safe4u Germany | Decision 2603002

OPPOSITION No B 2 603 002

SAFE4U Security Of Sweden AB, Warfvingesväg 30, 112 51 Stockholm, Sweden  (opponent), represented by Noréns Patentbyrå Ab, Narvavägen 12, 115 22, Stockholm, Sweden (professional representative)

a g a i n s t

Safe4u Germany, Haidering 17, 65321 Heidenrod-Kemel, Germany (applicant), represented by Sascha Makki, Wilhelmstraße 34, 65183 Wiesbaden, Germany (professional representative).

On 26/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 603 002 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 970 587 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 970 587. The opposition is based on, inter alia, European Union trade mark registration No 9 361 536. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 361 536.

  1. The goods and services

The goods and services, inter alia, on which the opposition is based are the following:

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 45:         Security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

The contested goods and services are the following:

Class 9:         Alkaline accumulators; anode batteries; batteries; batteries, electric; lithium ion batteries; power packs [batteries]; nickel-cadmium storage batteries; solar batteries for domestic use; solar battery chargers; radio-frequency components; audio circuit boards; electronic circuit boards; electrical circuits; electronic chips; circuits [electric or electronic]; integrated electronic circuits; control circuits; programmable logic controllers; electricity mains apparatus; application software; computer software downloaded from the internet; closed circuit television apparatus; LCD monitors; light emitting diode displays; LCD [liquid crystal display]; closed circuit television cameras; video cameras adapted for monitoring purposes; information storage apparatus [electric or electronic]; distance sensors; active infra-red sensors; approximation detectors; fire detectors; flame detectors; fire sensors; on-off sensors; pressure sensors; pressure transmitters; ultrasonic wave type intruder sensors; electric smoke sensors; electric sensors; electro-optical sensors; electronic sensors; vibration detectors; impact sensors; infrared scanners; infrared sensors; infrared detection apparatus; passive infrared detectors; visual monitoring apparatus; safety monitoring apparatus [electric]; monitoring units [electric]; monitoring control apparatus [electric]; alarms; acoustic [sound] alarms; sound alarms, other than for vehicles; warning alarms [other than for vehicles]; alarm sensors; alarm signalling receivers; alarm signalling transmitters; alarm systems; security surveillance apparatus; theft prevention installations, electric; anti-theft alarm apparatus [other than for vehicles]; burglar alarms; anti-theft alarms [other than for vehicles]; intruder identification apparatus [other than for vehicles]; microwave type intruder sensors; intruder detecting apparatus [other than for vehicles]; electrical alarm instruments (anti-theft -) [other than for vehicles]; electric alarms for fire; electric alarms for smoke; electrical and electronic burglar alarms; remote controls for operating vehicle alarms; remote alarms [other than anti-theft for vehicles]; fire alarms; gas alarms; gas leak alarm systems; personal alarms; whistles [warning apparatus]; personal security alarms; smoke alarms; security alarms; safety alarms [other than for vehicles]; security alarm systems [other than for vehicles]; security cameras; security warning apparatus; warning indicating apparatus [other than for vehicles]; warning apparatus [other than for vehicles]; water leakage detection alarms; alarm central units.

Class 45:         Security consultancy; crime prevention consultancy services; advisory services in relation to safety; consultancy services relating to health and safety; alarm monitoring services; monitoring fire alarms; information services relating to safety; security services for the protection of property and individuals; security services for the protection of property; monitoring of burglar and security alarms; monitoring of security systems.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested alkaline accumulators; anode batteries; batteries; batteries, electric; lithium ion batteries; power packs [batteries]; nickel-cadmium storage batteries; solar batteries for domestic use; solar battery chargers are included in the broad category of the opponent’s apparatus and instruments for accumulating electricity. Therefore, they are identical.

The contested radio-frequency components; audio circuit boards; electronic circuit boards; electrical circuits; electronic chips; circuits [electric or electronic]; integrated electronic circuits; control circuits; programmable logic controllers; electricity mains apparatus  are included in the broad categories of, or overlap with, the opponent’s apparatus and instruments for conducting, transforming,  controlling electricity. Therefore, they are identical.

Application software; Computer software downloaded from the internet is similar to computers as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested closed circuit television apparatus; LCD monitors; light emitting diode displays; LCD [liquid crystal display]; closed circuit television cameras; video cameras adapted for monitoring purposes; visual monitoring apparatus; safety monitoring apparatus [electric]; monitoring units [electric]; monitoring control apparatus [electric]; security cameras are included in the broad categories of the opponent’s apparatus for transmission or reproduction of sound or images. Therefore, they are identical.

The contested information storage apparatus [electric or electronic] are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.

The contested distance sensors; active infra-red sensors; approximation detectors; fire detectors; flame detectors; fire sensors; on-off sensors; pressure sensors; pressure transmitters; ultrasonic wave type intruder sensors; electric smoke sensors; electric sensors; electro-optical sensors; electronic sensors; vibration detectors; impact sensors; infrared sensors; infrared scanners; infrared detection apparatus; passive infrared detectors; alarm sensors; microwave type intruder sensors are included in the broad category of the opponent’s checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested alarms; acoustic [sound] alarms; sound alarms, other than for vehicles; warning alarms [other than for vehicles]; alarm signalling receivers; alarm signalling transmitters; alarm systems; security surveillance apparatus; theft prevention installations, electric; anti-theft alarm apparatus [other than for vehicles]; burglar alarms; anti-theft alarms [other than for vehicles]; intruder identification apparatus [other than for vehicles]; intruder detecting apparatus [other than for vehicles]; electrical alarm instruments (anti-theft -) [other than for vehicles]; electric alarms for fire; electric alarms for smoke; electrical and electronic burglar alarms; remote controls for operating vehicle alarms; remote alarms [other than anti-theft for vehicles]; fire alarms; gas alarms; gas leak alarm systems; personal alarms; whistles [warning apparatus]; personal security alarms; smoke alarms; security alarms; safety alarms [other than for vehicles]; security alarm systems [other than for vehicles]; security warning apparatus; warning indicating apparatus [other than for vehicles]; warning apparatus [other than for vehicles]; water leakage detection alarms; alarm central units are included in the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.

Contested services in Class 45

The contested alarm monitoring services; monitoring fire alarms; security services for the protection of property and individuals; security services for the protection of property; monitoring of burglar and security alarms; monitoring of security systems are included in the broad category of, or overlap with, the opponent’s security services for the protection of property and individuals. Therefore, they are identical.

The contested security consultancy; crime prevention consultancy services; advisory services in relation to safety; consultancy services relating to health and safety; information services relating to safety are services closely related to the opponent’s security services for the protection of property and individual. They are complementary, have same origins, distribution channels and consumers. The services are similar. 

  1. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention varies from average to high, due to the special nature of some of the goods and services.

  1. The signs

SAFE4U SECURITY OF SWEDEN

http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=118194110&key=8c8b9f1f0a840803398a1cf1298bcefe

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the public which will not understand English, such as the Spanish, Estonian or Portuguese -speaking part of the relevant public.

The earlier mark is a word mark. It contains a distinctive word elements SAFE4U SECURITY OF SWEDEN which, as such, can not be attributed any specific meaning. The mark has no dominant elements.

The contested sign is a figurative mark. It contains distinctive word elements SAFE4U and GERMANY which, as such, can not be attributed any specific meaning, and which are placed on two lines against a black rectangular background and a horizontal white line. The mark also contains a device element depicting a hand.

In the contested mark the element GERMANY is less eye-catching than other elements due to it smaller size and placement than other elements which dominate in the sign.

Visually, the signs coincide in the distinctive element SAFE4U. However, they differ in remaining word elements, and also in the device element and stylisation of the contested mark. It is noted, however, that the earlier mark is a word mark, and therefore it is the word that is protected and not its written form.

Furthermore, when signs consist of both verbal and figurative components, as is the case with the contested mark, then in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The marks coincide in that the first word element of the earlier mark is also present in the contested mark, in a more eye catching position and plays an independent role in both signs.

Therefore, the signs are visually similar to average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the distinctive syllables SAFE, the pronunciation of the numeral 4, and the letter U , present in both signs. The pronunciation differs in the pronunciation of the elements SECURITY OF SWEDEN and GEMANY.

Therefore, the signs are aurally highly similar.

Conceptually, the meaning of the signs has been explained above. While the public in the relevant territory will perceive the hand image in the contested mark, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  1. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

  1. Global assessment, other arguments and conclusion

The goods and services have been found to be partially identical and  partially similar. The similarities and dissimilarities between the signs have been established.

The two marks are confusingly similar for the consumer aurally and visually due to the presence of SAFE4U elements in both marks, which are distinctive and play an independent role in the marks. As mentioned, the additional, differing device elements in the contested mark and the different word elements are perceived, but attributed less attention since the public will more easily refer to the signs in question by their verbal elements, placed in the beginning of the signs rather  than by describing the remaining  elements.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting identical and similar goods and services come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the non English-speaking public, such as the Spanish, Estonian or Portuguese -speaking part of the relevant public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 361 536. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right EUTM No 9 361 536 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Justyna GBYL

Erkki MÜNTER

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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