November 2018. Starwood Hotels, part of the Marriot Group and the company behind the international W Hotel chain, is pulling out all the stops to protect its W logo. Which isn’t easy if your logo consists of a single letter on a non-distinctive black background. Consequently, it wins some cases and loses others.
W HOTEL (left) beats Wonderbox
On 25 October, Starwood managed to stop French company Wonderbox from registering a W logo linked to a cluster of stars to advertise hotel services. According to the Opposition Division of the European Trademark Office EUIPO, the two brands were very similar.
However, four days later Starwood failed in a bid to halt the registration of a logo by W white which also featured a square black background. EUIPO ruled that due to the inclusion of different device elements, the new logo had a different structure and layout to that of W Hotel. The W white logo was therefore given the go-ahead.
W-HOTEL (left) loses and W white gets its registration
What struck us in this case is that Starwood made some serious slip-ups in its opposition procedure. For instance, it failed to demonstrate that the W logo was a well-known trademark with a global reputation. One of the reasons why EUIPO refused to accept that the trademark enjoyed a reputation was because Starwood hadn’t submitted the English translations that were required to provide the necessary proof. Quite an omission for such a major international player