OPPOSITION No B 2 397 159

Assa Abloy Ab, P O Box 70340, 107 23 Stockholm, Sweden (opponent), represented by Cohausz & Florack Patent- Und Rechtsanwälte Partnerschaftsgesellschaft Mbb, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Hrid d.o.o., Milivoja Matoseca 8, Zagreb  10090, Croatia (holder).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 397 159 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration No 1 183 457 designating the European Union. The opposition is based on European Union trade mark registrations No 1 061 464 and No 11 270 527. The opponent invoked Article 8(1)(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.

1. The goods and services

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

EUTM No 1 061 464

 

Class 9:         Radio frequency identification devices; proximity tags, proximity tag readers and proximity tag writers for monitoring security access, identification, inventory or physical state.

EUTM No 11 270 527

Class 9:         Computer software and firmware that facilitates the identification and authentication of near field communication (NFC) tags; computer software and hardware for providing authentication and identification data for NFC tags; integrated circuit chips for use in smart cards, RFID cards, RFID tags, RFID key fobs, RFID labels, NFC tags, NFC labels, and NFC equipped devices, in particular mobile phones, smart phones and mobile tablets; computer application software for smart phones, tablet computers and other hand held communication devices in particular, software for authenticating, identifying, reading, writing, and exchanging of information onto NFC tags; computer software for integration of information logic and data between NFC tags and NFC capable devices; computer software for the issuance and management of digital certificates and digital keys used for authentication or identification of NFC tags; computer software for encrypting and authenticating data; computer software for encryption; computer software for use in the encryption and decryption of digital files; mobile device software for downloading and implementing access control functionality for identity verification and access or denial of access to digital data, physical premises or computer networks; physical access control systems and devices, in particular, smart cards, RFID cards, NFC enabled devices, smart card readers, RFID readers, NFC readers, system control panels and door hardware; logical access control systems and devices, in particular, smart cards, RFID cards, NFC enabled devices, smart card readers, RFID readers, NFC readers, system control panels; physical and logical access control systems and devices, in particular, smart cards, RFID cards, NFC enabled devices, smart card readers, RFID readers, NFC readers, system control panels and door hardware; encoded smart cards containing programming used for access control systems; electronic card readers; electronic card readers/enroller; electronic RFID card and NFC enabled device readers and controllers for controlling access to a premises; near field communication (NFC) technology-enabled readers; printers; color printers; identification card printers; bar code label printing machines; identification card manufacturing print consumables, in particular thermal print ribbons; encoded printed identification cards; encoded blank plastic identification cards; electronic ticket and label printers; calculators and electronic label applicators; electronic colour computer printers; electronic identification card printers; computer software and hardware in the field of controlling network functions and access in the field of network and server security; electronic access control system comprising computer software and magnetically encoded identification badges for tracking visitors and event management; optical memory cards; optical security media cards; optical security media technology applied in identity card applications; devices, parts and fittings for the aforesaid goods; wallet-size optical memory/optical security media cards used to contain microscopically laser-inscribed data and/or eye-visible information and images; encoding devices used to write data and eye-visible information and images to the optical security media; reading devices used to read data from the optical security media; radio frequency identification (RFID) systems and their individual components, namely, RFID credentials, readers and writers for communicating with the RFID credentials, and programmers for programming the RFID credentials, wherein the RFID credentials are in the form of cards, tags, or keys, and wherein the RFID credentials and the readers and writers communicate using RFID contactless or RFID proximity technology; magnetic stripe systems and their individual components, namely, magnetic stripe cards and readers for communicating with the magnetic stripe cards; Wiegand systems and their individual components, namely, Wiegand credentials and readers for communicating with the Wiegand credentials, wherein the Wiegand credentials are in the form of cards, tags or keys; RFID reader and writer modules for original equipment manufacturers (OEM's); contact smart chip modules; multiple technology-based credentials and readers and writers, which combine one or more RFID technologies with one or more technologies selected from magnetic stripe technology, Wiegand technology , contact smart chip technology, key pad technology, bar code technology, biometric technology, anti-counterfeiting technology, and photo identification technology; data routers for computer networks used in the fields of security and access control; software for issuing and managing RFID credentials; radio frequency identification devices; proximity tags, proximity tag readers and proximity tag writers for monitoring security access, identification, inventory or physical state; 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; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 16:         Brochures, magazines; printed publications; books; advertising material, namely, posters and transparencies; paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; stationery; instructional and teaching material (except apparatus); blank cards, in particular blank biodegradable plastic cards for receiving print material from a card printer; non-encoded printed identification cards; non-encoded blank plastic identification cards.

Class 35:         Advertising; business management; business administration; office functions; business marketing, sales promotion; advertising agency services, in particular, procurement of advertisements for others; business administration, in particular economic consulting for the economic sectors, business and business organizational consultancy; business organisation consultancy; personnel consultancy; rental of exhibition booths for business purposes; rental of advertising space; rental of office equipment; wholesale and retail store services including online store services featuring radio frequency identification (RFID) and / or near field communication (NFC)systems; storage and processing of data and of information by electronic, computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, television, microwave, laser beam or communications satellite means; electronic storage and retrieval of data and documentation; electronic storage and retrieval of data and documents.

Class 37:         Repair, installation services, installation, repair and maintenance of telecommunications apparatus and instruments; installation, repair and maintenance of electronic devices; repair and maintenance of radio frequency identification (RFID) and / or near field communication (NFC) systems and their individual components.

Class 38:         Telecommunications, facsimile, telex, telephone, telegram, message collection and transmission services; transmission of data and of information by electronic, computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, television, microwave, laser beam or communications satellite means; telecommunication services, in particular transmission of information for business or domestic purposes from a computer-stored data bank; broadcasting or transmission of radio and television programmes; on-line communications information services relating to telecommunications, radio frequency identification (RFID) and / or near field communication (NFC) systems and technology, Internet dial-up, xDSL, IP lease lines, e-mail, facsimile transmission, the world wide web, server hosting, broadcasting, communication by telephone, computer terminals or fibre optic networks, paging services, broadcasting and radio; information and advisory services relating to telecommunications and broadcasting; electronic data interchange services; hire, leasing and rental of telecommunications apparatus, installations, instruments, components and circuits, of electronic mail boxes, and of signalling apparatus; providing and leasing access time to computer databases and computer networks; electronic transmission of data, images and documents between and via computer terminals and networks; electronic mail services; fax transmission; providing multiuser access to computer networks.

Class 41:         Education and providing of training in the field of radio frequency identification (RFID) and/ or near field communication (NFC)technology; organisation and arranging of events and contests in the field of radio frequency identification (RFID) and/or near field communication (NFC)technology; education; providing of training; entertainment; sporting and cultural activities.

Class 42:         Providing temporary use of on-line non-downloadable software and applications for managing, locating, activating and revoking near field communication (NFC) tags, digital keys and identity data; customization of computer software; computer software development in the field of mobile applications; technical and customer support services, in particular, troubleshooting of computer software for use in issuance and management of digital certificates or encryption of authentication and identification data used in near field communication (NFC) tags, digital keys and identity data; development, design, and implementation services in the field of security authentication encryption and identification data for NFC tags, digital keys and identity data; scientific and technical analysis in the field of security, access, authorization, authentication encryption, and identification data and systems for NFC tags and NFC capable devices, in particular NFC enabled cell phones, smart phones and tablets; development, integration and operation of computer systems to support issuance and management of digital certificates for NFC tags and NFC capable devices, in particular NFC enabled cell phones, smart phones and tablets; creation and implementation of procedures and practices for issuance and management of digital certificates for NFC tags and NFC devices, in particular NFC enabled cell phones, smart phones and tablets; computer services, in particular, detection of NFC tags that include viruses, malware and other threats; design and implementation of software and technology solutions for the purposes of protecting against counterfeiting, tampering and diversion, and to ensure the integrity of NFC tags; issuance and validation of digital keys and digital certificates for use in NFC tags and NFC-enabled devices, in particular NFC enabled smart phones, smartphones and tablets; software as a service for provisioning and managing over-the-air mobile credential technology; providing custom graphics and personalization of for RFID portable credentials, in particular cards, tags, fobs, tokens and NFC enabled smart phones; providing security assurance and administration of digital keys and digital certificates in the field of NFC tags; issuance and management of digital keys and digital certificates for authentication or identification of NFC tags over the Internet, mobile device network and other computer network; digital key and digital certificate verification, authentication, issuance, distribution and management; data encryption services for identity representation data for others; designing for others, radio frequency identification (RFID) portable credential formats and related other RFID security data, in particular, creating custom credential formats and unique data identifiers used in cards, tags, fobs, tokens and NFC enabled smart phones and other mobile credential devices for use with secure physical access control systems and network security system applications; designing and providing for others security synchronization electronic data for use between authentication devices and credentials, in particular, cards, tags, fobs tokens and NFC enabled smart phones and other mobile credential devices to enable the secure protection and transport of credential data and other RFID security related information, in particular, data programming services to enable matching interoperability between physical access control and network security system authentication devices and system secure credentials, in particular, cards, tags, fobs tokens and NFC enabled smart phones and other mobile credential devices; data lifecycle management services for others, in particular, issuance, authentication and revocation of digital rights for physical and logical access control systems; digital signature authentication services for identity representation data for others, in particular, data encryption and data integrity; providing for others encrypted and digitally signed and authenticated identity representation data for use in electronic physical access control and logical access control stored value transactions, transactions involving secure identity, and transactions involving biometric data, in particular, issuance, and validation of digital certificates and access rights; issuance and validation of digital keys and digital certificates for use in NFC tags; providing security assurance and administration of digital keys and digital certificates in the field of NFC tags and NFC enabled smart phones; issuance and management of digital keys and digital certificates for authentication or identification of NFC tags and NFC-enabled devices including NFC enabled smart phones over the Internet, mobile device network and other computer network; digital key and digital certificate verification, authentication, issuance, distribution and management; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The contested goods and services are the following:

Class 7:         Machine tools; engines (other than for land vehicles); transmission couplings and belts (excluding those for land vehicles); pumps, pump sets; mechanical equipment used for and in nuclear engineering, turbines, pressurizers, turbo-compressors, rod drive mechanisms, as well as all replacement parts therefore, motorized robots, robots.

Class 9:         Scientific (other than medical), nautical and surveying apparatus and instruments, apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current, photographic, cinematographic, optical, weighing, measuring, signaling, monitoring (inspection), rescue (emergency) and teaching apparatus and instruments; apparatus for recording, transmitting or reproducing sound or images; magnetic and digital recording media, sound recording disks; optical compact disks, diskettes, calculating machines; equipment for data processing, computers, computer software including computer programs designed to be used with assistance and analysis software used in nuclear industry; expert system generators; cameras for monitoring and inspecting equipment in a nuclear power station.

Class 37:         Construction, repair and dismantling services rendered in the field of nuclear engineering; information relating to construction and repair in the field of nuclear engineering; nuclear maintenance, monitoring and inspection services, response services and maintenance or repair of nuclear power plant equipment.

Class 40:         All materials processing services rendered in the field of nuclear engineering; information about materials processing; services rendered during the manufacturing process of any product, other than a building; sawing, planning; cutting, polishing, metal coating; services consisting of preserving an object through transformation; document binding; tin-plating; air purification and regeneration.

Class 41:         Education services rendered in the field of nuclear engineering; educational institutions; publication of books and reviews.

Class 42:         Scientific and technological services and research and design relating thereto; engineering consultancy services; computer programming; development and design of fuzzy logic and fuzzy logic elements; rental of equipment and devices in the field of electronic and data processing; rental of computers and computer programs; rental of equipment and programs for data processing; design of databases; services of production of the electric and electronic equipment for third party; services of development and design of data processing systems and their elements or opto-electronic equipment for third party, technical services and consultancy in the field of data processing.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. 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 assumed to be identical are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention ranges from average to high, depending on the special technical nature of the goods and services.

3. The signs

HID
Earlier trade marks	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 earlier marks are word marks, they  are short marks, since they contain only three letters. It is noted, that the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The English speaking consumer might perceive the earlier marks as a past tense participle of the word ‘hide’, which in turn means ‘to put or keep oneself or an object in a secret place; conceal’ (Collins English Dictionary). The Danish speaking consumer might perceive the word HID as ‘here’. The marks have no meaning in other languages such as Spanish or French. As they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The contested sign is a figurative mark, containing a word element in a stylised red typeface and a blue zig-zag line above it. The word means ‘cape (geogr.), cliff’ in Croatian (http://www.englesko.hrvatski-rjecnik.com/default.asp?action=search&lang=en). It has no meaning in other languages.  As the mark is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. The mark has no less dominant elements.

Visually, the signs coincide in their first and last letters H_ ID. However, they differ in the second letter R, in their stylisation, typeface and the additional device element in the contested mark.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters H and ID, present in both signs. The pronunciation differs in the sound of the letters R of the contested mark, where, due to the immediately preceding letter H and following I, it forms a very strong, of rather complicated and notable sound HRI, which differs from that of the earlier marks pronunciation.

Therefore, the signs are similar to a low degree.

Conceptually, for the part of the public that the earlier signs have a meaning, as explained above, the signs are not conceptually similar, since the other sign will not be associated with any meaning.

For the part of the public that none of the signs has the conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier marks

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 marks are 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.

5. Global assessment, other arguments and conclusion

The goods and services have been assumed to be identical.  The similarities and dissimilarities between the marks have been established.

The similarities of the signs are not sufficient for a likelihood of confusion to exist, contrary to the arguments of the opponent.  The marks have different second letters I/R, different overall length, strikingly different sound when pronounced, the stylisation and device elements of the contested mark will not go unnoticed. For part of the public, the marks also differ in their conceptual aspects.

The public will concentrate on their overall appearance when confronted with the marks.

Usually, the average consumer does not proceed to analyse the various details of a sign, but rather perceives it as a whole, as mentioned previously. The marks as a whole give a different impression as a result of these clear differences listed above. These differences, considering the marks presently examined, are considered to be sufficient to counteract the fact that the goods and services have been assumed identical. The differences between the marks are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the imperfect recollection principle. Therefore, consumers are unlikely to assume that the goods/services labelled with the earlier marks and goods and services of the contested sign come from the same or economically-linked undertakings. The clearly perceptible differences between the signs would not be overlooked by the relevant customer, even if they were used for identical goods and services. In conclusion, the overall impression of the signs in the perception of the relevant public is that they are not similar.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘HID’ constitute a ‘family of marks’ or ‘marks in a series’ of its parent company. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a EU trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

The proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘HID’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence filed by the opponent, shows that some of the HID marks are registered, but there was no extensive use proven. The evidence comes either from the opponent’s own website, from Wikipedia or from sources outside the European Union. These eight trade marks contain the word HID placed in various positions in the composition of the mark, the features of the marks are not sufficiently uniform or constant to form a ‘family of marks’.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Erkki MÜNTER

Julie GOUTARD

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.