The trademark W UNIBAIL - RODAMCO - WESTFIELD was filed by UNIBAIL-RODAMCO SE, a corporation established under the laws of the French Republic (the "Applicant"). The application was published for oppositions on October 16, 2018, and received one opposition filed on January 14, 2019 by Starwood Hotels & Resorts Worldwide, LLC on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by D YOUNG & CO LLP and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued January 14, 2019
The application was filed in French, and French was also language of all opposition proceedings (English was selected as the second language).
Deletion of the representative of the trademark registration was recorded on November 17, 2019. Appointment and Replacement of representative of the trademark registration was recorded on November 20, 2019. Change of name and professional address of the trademark registration was recorded on September 6, 2023.
Goods And Services
The mark was filed in class 9 with following description of goods:
Data processing equipment, computer hardware, firmware and peripherals
Communications equipment
Video screens
Projection screens
Video recordings, compact discs, digital, sound and image recording media of all kinds
Apparatus for recording, transmission or reproduction of sound or image
Magnetic, digital and optical data carriers
Software
Computer application software for mobile phones, portable media players and handheld computers
Computer software for sending digital photographs, videos, images and text to others via the global computer network
Computer software for the collection, editing, organisation, modification, bookmarking, transmission, storage and sharing of data and information
Computer application software for use in advertising and marketing
Computer software platforms, programming interfaces (APIs), software and software development kits (SDKs) for use in creating software applications
Computer software for creating indices of information, sites and other resources available on computer networks
Software applications for use in connection with mobile phones, portable media players, and other handheld computers or communications devices
Mobile telephones, pagers and personal communications devices
Computer databases
Downloadable information, code, text, software and other media content or multimedia content
Magnetic cards for commercial and/or financial purposes, chip cards or smart cards
Magnetic gift cards or smart cards (integrated circuit cards) to be purchased and offered as a gift to others and enable them to make purchases within the credit limit or under conditions stored in the cards
Magnetic cards for payment, electronic funds transfer and financial transactions
Magnetic loyalty cards.
The mark was filed in class 16 with following description of goods:
Printed matter
Printed matter
Pamphlets
Journals
Periodicals
Books
Magazines [periodicals]
Posters
Stickers [stationery]
Agendas
Notepads
Newspapers
Catalogues
Guides and maps
Informational letters
Calendars
Prospectuses
Publications
File cards
Cards
Paper
Cardboard
Photographs
Drawings
Graphic reproductions
Plastic materials for packaging (not included in other classes) namely bags, sachets, films and sheets
Wrapping papers
Bags (envelopes, pouches), of paper or plastics, for packaging
Gift wrap paper
Signboards of paper or cardboard
Vouchers (printed)
Printed vouchers to be exchanged for goods or services
Printed vouchers to be used for the purchase of goods or services
Printed discount coupons
Printed gift certificates for payment
Printed gift cards for payment
Printed promotional cards
Loyalty cards (printed)
Printed subscription cards
Tickets
Payment cards without magnetic codes of plastic or of cardboard
Boxes of cardboard as presentation boxes
Gift vouchers for commercial or advertising purposes
Chequebooks and cheques.
The mark was filed in class 35 with following description of goods:
Business data analysis services
Systemisation and recording of data in computer databases
Computerized file management
Commercial monitoring and business assistance, That is: Tracking of users and advertising for others, for providing strategies
Know-how
Marketing guidelines
And for analysis
Comprehension and forecasting relating to market behaviour and trends
Providing shopping information
Economic and sales forecasting
Market research
Surveys and opinion polling
Auditing, creation and development of institutional, advertising and commercial communication strategies
Price comparison
Administrative management of shopping centres and shopping malls
Organisation of exhibitions, trade shows, trade fairs and all kinds of events for business or advertising purposes, and competitions for promotional purposes
Organisation of promotional activities to obtain customer loyalty
Organising promotional campaigns
Business management of cards, not for financial purposes, for encouraging customer loyalty
Sales activities and sales promotion for others
Marketing in the field of business
Public relations services
Business management and organization consultancy
Business management
Personnel recruitment
Advertising, business brokerage
Dissemination of advertising matter
Rental of advertising time and advertising space on all means of communication
Dissemination of advertising messages on all kinds of media
Publication of publicity texts and/or images
The bringing together, for business purposes, of customers and service providers, in particular in the context of shopping centres or shopping arcades
Arranging newspaper subscriptions for others
Bill-posting
Shop window dressing
Presentation and demonstration of goods on communication media, for retail purposes
The bringing together, for the benefit of others, of goods (excluding the transport thereof), relating to the fields of beauty
Care and hygiene for humans and animals
Perfumery and cosmetics
Clothing and fashion accessories
Textiles
Haberdashery
Leatherware
Jewellery
Clock and watch-making
Optical goods
Interior and exterior design
Furniture
Dinnerware
Household linen
Fitting out and equipping the home (interior and exterior)
Gardening
DIY
Tools
Entertainment and leisure
Sport and games
Travel
Photography
Cinema
The press and publishing
Music
Stationery
Household electrical goods
Audiovisuals
Telecommunications
Telephones, including mobile telephones, and computers, enabling customers to view and purchase those goods by means of all kinds, in particular in retail outlets, in shopping centres or in department stores, from general mail-order goods catalogues, or on websites, via television or via any other form of electronic telecommunications media
Providing of sweet and confectionery dispensers, disposable napkins for children
Providing of advertising information relating to social events and social networking.
The mark was filed in class 36 with following description of goods:
Insurance underwriting
Real estate affairs
Financial and monetary affairs and banking
Financial management of all kinds of facilities
Hire-purchase financings, guarantees
Management, marketing and rental of real estate
Rental of real estate
Real-estate valuations
Design and management of real estate programmes
Financial consultancy
Financial evaluation (banking, real estate)
Mutual funds or capital investments, capital investments, financial sponsorship, lending against security
Arranging of credit
Real estate brokerage
Rental of offices (real estate), premises for commercial purposes and conference centres and exhibition centres and adjoining premises
Management of apartment houses, business premises, conference centres and exhibition centres and adjoining premises
Rent collection
Debt collection agency services
Factoring
Credit bureaux, foreign exchange bureaux
Financing services
Banking
Real estate agencies (real estate brokerage and leasing of businesses and apartment buildings)
Real estate appraisal
Issuing of travellers' cheques and letters of credit
Electronic payments services
Bank, credit, debit and payment cards and other cards or cheques providing financial benefits in the form of discounts, bonus or point awards in proportion to the amounts of purchases made
Arranging charitable fundraising
Financial services provided to loyalty card holders, Except loyalty cards in the hotel and restaurant sector
Financial information in the field of exhibitions and in particular relating to organisation of exhibitions
Issuing, exchanging and providing of coupons, service vouchers, travellers' cheques, discount cards, gift cards, gift tokens, gift vouchers, and loyalty cards (financial services), Except loyalty cards in the hotel and restaurant sector
Loyalty cards (except for advertising purposes) enabling the accrual of benefits, Except loyalty cards in the hotel and restaurant sector.
The mark was filed in class 37 with following description of goods:
Construction of permanent buildings, buildings, premises for commercial purposes and shopping centres
Building construction supervision
Demolition of buildings, building construction, restoration, namely cleaning or rebuilding of all or parts of buildings, real estate complexes and car parks, including commercial premises and shopping centres, restructuring, renovation and maintenance of real estate, real estate complexes and car parks, including commercial premises and shopping centres
Construction information
Information relating to the repair of premises for commercial purposes and shopping centres
Real estate development and siting of offices and commercial premises, including shopping centres and shopping arcades, namely development (construction) of real estate projects
Fabric laundry
Cleaning, retouching and maintenance of clothing and articles of leather of all kinds
Shoe repair, shoe making, leather care, maintenance and repair of clocks and watches
Fur care, cleaning and repair
Quick cleaning and ironing of clothing
Dry cleaning and chemical cleaning of textiles and clothing
Ironing of all kinds of textiles, canvas, cloth, fabrics and clothing
Repair of umbrellas, sunshades and parasols
Suitcase repair.
The mark was filed in class 38 with following description of goods:
Computer-aided transmission of gift vouchers, vouchers to be used for the purchase of goods or services, vouchers to be exchanged for goods or services, discount coupons, gift certificates, gift cards for payment, promotional codes, promotional cards, loyalty cards, subscription cards, tickets, debit and credit cards, and payment cards
Transmission and dissemination of data, logos, ringtones, games, messages, photographs, news items, still and/or moving images, films, video, audio, songs, music, text, computer software and multimedia programs, in particular via global communications networks (including the internet) or private or restricted-access networks (including intranets or extranets)
Transmission and dissemination of gift vouchers
Providing of online access to websites in particular offering customers of a supermarket or shopping centre online viewing of customer accounts and loyalty points balances, enabling sending of correspondence, information, personalised offers and promotions
Telecommunications enabling website visitors to be geographically located, in order to inform them of the closest points of sale offering the goods and services sought
Communication by computer terminals
Audiovisual communication, namely communication via sound and/or image-based techniques
Communications by telegrams, radio, telephone and televisual
Transmission and dissemination of information, images and sound via telematic, audiovisual, telephone and electronic means
In particular via global telecommunications networks (the internet) or private or restricted access networks (intranets)
Providing telecommunication channels for teleshopping services
Providing of call stations for taxis, computer, electronic and telematic messaging
Electronic mail
Dissemination (transmission) of advertisements, including via the Internet
Providing Internet chatrooms, Online transmission of information relating to creating a social network and establishing a virtual community of Internet users
Communications between computer terminals
Transmission of information accessible by access code to computerised or data transmission databases and computer database servers
Transmission and dissemination of information on digital communications networks or by computer networks
Rental of access time to a computer system, to databases and to database servers, in particular for global communications networks (including the internet) or private or restricted-access networks (including intranets)
Download of electronic publications, data, information, images and sounds via a global computer network, by networked computers and via a computer site on communications networks
Transmission and dissemination of information on digital communications networks or by computer networks
Rental of access time to a computer system, to databases and to database servers, in particular for global communications networks (including the internet) or private or restricted-access networks (including intranets)
Download of electronic publications, data, information, images and sounds via a global computer network, by networked computers and via a computer site on communications networks.
The mark was filed in class 39 with following description of goods:
Transport
Arranging tours and excursions
Transportation information
Delivery of newspapers
Packaging and storage of goods, Surveillance
Luggage storage
Tourist offices (except for hotel reservation)
Travel arrangement, arranging of tours, sightseeing (tourism)
Booking and reservation services for tours
Unloading, distribution and delivery of goods, parcels and luggage
Delivery of goods, Flower delivery
Escorting of tourists
Storage of commodities
Vehicle breakdown assistance [towing]
Rental of garages and parking spaces
Chauffeur services
Vehicle hire
Taxi booking services
Escorting of travellers
Car parking
Providing of charging stations for electric cars
Organisation of meetings of individuals with a view to sharing means of transport and organising car sharing
Message delivery
Warehousing
Home delivery services
Delivery of goods
Packaging of goods and luggage
Packing of goods and luggage
Traffic information
Courier services (messages or merchandise)
Transport and moving of disabled persons
Packaging and home delivery of pre-cooked prepared food
Mobility aids for the elderly or disabled, namely transport
Escorting on trips, errands and for shopping
Information relating to the aforesaid services.
The mark was filed in class 41 with following description of goods:
Providing of training and education, including in the fields of logistics, marketing, customer service management, sales promotion, rewards, incentives, obtaining loyalty and development of clientele or personnel
Entertainment services
Information and consultancy in the field of entertainment and of providing leisure facilities, in particular information and consultancy for visitors or customers of shopping centres and shopping malls
Providing amusement arcade services
Gardens and amusement parks
Providing leisure facilities
Ticket agency services [entertainment]
Arranging and conducting of conferences, colloquiums, workshops, congresses, seminars
Organisation of lotteries and competitions (education or entertainment)
Film and videotape production, radio broadcasting, radio and television entertainment
Editing of video tapes, of radio and television programmes
Sporting and cultural activities
Education or entertainment information
Vocational retraining
Rental of motion pictures, providing recreation facilities
Library services
Rental of sound recordings
Hire of televisions
Rental of show scenery
Videotape editing
Photography
Game services provided on-line from a computer network
Gaming
Publication of electronic books and journals on-line
Electronic desktop publishing
Organization of exhibitions for cultural or educational purposes
Organisation of sports competitions
Organisation and production of shows (impresario services)
Planning (Party -) [entertainment]
Publication of books and texts (not including publicity texts)
Publication of books, guides, instruction manuals, catalogues, newsletters and explanatory leaflets, on media of all kinds, including electronic
Interpretation
Party planning (entertainment) and consultancy relating to entertainment
Providing of training in the form of personal guidance (coaching)
Providing of meeting, resting or entertainment areas in shopping centres
Providing of children's playgrounds
Providing of gaming rooms, sports equipment, infrastructures for recreational activities.
The mark was filed in class 42 with following description of goods:
Architectural services, Fitting-out of shopping centre spaces, namely construction drafting, technical project studies (design of the layout of shops, technical installations and entrances of shopping centres)
Information relating to fitting-out of shopping centre spaces, namely construction drafting
Inspection of shopping centres
Analysis of compliance with environmental standards for shopping centres, relating to environmental standards and relating to purchase optimisation, interior decoration
Consultancy in the field of architecture, including architecture for shopping centres
Consultancy in the field of construction, namely construction drafting
Urban planning and commercial town planning
Graphic design and development of communications media as visual aids for use in the aforesaid graphic design
Technical project studies relating to the construction, decoration, layout, fitting-out of any buildings and permanent or temporary structures
Research and development for others
Packaging design
Graphic art design
Industrial design
Industrial design styling
Engineering (surveying in the field of public works and civil engineering), technical studies
Scientific and technological services and research and design relating thereto
Industrial analysis and research services, technical consultancy in the field of public works, namely construction drafting
Civil engineering, rendered by engineers
Computer services, namely, hosting online web facilities for others for organising and conducting online meetings, gatherings and interactive discussions
Computer services, namely hosting customised webpages featuring user-defined information, personal profiles and information
Computer programming services, programming of computers and database programming
Engineering services for applications on large and medium-sized computer systems
Consultancy, expertise and technical consultancy in the field of computers, computer programming, and in the field of computing
Provision of an Internet platform for electronic commerce
Hosting of computerised online search and ordering for the wholesale and retail distribution of a wide range of goods, in particular consumer goods
Hosting of websites and computer data on a global or local computer network
Information in the field of data processing
Computer programming applied to monitoring and processing of information, survey and study techniques
Analysis of statistics, studies and surveys
Surveying, professional consultancy and construction drafting, non-business, namely consultancy and auditing in the fields of computer system installation and creation and development of computer programmes, computerised sites
Design, programming, installation, management and hosting of computerised sites for computerised communications networks
Technical project studies, engineering
Research and development of new products for others
Quality control
Material testing
Design and development of computer hardware and software, analysis of computer systems
Computer system design
Creating and maintaining web sites for others
Technical project studies relating to commercial and leisure equipment, Building construction.
The mark was filed in class 44 with following description of goods:
Medical and veterinary services, Hygienic and beauty care for human beings or animals
Medical services
Providing of sanitary and toilet installations
Providing of defibrillators
Beauty and hairdressing salons
Massage
Image consultancy, namely make-up, hairdressing and dietetic consultancy and consultancy relating to care and aesthetics
Opticians' services
Pet grooming
Personal image consultancy, namely consultancy relating to makeup
Sanitary, beauty, make-up, cosmetic, hairdressing and aesthetic care consultancy
Consultancy and analysis in relation to face shape and silhouette
Nutritional consultancy.
The mark was filed in class 45 with following description of goods:
Lost property return, Commercial intermediation services
Shopping assistants and personal shoppers, for others, namely personal shopper services (clothing consultancy and personal shoppers, for others)
Child sitting, Baby-sitting, Child care
Personal body guarding, Body guarding
All of the aforesaid services being accessible via mobile telephones or smartphones, social networking via the internet
Social introduction, networking and dating services, namely online social networking
Licensing of technology, source code, computer software and other intellectual property
Providing of places of worship
Consultancy and analysis relating to clothing style
Escorting for shopping, namely personal shoppers (clothing consultancy and personal shoppers, for others).