A fair point

31st Jan 2020

A one-letter difference was not sufficient to squash the opposition, reports Julie Canet. O/550/19, HH HOTELS (Opposition), UK IPO, 19th September 2019

Manhattan Loft Corporation Ltd (the Applicant) sought to obtain registration of the trade mark HH HOTELS for services relating to temporary accommodation and food and drink in class 43. The application was opposed by NH Hotel Group SA (the Opponent) on the basis of s5(2)(b) of the Trade Marks Act 1994. The Opponent relied on three earlier EU trade mark registrations, which are stylised versions of nH HOTELS, nH and nH HOTEL GROUP, all covering class 43.

Comparison

Applicants mark

The Hearing Officer (HO) assessed the Opponent’s nH HOTELS mark, which was closest in terms of similarity to the Applicant’s mark.

The Applicant had accepted that the services were identical and/or highly similar. Applying the Meric principle, the HO noted that both parties had cover for the provision of food and drink, temporary accommodation and hotel services. Information and advisory services relating to those were deemed highly similar.

It was considered that all services were aimed at the general public, which would have a reasonable level of attention regarding accommodation and a medium degree of care regarding food and drink.

When comparing the marks, the HO indicated that HOTELS was a descriptive element and because the letters “nH” are larger and more prominent, they dominate the overall impression of the Opponent’s mark. On the other hand, in the Applicant’s mark the two elements contribute roughly equally to the overall impression.

The marks were found overall to be similar to a medium degree.

Evidence

Opponent mark

The Opponent’s evidence, which was technically deficient due to an undated witness statement, was considered either irrelevant or insufficient to prove the enhanced distinctive character of the mark.

The Opponent had submitted, inter alia, TripAdvisor reviews, revenue figures and awards. The HO held that the turnover figures were unremarkable, the awards were industry awards and the TripAdvisor reviews were after the relevant date. Internet search results relating to hotel names had been attached to the Opponent’s written submissions in lieu of hearing instead of being filed as evidence. The HO ruled that this was unacceptable and this information was not taken into account.

Decision

The Applicant unsuccessfully referred to the stylisation and colour in the Opponent’s mark. The HO stated that the stylisation is unremarkable and reminded that notional and fair use covers both upper and lower case, and use in different colours.

In conclusion, the HO highlighted that the one-letter difference between the marks was not enough to mitigate the likelihood that the marks will be imperfectly recalled. The NH Hotel Group was successful in its opposition and the HH HOTELS application was refused.

This decision follows the Big Mac revocation case (EUIPO Cancellation No 14788C) in reminding that there will be close scrutiny of the nature and extent of evidence filed to demonstrate trade mark use. However, if here the HO did not need this evidence to decide there was a likelihood of confusion, the NH Hotel Group was not as lucky in its opposition against an NG HOTELS mark at EU level (EUIPO Opposition No 3059620, rejected).

Key points

An undated witness statement renders evidence technically deficient
Evidence should be filed as such and not attached to submissions in lieu of hearing
Notional and fair use covers use of word marks in both upper and lower case, and in different colours