St. Regis v Park Regis: Sheraton v Staywell Hospitality
In this decision from the General Court, it was perhaps not surprising that the opposition by Sheraton (owner of the ST. REGIS brand) was successfully upheld by the General Court in respect of hotel services against the later filed application for PARK REGIS & Design.
Given the identical dominant element REGIS appearing in both marks, this part of the judgment seems somewhat uncontroversial.
What was surprising, however, was the decision by the Opposition Division that the services claimed in the application for the promotion of hotels, restaurants, bars, resorts and the business management of hotels (in class 35) would be regarded as wholly dissimilar to the supply of hotel services in class 43. This point, although contested by Sheraton both before the Board of Appeal and General Court was upheld on each occasion.
Sheraton had argued that there existed "a link of functional complementarity" between the two sets of services; however it was held that the two sets of services are dissimilar because "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."
Various cases are referred to in the decision; however, in our view, they are not necessarily close enough to support the conclusion that there is no similarity whatsoever. For example, "office functions" in class 35 can be differentiated from the operation of hotels in class 43 especially taking into consideration the literal meaning of the services claimed.
It is clear from the decision that any party seeking to successfully object to promotional services for hotels, restaurants (or indeed other service providing establishments) and the like in class 35 based upon class 43 rights will need to show persuasive evidence that the opponent offers such services rather than contracting them out to an unconnected third party
Case details at a glance
Jurisdiction: European Union
Decision level: General Court
Citation: Joined cases T-510/14 & T-536/14
Parties: Staywell Hospitality Group Pty Ltd v Sheraton International IP, LLC
Date: 02 June 2016
Full decision: http://dycip.com/registm