Case Law: Bellagio Ritz (Figurative) vs. PARIS RITZ HOTEL (Figurative)

”The earlier mark is the mark ‘RITZ’. The contested sign is figurative, however, its figurative features are almost imperceptible, since it consists of the verbal capitalised elements ‘Bellagio’ and ‘Ritz’ depicted in rather standard bold letters with a very limited (if any) trade mark relevance.

The element that the signs have in common, the term ‘RITZ’, is considered meaningless for the relevant (French) public and, therefore, inherently distinctive to a normal degree. Furthermore, and for the reasons already explained, ‘Bellagio’ is likely to be known, and therefore identified, by a vast majority of the relevant public as a famous touristic destination in Italy.

Even if the relevant services might not be directly related to this location, the relevant consumer is likely to consider that ‘Bellagio’ refers to the geographical place of provenance of the services, and it is as such weakly distinctive; while ‘RITZ’, endowed with a normal inherent distinctiveness, is the part of the contested sign that operates as an indicator of the commercial origin of those services.

The contested sign has no elements that could be considered clearly dominant (visually outstanding). Visually and aurally, the signs coincide in the verbal element ‘RITZ’ (and in its sound). This is the only element of the earlier mark and plays an independent and distinctive role in the contested sign, as it is clearly separated from the first word.

They differ in the remaining verbal element of the earlier mark, ‘BELLAGIO’ (and in its sound). Although this additional element of the contested sign is placed at the beginning of the sign, since it is a weak element, its relevance is limited. Finally, visually the rather standard typeface has also a limited (if any) trade mark significance. Consequently, the signs are considered, visually and aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the inherent semantic content conveyed by the marks. Whereas one of the marks is meaningless, the relevant public will perceive the (geographical) concept of ‘Bellagio’ in the other one. To that extent, the marks are conceptually not similar. However, this conceptual difference is of very limited impact in the overall comparison of signs, as it stems from a weak meaning.

The earlier mark is strongly reputed and the signs are visually and aurally similar to an above average degree while they are inherently conceptually dissimilar, but only due to an element with a weak distinctive character. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs.

Considering all the above, the opposition is also well founded under Article 8(5) EUTMR on the basis of the opponent’s French trade mark registration No 94 515 523 ‘RITZ’ (word mark). Therefore, the contested trade mark must also be rejected for all the remaining contested services.

Considering all the above, the opposition is also well founded and the contested trade mark must be rejected for all the contested services.”

EUIPO Case Law: OPPOSITION Nо. B 3167746