of diving
equipment in Class 39 as well as publishing and reporting services, translation and
interpretation services, calligraphy services or dubbing services in Class 41.
These services have different natures, purposes and methods of use. The providers,
distribution channels and end users do not coincide. They are neither complementary
nor in competition to each other. Therefore, these services are dissimilar.
b) 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 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 holder 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
holder are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Steve HAUSER Benoit VLEMINCQ Martina GALLE
Decision on Opposition No B 2 283 706 page: 5 of 5
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.