Staywell Hospitality Group v EUIPO - Sheraton International IP (PARK REGIS) (Judgment) [2016] EUECJ T-510/14 (02 June 2016)

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(European Union trade mark - Opposition proceedings - Application for European Union figurative mark PARK REGIS - Earlier European Union figurative mark ST. REGIS - Partial refusal to register - Article 64(1) of Regulation No 207/2009 - Likelihood of confusion - Article 8(1)(b) of Regulation No 207/2009)

Staywell Hospitality Group Pty Ltd, established in Sydney (Australia), represented by D. Farnsworth, Solicitor, and A. Bryson, Barrister,

Sheraton International IP, LLC, established in Stamford, Connecticut (United States), represented by E. Armijo Chávarri, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

the other parties to the proceedings before the Board of Appeal of the EUIPO, intervening before the General Court, respectively in Cases T-510/14 and T-536/14, being

ACTIONS brought against the decision of the Fifth Board of Appeal of the EUIPO of 30 April 2014 (Joined Cases R 240/2013-5 and R 303/2013-5) relating to opposition proceedings between Sheraton International IP and Staywell Hospitality Group,

composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,

having regard to the applications lodged at the Court Registry on 3 and 16 July 2014 in Cases T-510/14 and T-536/14 respectively,

having regard to the response of the EUIPO lodged at the Court Registry on 15 December 2014,

having regard to the responses of the interveners lodged at the Court Registry on 7 November (T-536/14) and 15 December 2014 (T-510/14),

having regard to the order of 7 January 2015 joining Cases T-510/14 and T-536/14 for the purposes of the written and oral parts of the procedure and the judgment,

1 On 2 November 2010, Staywell Hospitality Group Pty Ltd (‘Staywell’) filed an application for registration of a European Union trade mark at the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 The trade mark for which registration was sought is the figurative sign reproduced below:

3 The services in respect of which registration was applied for are in Classes 35, 36 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 35: ‘Advertising, marketing, promotion and publicity services; business management; business administration; office functions; provision of office facilities; administration of the business affairs of retail stores, advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network; retail services connected with the sale of cosmetics and beauty products, precious metals and stones, jewellery, watches, timepieces and clocks, paper and paper goods, printed matter, stationery, leather goods and bags, homewares, glassware, porcelain, earthenware, textiles and textile goods, clothing, footwear, headgear, toys, games, playthings, sporting articles and equipment, food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements and smokers articles; online electronic retail services connected with the sale of cosmetics and beauty products, precious metals and stones, jewellery, watches, timepieces and clocks, paper and paper goods, printed matter, stationery, leather goods and bags, homewares, glassware, porcelain, earthenware, textiles and textile goods, clothing, footware, headgear, toys, games, playthings, sporting articles and equipment, food and foodstuffs, drinks (alcoholic and non-alcoholic), flowers and flower arrangements and smokers articles; promotional services for hotels, restaurants, bars, resorts; business management of hotels’;

- Class 36: ‘Real estate services; real estate management services; real estate leasing services; letting, rental and leasing of accommodation on behalf of others; management of rental and leasehold properties; information relating to the aforesaid services’;

- Class 43: ‘Services for providing food and drink; temporary accommodation; hotel services; hotel accommodation services; hotel catering services; hotel reservation services; hotel restaurant services; provision of hotel venues for business exhibitions, business fairs, conferences, congresses, lectures and meetings; providing facilities for conducting conferences, conventions, exhibitions, fairs and holidays; rental of meeting rooms; hospitality services; hospitality suites; holiday information and planning relating to accommodation; restaurants; cafes; catering services; advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network; all included in Class 43’.

4 The European Union trade mark application was published in Community Trade Marks Bulletin No 4/2011 of 7 January 2011.

5 On 7 April 2011, Sheraton International IP, LLC (‘Sheraton’), filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of all the services referred to in paragraph 3 above.

6 The opposition was based inter alia on the earlier European Union figurative mark reproduced below, filed on 29 May 2008 and registered on 16 December 2008, under number 6 948 483:

7 The services covered by the earlier European Union figurative mark are in Classes 36 and 43 and correspond, for each of those classes, to the following description:

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

8 The opposition was also based on the earlier European Union word mark ST. REGIS, filed on 9 February 1998 and registered on 5 July 1999 under number 743 880, in particular with respect to the services in Class 42 corresponding to the following description: ‘Hotel and motel services; restaurant, bar and catering services; resort services; casino and gaming services; food and beverage services; hotel reservation services; accommodation services; security services relating to valuables; provision of information relating to holidays; consumer advisory services relating to holidays; beauty salon and hairdressing services; café and cafeteria services; canteen services; provision of facilities for exhibitions and fairs; provision of conference and meeting facilities; housekeeping services; photographer services; provision of translation services; vending machine rental services.’

9 Following a request for proof of genuine use made by Staywell in accordance with Article 42(2) of Regulation No 207/2009, Sheraton submitted documents and other evidence so as to prove genuine use of the earlier European Union word mark with respect to the services in Class 42.

10 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

11 On 10 March 2012, the Opposition Division upheld the opposition in part by examining it first on the basis of the earlier European Union figurative mark, in particular as regards all the services included in Classes 36 and 43 with respect to which it concluded that there was a likelihood of confusion. It considered, in particular, that the services at issue comprised in Class 36 were identical and that the services at issue comprised in Class 43 (according to a clearly typographical error, incorrectly referred to as ‘Class 42’ in the contested decision, as confirmed by the EUIPO at the hearing in response to a question from the Court) were partly identical and partly similar to a high degree to the services covered by the earlier European Union figurative mark included in Class 43. Having taken into account the similarity of the signs as well, the Opposition Division concluded that there was a likelihood that the mark applied for would be perceived as a variation of the earlier European Union figurative mark. It however concluded that the services in Class 35 covered by the mark applied for were not similar to those in Classes 36 and 43 covered by the earlier European Union figurative mark and that there was accordingly no likelihood of confusion with regard to them. As regards the earlier European Union word mark, the Opposition Division considered that use had been proven only with respect to ‘hotel services and private butler services’ in Class 42, already examined, in essence, as regards the earlier European Union figurative mark, so that it was necessary to reject the opposition with respect to the remaining services.

12 On 31 January 2013, Staywell filed an appeal with the EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division (Case R 240/2013-5). On 11 February 2013, Sheraton also filed an appeal with the EUIPO, pursuant to the same articles of that regulation, against that decision of the Opposition Division (Case R 303/2013-5).

13 By decision of 30 April 2014 (‘the contested decision’), the Fifth Board of Appeal of the EUIPO dismissed the two appeals, which had been joined pursuant to Article 7(1) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the EUIPO (OJ 1996 L 28, p. 11), as amended. Examining first the opposition with respect to the earlier European Union figurative mark, the Board of Appeal upheld the decision of the Opposition Division rejecting the opposition in part by concluding, in essence, that the services at issue in Classes 36 and 43 were identical or similar to a high degree to the services covered by that earlier mark, but that there was no similarity with respect to those in Class 35. As regards the comparison of the signs, the Board of Appeal concluded that the signs to be compared were visually, phonetically and conceptually similar. It concluded that, on account of the identity or similarity of the services at issue and the overall similarity between the signs, there existed a likelihood of confusion, even taking account of a level of attention of the relevant public which is higher than average, in particular to the extent that, since the services at issue refer in each case to hotel and real estate services, the mark applied for and the earlier European Union figurative mark at issue could be perceived as sub-brands in order to distinguish the scope of services of one provider from other services of the same provider.

14 The Board of Appeal stated, finally, that it would be redundant and contrary to procedural economy to examine in detail the other earlier rights invoked.

- annul the contested decision in so far as it upheld the registration of the mark applied for with respect to the following services in Class 35: ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’;

19 In Case T-510/14, Staywell relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

20 In Case T-536/14, Sheraton raises, in essence, two pleas, the first alleging infringement of Article 64(1) of Regulation No 207/2009 and the second alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

21 It is appropriate to begin by examining the arguments put forward in the context of the first plea in Case T-536/14 before turning to those put forward in the context of the single plea in Case T-510/14 and the second plea raised in Case T-536/14, since they both concern the Board of Appeal’s analysis of the merits as to whether there is a likelihood of confusion.

22 Sheraton claims, in essence, that, in breach of Article 64(1) of Regulation No 207/2009, the Board of Appeal failed to examine the similarity of the services in so far as it concerns ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’ in Class 35 covered by the mark applied for and those covered by the earlier European Union figurative mark. According to Sheraton, the Board of Appeal’s statement that it failed to put forward any arguments in that regard is not acceptable because it precisely identified the services at issue in its written submissions lodged on 5 April 2013. The Board of Appeal should therefore have examined the question without circumventing it and simply confirming the decision of the Opposition Division. Sheraton considers that that is all the more so in the light of the fact that, before the Board of Appeal, it did not maintain its opposition as regards all the services in Class 35, but limited it to the abovementioned services. It follows therefrom that the Opposition Division’s analysis, based on a wide construction including all the services covered by the mark applied for in Class 35, was no longer valid.

24 In that regard, it must be borne in mind that, according to Article 64(1) of Regulation No 207/2009, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal, and that it may either exercise any power within the competence of the Opposition Division which was responsible for the decision appealed or refer the case back to that division for further action.

25 In the present case, in paragraph 46 of the contested decision, the Board of Appeal began by observing that Sheraton had not submitted any arguments in support of its challenge to the Opposition Division’s findings on the dissimilarity between the contested services in Class 35 and those covered by the earlier European Union figurative mark. It dismissed the sole argument put forward by Sheraton to the effect that the contested service of ‘rental of vending machines’, included in the heading of Class 35 and identified by the Opposition Division as also relevant given the protection sought for the entire class covered by the European Union trade mark application, was identical to the services in Class 42 covered by the earlier European Union word mark, namely ‘vending machine rental services’. The Board of Appeal found inter alia that that argument could not be upheld, given the lack of proof of use of that other mark relied on by Sheraton for those services. It added that nor could it identify any similarity between the contested services in Class 35 and the relevant services covered by the earlier European Union figurative mark and that it therefore fully endorsed the Opposition Division’s assessment and findings in that regard.

26 Contrary to Sheraton’s assertions, there are several reasons why the Board of Appeal cannot be criticised for having failed to examine a complaint put forward before it.

27 First, Staywell submits, correctly, that it has not been clearly established that the action brought by Sheraton before the Board of Appeal restricted the scope of the opposition to ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’ in Class 35. The only fact that seems capable of supporting such an analysis of Sheraton’s written observations lodged with the Board of Appeal on 5 April 2013 is the fact that the services at issue are underlined and in bold in the list of services in Class 35 covered by the mark sought in that document. In the absence of other explanations or arguments, however, that simple marking does not allow the inference that the scope of the opposition has been so limited, as argued by Sheraton.

28 Secondly, even if it were to be held that Sheraton did thus restrict the scope of its opposition before the Board of Appeal, the Board’s analysis does not infringe Article 64(1) of Regulation No 207/2009.

29 Thus, when, as in the present case, the Board of Appeal confirms a lower-level decision of the EUIPO in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (judgments of 9 July 2008 in Reber v OHIM - Chocoladefabriken Lindt & Sprüngli (Mozart), T-304/06, EU:T:2008:268, paragraph 47, and 22 May 2012 in Sport Eybl & Sports Experts v OHIM - Seven (SEVEN SUMMITS), T-179/11, not published, EU:T:2012:254, paragraph 50).

30 In the present case, in endorsing the Opposition Division’s analysis of the comparison of the services in Class 35, the Board of Appeal did therefore examine Sheraton’s action and ruled on it in accordance with Article 64(1) of Regulation No 207/2009.

31 Moreover, the question whether the Opposition Division’s analysis, endorsed by the Board of Appeal, is vitiated by error as to the comparison of services in Class 35 identified by Sheraton in paragraph 22 above, falls within the Board of Appeal’s substantive examination of the likelihood of confusion, which will be considered below.

33 In the context of the single plea in Case T-510/14, Staywell claims, in essence, that the Board of Appeal’s analysis concerning the similarity of the signs is mistaken. The signs are not similar, with the result that there can be no likelihood of confusion.

34 In the context of the second plea in Case T-536/14, Sheraton claims, in essence, that the Board of Appeal was incorrect to find that there was no similarity of services in Class 35, in particular with regards to ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’ covered by the mark sought and that, consequently, there was a likelihood of confusion in respect of those services as well.

35 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

36 According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratoire RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

37 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM - easyGroup IP Licensing (easyHotel), T-316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

38 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that it suffices, in order for registration of a European Union trade mark to be refused, that an absolute ground for refusal within the meaning of Article 8(1)(b) of Regulation No 207/2009 exists only in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and Others), T-81/03, T-82/03 and T-103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

39 It is in the light of the foregoing provisions and case-law that the Board of Appeal’s analysis must be examined with regards to the lack of similarity of the contested services in Class 35 and the likelihood of confusion between them, and also the question whether there is a likelihood of confusion for the services in Classes 36 and 43.

40 The Board of Appeal considered that, given that the earlier rights are protected in the European Union, the relevant territory in which to analyse the likelihood of confusion concerns the whole EU territory. It observed that the services at issue were directed at the general public and business customers with specific knowledge or expertise. The Board of Appeal further noted that the level of attention at the moment of purchase or selection of the services at issue was at least average, given that those services were not usually selected on a daily basis and could be relatively expensive.

41 Those findings must be upheld, particularly since the services at issue are not purchased on a daily basis and may be directed at the general public and a specialised segment of the public. Nor have the parties challenged those findings in the course of the written procedure. Staywell’s argument put forward at the hearing to the effect that the EUIPO’s position on this point was not clear and the relevant public’s level of attention should be considered to be relatively high must be rejected; even though it is not a new, and therefore inadmissible, plea within the meaning of Article 84(1) of the Rules of Procedure of the General Court, the Board of Appeal’s reasons in the contested decision are sufficiently substantiated and well founded.

42 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see, to that effect, judgment of 11 July 2007 in El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

43 In the present case, the Board of Appeal found, firstly, in paragraph 45 of the contested decision, that no plea had been put forward before it regarding the Opposition Division’s comparison of the services in Classes 36 and 43 covered by the mark sought and concurred with the Opposition Division’s conclusion that the services at issue were identical or, at the very least, highly similar. As there is nothing in the case file casting doubt on that finding, it must be upheld. By contrast, for the services in Class 35 covered by the mark sought, the Board of Appeal stated that it did not find a similarity to the relevant services covered by the earlier European Union figurative mark.

44 Sheraton submits, firstly, that the Board of Appeal failed to focus the comparison on the services in Class 35 actually being contested, namely ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’. Instead, it interpreted them broadly as belonging to the less specific category of ‘advertising, marketing, promotion, business and retail stores’.

45 Secondly, the Board of Appeal’s analysis is arbitrary and unfounded because, to the extent that ‘promotional services for hotels, restaurants, bars, resorts’ are part of the list of hotel services covered by the earlier rights, there is a link of functional complementarity with the latter. Several factors support such an analysis. First, in the light of the fact that the word ‘promotion’ can be understood as meaning either ‘encouragement’, ‘improvement of’, or ‘advertising for a product or undertaking in order to enhance sales or the public’s level of knowledge’, the promotion of the development of hotel services is closely linked with the supply of those services as such and, since hotels usually own a bar and often a restaurant, the ‘promotion of restaurant and bar services’ is also similar to ‘hotel services’ covered by the earlier European Union word mark. Second, ‘business management of hotels’ is understood as being covered by the supply of hotel services or closely linked with it, since the former is indispensable to the latter. Third, the Opposition Division has found that those types of service are complementary in other decisions, two examples of which are provided.

47 As observed in paragraph 25 above, in paragraph 46 of the contested decision, the Board of Appeal endorsed the Opposition Division’s analysis by which it found that the services covered by the mark sought in Class 35 and those covered by the earlier European Union figurative mark were not similar.

48 The Opposition Division’s analysis, reproduced in paragraph 7 of the contested decision, states in essence that the ‘advertising, marketing, promotion and publicity services and also promotional services for hotels, restaurants, bars and resorts (all the aforesaid services also provided on-line from a computer database or via the global communications network)’ in Class 35 are dissimilar to the services covered by the earlier European Union figurative mark in Class 43, including ‘services for providing food and drink’ and ‘temporary accommodation’. The Opposition Division stated, in essence, that the services at issue were different in nature, that they were provided by different types of undertakings, were not directed at the same end users and were not offered through the same distribution channels. In its submission, they are therefore not complementary or in competition with each other. It stated, in relation to ‘advertising, marketing, promotion and publicity services’, that they were provided by specialised companies offering a tailored consultancy service, whereas ‘services for providing food and drink; temporary accommodation’ were provided by restaurants, hotels and other, similar economic entities. It further stated that it was unlikely that ‘business management’ services, including ‘the business management of hotels’ would be provided by companies offering ‘services for providing food and drink’ or ‘temporary accommodation’, such as hotels, as the latter could only use the services rendered by other types of undertakings to improve their own businesses.

49 In that regard, Sheraton’s argument that the Board of Appeal failed to focus the comparison on the services in Class 35 actually being contested, namely ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’, with ‘services for providing food and drink; temporary accommodation’ in Class 43 covered by the earlier mark, in so far as it alleges a failure to state reasons in the contested decision, must be rejected.

50 It is apparent from the Opposition Division’s analysis, reproduced in paragraph 7 of the contested decision, that it refers to both ‘advertising, marketing, promotion and publicity services’ and to ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’, stating in respect of all those services that they are dissimilar, in particular ‘services for providing food and drink; temporary accommodation’, as they are different in nature, provided by different undertakings, are not directed at the same end users, are not offered through the same distribution channels and, lastly, are not complementary or competing.

51 The contested decision thus contains a sufficient statement of reasons on this point, because it allows interested parties to know the justification for the measure taken so as to enable them to protect their rights and enables the European Union Courts to exercise their power to review the legality of the decision (see, to that effect, judgment of 12 July 2012 in Gucci v OHIM - Chang Qing Qing (GUDDY), T-389/11, not published, EU:T:2012:378, paragraph 16 and the case-law cited).

52 It is also appropriate to examine below whether the arguments set out by the Opposition Division, endorsed by the Board of Appeal, were such as to substantiate its finding of dissimilarity.

53 In that context, first of all, the Opposition Division and the Board of Appeal found, correctly, that the contested services in Class 35 and those covered by the earlier European Union figurative mark in Class 43 were different in nature, provided by different types of undertakings and directed at other types of users.

54 Whilst ‘advertising, marketing, promotion and publicity services’ concern, in essence, specialised consultancy and support services for undertakings seeking to promote and develop their products or services, services for providing food and drink or temporary accommodation are directed at consumers as solutions for food and drink or temporary accommodation. As rightly stated by Staywell, promotion services provided by a third party to a hotel are not part of the service the hotel offers its customers, even if the hotel can take care of its promotion itself rather than calling on a third party for that service. It is a matter of exploring ways to attract greater numbers of customers for the hotel rather than providing any service to those customers. The same holds true for services for providing food and drink, just as similar reasoning is also valid in respect of ‘business management of hotels’. As rightly observed by the Opposition Division, such services are not generally offered by companies offering services for providing food and drink or hotel services, but by specialised companies, such as business consultants, who assist other companies in developing or implementing business strategies. The former may use services provided by consultants to improve the organisation of their own business, or to manage certain business management aspects themselves, but the purpose and nature of the services they offer their customers are different.

55 Furthermore, as observed by the EUIPO, that finding is supported by the case-law, which found that, although the development and operation of hotels involves typical office functions, it is nevertheless the case that, within hotels, those services are usually performed by the hotel staff, and not by third parties. Furthermore, hotels usually do not offer office services to other undertakings, with the result that the ‘office functions’ and ‘operation of hotels’ services are different on the ground that they generally have different origins and target different publics (see, to that effect, judgment of 21 March 2013 in Event v OHIM - CBT Comunicación Multimedia (eventer EVENT MANAGEMENT SYSTEMS), T-353/11, not published, EU:T:2013:147, paragraphs 47 and 48). Although that judgment refers specifically to the operation of hotels and office tasks, the reasoning is transposable to the present case with respect to the similitude of promotion services or business management of hotels or restaurants, such as those in Class 35 covered by the mark sought, and ‘services for providing food and drink’ and ‘temporary accommodation’ as such included in Class 43 and covered by the earlier European Union figurative mark.

56 Those types of services are therefore not in competition with each other because services directed at different publics cannot be considered substitutable nor, consequently, competing (judgments of 22 January 2009 in easyHotel, T-316/07, EU:T:2009:14, paragraph 56, and 29 February 2012 in Certmedica International and Lehning entreprise v OHIM - Lehning entreprise and Certmedica International (L112), T-77/10 and T-78/10, not published, EU:T:2012:95, paragraph 117).

57 Secondly, the Opposition Division and the Board of Appeal found, correctly, that nor were the services at issue mutually complementary.

58 Services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking. By definition, services intended for different publics cannot be complementary (judgments of 22 January 2009 in easyHotel, T-316/07, EU:T:2009:14, paragraphs 57 and 58, and 21 March 2013 in eventer EVENT MANAGEMENT SYSTEMS, T-353/11, EU:T:2013:147, paragraph 50).

59 As observed in paragraph 54 above, ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’ in Class 35, on the one hand, and ‘services for providing food and drink; temporary accommodation’, on the other, are directed at a different public, with the former being intended for undertakings wishing to promote their services to a clientele likely to be interested in services for providing food and drink or temporary accommodation, with the result that the target public for the advertising or management services in question covered by the mark sought are those undertakings and not their clientele.

60 Furthermore, the two types of services at issue are not indispensable or important for each other within the meaning of the case-law referred to in paragraph 58 above. Consumers of services for providing food and drink or temporary accommodation are not in the market for services promoting or managing those same services.

61 Regarding the judgment of 29 October 2015 in Giuntoli v OHIM - Société des produits Nestlé (CREMERIA TOSCANA) (T-256/14, not published, EU:T:2015:814), relied on by Sheraton at the hearing it is true that, in paragraphs 25 and 26 of that judgment, the Court found a high degree of similarity between the ‘edible ices’ in Class 30 and the ‘food sector services’ in Classes 35 and 43, in view of the close link between any product and its marketing and given that the purpose of those services is the marketing of the goods in question. However, the present case concerns the comparison of two types of services and not a good and the services related to the marketing of that good. Consequently, the reasoning set out in that judgment is not directly applicable to the present case.

62 Although goods such as edible ices may be sold to the end consumer, they are generally sold first to professional customers who then sell them on at retail level. Professional customers may be in the market for both the goods themselves as well as certain marketing services, with the result that the use of such services may be, from their point of view, important or indispensable for the use of the goods. By contrast, a purchaser of services for providing food and drink or temporary accommodation covered by Class 43 is an end consumer in a very different situation.

63 While it is true, as Staywell observed at the hearing, that certain hotel or restaurant customers do use those services in a professional context, even then they are not in the market for marketing or management services.

64 Nor is the fact that marketing and management services are important, and even necessary, for the provision of hotel or restaurant services or may, as also observed by Sheraton, be taken care of internally by hotels or restaurants, decisive in that context. Otherwise, as observed by Staywell, it would be necessary to infer a link of similarity between hotel and restaurant services for any type of activity that was important or necessary for providing those services and could be taken care of internally. It cannot be that that link of importance or necessity causes consumers to think that the responsibility for the provision of marketing and management services for both hotel and restaurant services lies with the same undertaking (see, by analogy, judgment of 11 July 2013 in Metropolis Inmobiliarias y Restauraciones v OHIM - MIP Metro (METRO), T-197/12, not published, EU:T:2013:375, paragraphs 46 to 49). Moreover, by taking care of marketing and management services itself, the hotel or restaurant is not providing a service to a third party, but only to itself.

65 The Opposition Division was therefore correct in finding that ‘promotional services for hotels, restaurants, bars, resorts; business management of hotels’ protected by the mark sought in Class 35 and ‘services for providing food and drink; temporary accommodation’ in Class 43 covered by the earlier European Union figurative mark were dissimilar.

66 That conclusion is not called into question by the two decisions of the Opposition Divisions of the EUIPO from 2000 and 2004, relied on by Sheraton, which held, inter alia, that services for marketing hotel services and hotel services were very closely linked and therefore similar. Apart from the fact that Staywell relies on decisions of the Opposition Divisions from 2009 and 2010 in which the opposite conclusion was reached, with the result that it is difficult to argue that the examples relied on by Sheraton are representative of the EUIPO’s current decision-making practice in such cases, it must be borne in mind that the EUIPO is required to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, the EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether or not it should decide in the same way, the manner in which those principles are applied must be consistent with respect for legality (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraphs 73 to 75). It is apparent from paragraphs 42 to 65 above that the Opposition Division’s analysis in the present case, as confirmed by the Board of Appeal, does observe the principles governing the assessment of the similarity of services within the framework of the application of Article 8(1)(b) of Regulation No 207/2009, as interpreted in the case-law.

67 Lastly, given the conclusion referred to in paragraph 65 above, it is not necessary to examine further Sheraton’s argument concerning ‘hotel services’ and ‘private butler services’ covered by the earlier European Union word mark in Class 42 and in respect of which use had been proven. As observed by the EUIPO and as acknowledged by Sheraton at the hearing, those services are included in ‘temporary accommodation’ services covered by the earlier European Union figurative mark which were examined above. The Board of Appeal was therefore correct in not taking that earlier right into account in its assessment of the similarity of the services.

68 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

69 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (see judgment of 12 November 2008 in Shaker v OHIM - Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T-7/04, EU:T:2008:481, paragraph 40 and the case-law cited).

70 In addition, it should be borne in mind that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark (see, to that effect, judgment of 18 September 2012 in Scandic Distilleries v OHIM - Bürgerbräu, Röhm & Söhne (BÜRGER), T-460/11, not published, EU:T:2012:432, paragraph 35 and the case-law cited).

71 In paragraphs 27 to 43 of the contested decision, the Board of Appeal began by focusing its analysis on the earlier European Union figurative mark and found that the common word ‘regis’ was the most distinctive term of the two signs, with their figurative elements, made up of relatively banal emblems, being perceived as having a decorative function. It inferred that the signs were, overall, similar given their visual similarity (matching ‘regis’ element and each comprising a sort of heraldic image or semblance of an insignia) and a certain degree of phonetic similarity given the common element ‘regis’. It based the conceptual similarity on the fact that the two signs shared the concept of the element ‘regis’ for that segment of the relevant public that understood the Latin meaning (‘of the King’) of that common word, with the heraldic devices reinforcing the semantic connotation of the word, whilst the elements ‘park’ and ‘st.’ did not make out proof of a relevant conceptual distinction, as their distinctiveness was relatively weak.

72 In challenging that analysis, Staywell claims, in essence, that the elements ‘st.’ and ‘regis’ in the earlier European Union figurative mark are two distinct elements the distinctiveness of which could not be set off against each other. In its submission, the Board of Appeal was mistaken to underestimate the importance of the fact that the word ‘regis’ is part of the name ‘st. regis’, a single term and not two separate elements the first of which may be detached. Moreover, according to Staywell, the word ‘regis’ has, at most, an average distinctive character because, apart from the fact that it is a surname or first name, it is commonly used as part of a place name in the United Kingdom, including in the names of well-known seaside resorts such as Bognor Regis or Lyme Regis, familiar to British residents and tourists, an argument which cannot be rejected by mere reference to an ignorance of Latin on the part of the relevant public. In addition, by failing to take account of the use of the word ‘regis’ as a suffix used in numerous English place names, the Board of Appeal carried out a mistaken conceptual analysis and overestimated the degree of similarity between the signs. Finally, according to Staywell, the Board of Appeal failed to take sufficient account of the differences between the figurative elements of the trade marks at issue and could not consider them to be insignificant by qualifying them as being relatively ordinary and perceived as having a decorative function.

73 In that regard, as observed in paragraph 32 of the contested decision, without being disputed by the parties, the marks to be compared are figurative marks in black and white, made up of one word in common, ‘regis’, preceded by another word element and each have a heraldic type of symbol or an insignia.

74 First of all, it must be examined whether, under the case-law referred to in paragraphs 68 to 70 above, the Board of Appeal was correct in finding that the term ‘regis’ was the most distinctive element in the two marks.

75 The mark sought is made up of the words ‘park’ and ‘regis’ preceded by a symbol made up of leaves which might be perceived as a crown or other decorative element resembling an insignia. Contrary to Staywell’s submission, the size or placement of the figurative element at issue is not decisive since, even if it is placed before the word element, its size is reduced in relation to length of the word. The Board of Appeal was therefore correct in finding, in paragraph 35 of the contested decision, that that figurative element had a decorative function which will not divert the consumer’s attention away from the word element, also since where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (judgment of 18 September 2012 in BÜRGER, T-460/11, not published, EU:T:2012:432, paragraph 35).

76 As stated in paragraph 37 of the contested decision, within the word element of the mark sought, the element ‘park’ will be perceived as highly evocative and even descriptive of the services at issue, since it is used extensively in names for hotels and real estate properties in general as referring in particular to the presence of large gardens or ornamental grounds. By contrast, the element ‘regis’ will either be perceived as having no meaning for the relevant public or, for that segment of the relevant public which recognises a reference to the Latin term meaning ‘of the King’, the idea of a place linked to royalty. However, even for those consumers who do understand that element as being laudatory in relation to the services covered, it will remain the most distinctive element of the mark at issue, as rightly held by the Board of Appeal in paragraphs 36 to 38 of the contested decision.

77 The earlier European Union figurative mark is made up of a word element comprising two consonants ‘st’, accompanied by a dot after the letter ‘t’, followed by ‘regis’. Above that word element is a heraldic symbol resembling an insignia consisting of a shield containing a stylised letter ‘r’. Even if the applicant’s submission is accepted that part of the relevant public will recognise in that element a crown containing the monogrammed letters ‘st. r’, it will nevertheless be perceived as a figurative element evoking an insignia rather than a word element and, in any event, as having a decorative function illustrating the word element. Moreover, even if the figurative element at issue is placed above the word element, it is smaller. Therefore, the Board of Appeal did not err in finding, in paragraph 35 of the contested decision, that also within the earlier European Union figurative mark, the figurative element was not liable to divert the consumer’s attention away from the word element.

78 As stated in paragraph 37 of the contested decision, within the word element of the earlier European Union figurative mark, the element ‘st.’ will certainly be perceived internationally as referring to the notion of ‘saint’; it is also usually followed by a name and perceived as an attribute of that name. In so far as the term ‘regis’ thus refers to a name, the attribute ‘st.’ will carry lesser importance in the perception of the earlier mark than the name following it. Moreover, as correctly pointed out by the EUIPO, even consumers who do not understand that the term ‘regis’ is an English or French first name may think that the expression ‘st. regis’ is the name of a saint, which leads to the same conclusion.

79 That assessment is not called into question by Staywell’s argument to the effect that the element ‘st. regis’ will be perceived as a single term and not as two separate elements the distinctiveness of which may be weighed up. It does follow from the case-law that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (see, to that effect, judgment of 8 May 2014 in Bimbo v OHIM, C-591/12 P, EU:C:2014:305, paragraph 25 and the case-law cited). However, in the present case, the expression ‘st. regis’ does not convey a different message from that conveyed by the elements ‘st.’ and ‘regis’ considered separately. As rightly pointed out by the EUIPO, the fact that the expression ‘st. regis’ refers to a saint does not mean that the consumer will not make a link between that composite term and the name ‘regis’ by itself.

80 Similarly, the relatively greater distinctiveness attributed by the Board of Appeal to the term ‘regis’ is not weakened by Staywell’s argument to the effect that that term is commonly used for place names in the United Kingdom, including for seaside resorts also known outside the United Kingdom, with the result that, in its submission, it has, at most, average distinctiveness. Not only does that argument hold true for only part of the relevant public, the fact remains that in the composite word element ‘st. regis’, the latter element is more distinctive than the first, which is merely an attribute of the name that follows.

81 Turning to the visual comparison of the signs, as stated in paragraph 40 of the contested decision, the signs are similar in so far as their most distinctive word element is the same and they both contain a sort of heraldic image or insignia.

82 As for the phonetic comparison, it is not disputed that, as observed in paragraph 41 of the contested decision, the marks are similar to a certain extent in that they share the sounds of the identical letters of the term ‘regis’ in their word element.

83 As regards the conceptual comparison, it cannot be denied that there is a certain conceptual similarity between the signs at issue inasmuch as they share the element ‘regis’. If the relevant public construes that term as carrying a connotation of royalty given its literal meaning ‘of the King’ in Latin, the heraldic symbols present in the two marks reinforce the conceptual similarity, as rightly held in paragraph 42 of the contested decision. Since the elements ‘park’ and ‘st.’ are merely qualifiers of the element ‘regis’, which is more distinctive (see paragraphs 76 and 78 above), they do not make out proof of a decisive conceptual distinction.

84 In that regard, nor does Staywell’s argument that the consumer considers that the expression ‘st. regis’ of the earlier European Union figurative mark evokes a saint in particular, whereas the word element ‘park regis’ in the mark sought suggests a place name without the slightest reference to a saint or religious place, with the result that the marks differ conceptually, lead to the conclusion that the signs at issue are conceptually dissimilar. If the relevant public does not pick up on the reference to the Latin term evoked by the word ‘regis’, the word element in the mark sought ‘park regis’ will more readily be construed as referring to a park (in the usual sense of common public space comprising inter alia trees) called ‘regis’. As rightly pointed out by the EUIPO, the term ‘park’ is likely to be understood in that manner also by at least some non-English speaking consumers from among the relevant public. Even if the expression ‘st. regis’ is then understood as referring to a saint bearing the name ‘regis’, a consumer confronted with the two marks will at the very least find the same name ‘regis’.

85 It follows from the foregoing that the references in the contested decision to the dominant nature of the element ‘regis’ in the two marks does not automatically mean that the Board of Appeal found that it was a visually dominant element. As rightly pointed out by the EUIPO at the hearing, the Board of Appeal did not neglect the other elements making up the marks at issue, but merely found that the term ‘regis’ was the most distinctive element in the word elements of the two signs. It follows from paragraphs 39 to 43 of the contested decision that, contrary to Staywell’s assertions, the Board of Appeal did not omit from its analysis the less distinctive elements of the overall impression produced by the marks at issue, including the decorative elements, but examined the two marks as a whole in accordance with the case-law referred to in paragraph 69 above.

86 It also follows that, in paragraph 43 of the contested decision, the Board of Appeal found, correctly, that the mark sought and the earlier European Union figurative mark were, overall, similar.

87 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C-39/97, EU:C:1998:442, paragraph 17, and 14 December 2006 in VENADO with frame and Others, T-81/03, T-82/03 and T-103/03, EU:T:2006:397, paragraph 74).

88 In paragraphs 47 to 51 of the contested decision, the Board of Appeal found, in essence, in the global assessment of the likelihood of confusion, that the differences between the signs could not offset their overall similarity and that, given that the contested services in Classes 36 and 43 were identical or similar, there was a likelihood of confusion between the mark sought and the earlier European Union figurative mark, even assuming a higher than average level of attention on the part of the relevant public. In its view, in so far as the services concerned relate to the same category, both in the hotel trade and real estate sector, the marks at issue could be perceived as sub-brands serving to distinguish the ranges of services from the same provider. As regards the contested services in Class 35, the Board of Appeal found that one of the cumulative conditions referred to in Article 8(1)(b) of Regulation No 207/2009 was not met, with the result that there could be no likelihood of confusion.

89 In that regard, in the first place, as regards the services at issue in Classes 36 and 43, Staywell claims, in essence, that the conclusion that two trade marks could be perceived as sub-brands is understandable where the marks to be compared share a common element, depending on their degree of distinctiveness and dominance, and provided always that the average consumer would perceive that element to be severable from other elements of the marks at issue. However, in the present case, the conclusion that the marks could be perceived as sub-brands is ruled out by the prefix ‘st.’ in the earlier European Union figurative mark, which has the result that a single name ‘st. regis’ is created. In Staywell’s submission, it would not occur to the average consumer that ST. REGIS might be a sub-brand of the trade mark REGIS, since the expression ‘st. regis’ will be perceived as a single term, not two separate elements, the second of which may be detached and make up another principal mark.

90 In that context, it should be noted, first, that it is not disputed that the services in Classes 36 and 43 are identical or carry a high degree of similarity (paragraph 43 above), or that the mark sought and the earlier European Union figurative mark are, overall, similar (paragraph 86 above).

91 Given the interdependence of those factors and the fact, referred to by the Board of Appeal in paragraph 48 of the contested decision, that the average consumer only rarely has the chance to make a direct comparison between the marks at issue but must place his trust in the imperfect picture of them that he has kept in his mind (see, to that effect, judgment of 12 November 2008 in Limoncello della Costiera Amalfitana shaker, T-7/04, EU:T:2008:481, paragraph 30 and the case-law cited), the Board of Appeal was correct in finding that there was a likelihood of confusion between the marks at issue for the services in Classes 36 and 43, even with respect to that segment of the relevant public who may have a higher than average level of attention.

92 That conclusion is not called into question by Staywell’s argument contesting the analysis in paragraph 50 of the contested decision to the effect that the marks at issue could be regarded as sub-brands distinguishing the ranges of services from the same provider. At the hearing, whilst acknowledging that that was a subsidiary question, Staywell denied that it was well known that there were sub-brands in the sectors concerned, and argued that the examples referred to by Sheraton had been put forward belatedly.

93 As observed by the EUIPO and irrespective of the examples relied on by Sheraton at the hearing, it is undeniable that it is not unusual in the hotel and real estate markets for a principal mark to appear in various forms, depending on the type of service offered.

94 The parties agree, moreover, that the case-law usually considers in the clothing sector that the use of sub-brands relates to marks which share a common dominant element (see judgment of 30 April 2014 in Beyond Retro v OHIM - S&K Garments (BEYOND VINTAGE), T-170/12, not published, EU:T:2014:238, paragraph 78 and the case-law cited).

95 In the present case, it is apparent from the conclusion in paragraph 85 above that the Court considers that the common element ‘regis’ is the most distinctive of the elements making up the mark sought and the earlier European Union figurative mark, without their other elements being thereby rendered negligible. It is, however, not necessary to determine whether, in such circumstances, the case-law on the clothing sector is applicable by analogy since, in any event, it follows from the analysis of the interdependence of the factors to be taken into account in the global analysis of the likelihood of confusion, summarised in paragraphs 90 and 91 above, that the possibility cannot be ruled out that the relevant public may believe that the services at issue covered by the opposing marks originate from the same undertaking or economically linked undertakings within the meaning of the case-law referred to in paragraph 36 above.

96 In the second place, as regards the contested services in Class 35, given that the Court has concluded that there was no similarity between them and the services covered by the earlier European Union figurative mark (paragraph 65 above), the Board of Appeal was correct in finding, in accordance with the case-law referred to in paragraph 37 above, that there was no likelihood of confusion between the marks at issue because one of the conditions required under Article 8(1)(b) of Regulation No 207/2009 was not met.

97 In the third place, it follows, as stated in paragraph 52 of the contested decision, that it is superfluous to rule on a potential likelihood of confusion between the mark sought and the earlier European Union word mark since, given that it is not disputed that the proof of use lodged in respect of that mark related only to those services coming under the category of ‘temporary accommodation’ services covered by the earlier European Union figurative mark examined earlier, the comparison of the earlier European Union word mark does not lead to a more favourable conclusion for Sheraton than the one obtained on the basis of the earlier European Union figurative mark.

98 It follows from the foregoing that the single plea put forward in the action in Case T-510/14 and the second plea in the action in Case T-536/14 must be rejected, as must, consequently, both actions in their entirety.

99 Under Article 134(1) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

100 In Case T-510/14, since Staywell has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the EUIPO and Sheraton.

101 In Case T-536/14, since Sheraton has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the EUIPO and Staywell.

2. In Case T-510/14, orders Staywell Hospitality Group Pty Ltd to pay the costs;

3. In Case T-536/14, orders Sheraton International IP, LLC to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Staywell Hospitality Group v EUIPO - Sheraton International IP (PARK REGIS) (Judgment) [2016] EUECJ T-510/14 (02 June 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T51014.html Cite as: [2016] EUECJ T-510/14

Court of Justice of the European Communities (including Court of First Instance Decisions)