DECISION

of the Fifth Board of Appeal

of 13 January 2017

In Case R 1587/2016-5

 

ASSA ABLOY AB
P.O. Box 703 40 SE-107 23 Stockholm Sweden	Opponent / Appellant

represented by Kransell & Wennborg KB, P.O. Box 27 834, SE-115 93 Stockholm, Sweden

v

 

Invenit B.V.
Lange Broekstraat 3 4944 XH Raamsdonk The Netherlands	Applicant / Respondent

represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL, Breda, The Netherlands

 

APPEAL relating to Opposition Proceedings No B 2 470 683 (European Union trade mark application No 13 195 011)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

---

Decision

Summary of the facts

1. By an application filed on 22 August 2014, Invenit B.V. (‘the applicant’) sought to register the figurative mark

for the following list of goods and services:

Class 9 – 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; data processing equipment and computers; computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and people, whether or not using an electronic communication network and/or GPS system; apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; components for all the aforesaid goods, included in this class;

Class 35 – Advertising; business management; business administration; office functions; publication of advertising texts; dissemination of advertisements; advertising; advertising; business organisation, business economic and business administration consultancy; marketing services; market canvassing, market research and market analysis; business mediation in the purchase and sale, import and export, and wholesaling and retailing of 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, data processing equipment and computers, computer systems, software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system and parts for the aforesaid goods; arranging events for publicity and/or commercial purposes; compilation and management of data files; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet.

Class 38 – Telecommunications; transferring, distribution, transmission and sending of images, sound and data; providing access to and making available of electronic communication networks, whether or not wireless, websites, electronic databases, online communication facilities, chat rooms, social networks, search engines and forums; providing access to and providing of an online platform on the internet for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network; yelecommunications using GPS technology; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet;

Class 42 – Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computers and computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; design and development of apparatus and instruments for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, and parts therefor; ICT specialists; IT services; consultancy and information regarding the aforesaid services; Including the aforesaid services provided via electronic networks, including the Internet.

The applicant claimed the colour: Blue.

2. The application was published on 6 November 2014.
3. On 5 February 2015, ASSA ABLOY AB (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods and services.
4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
5. The opposition was based, amongst other, on the following earlier right:

• EUTM No 1 307 065 word mark (‘the earlier mark’)

 

CLIQ

 

filed on 13 September 1999 and registered on 30 October 2000 for the following goods:

Class 6 – Locks and keys therefor; lock cylinders, parts for all the aforesaid goods;

Class 9 – Electric, electronic and electromechanical locks and lock cylinders, electronic keys; units for programming said locks, cylinders and keys; parts for all the aforesaid goods; software for use with the aforesaid goods.

6. On 30 July 2015, the applicant requested the opponent to provide proof of use of all its trade marks for all the goods and services on which the opposition was based. The time-limit given by the Office to do so was the 13 December 2015.  On 11 December 2015; i.e. within the time-limit, the opponent filed the following proof of use:

• Annex 1: Selection of invoices of sales in Germany dated 25 March 2014, 16 October 2014, 15 October 2013, 29 October 2012, 15 July 2011,    19 December 2013, 6 March 2014 and 28 February 2014.
  Said invoices refer to the sale of the CLIQ products.
• Annex 2: Selection of articles concerning the CLIQ products; ‘Assa Abloy and HID integrate with global brands at Ifsec’ dated 15 May 2013, ‘Assa Abloy partners with Syntegro’ dated 22 August 2014, ‘Ifsec Security Awards 2011’ dated May 2011, ‘Cliq Remote wins Security Industry Award at IFSEC’ dated 14 June 2011; and ‘2011 Detektor International Awards winners announced’ dated 21 October 2011.
• Annex 3: Copies from the ASSA ABLOY AB Annual Report of 2012. As the CLIQ product is one of the most important product and trade mark of the ASSA ABLOY GROUP, reference is made thereto in the annual report. The copies are of the first page of the document and of the relevant pages 29, 42 and 43. It should be added that it also appears from the copies that the activities of the ASSA ABLOY GROUP is global and that the market for CLIQ refers to the EU.
• Annex 4: This annex refers to the Annual Report of 2013 and the relevant pages in addition to the first page of the documents are pages 35, 42 and 43.
• Annex 5: This annex refers to the Annual Report of 2014 and the relevant pages in addition to the first page of the documents are pages 4, 29, 35, 42, 43 and 46.
• Annex 6: A brochure showing the CLIQ product in more detail i.e. key, cylinder, terminal, updater and software. While the brochure does not contain a date of publication, see page 12 of the document, where reference is made to the Detektor International Award in 2011, which would indicate that the document was issued in the relevant period.
• Annex 7: A few screenshots showing the CLIQ product in the relevant period (for example 2009-2011, 6 October 2010, 17 May 2013, 26 June 2013, 3  December 2013, 28 July 2014, 28 October 2014, 8 October 2014,  12 July 2015). As for the page marked ‘A’, it refers to two YouTube presentations (one by the BBC) and the relevant web address is indicated on the copy. As for the page marked ‘B’, it shows various presentations of the mark and also indicates the number of views.
• Annex 8: Two brochures from Germany subsidiary Ikon; one from October 2010 ‘Manage your CLIQ locking system at any time and from anywhere’ and the other from January 2013 ‘Security, versatility and cost effectiveness in a single system’.

7. By decision of 4 July 2016 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The opposition is based on more than one earlier trade mark but the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier EUTM registration No 1 307 065 for the word mark CLIQ.
• The goods and services found to be identical or similar are directed both at the public at large and business customers with specific professional knowledge or expertise. The degree of attention will range from average to high. It will be high for the goods/services which are purchased only seldom, which can be expensive or which can have a significant impact on the running of the client’s business.
• The following contested goods and services were found either similar or identical with the earlier goods:

Class 9 – Magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment and computers; computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and people, whether or not using an electronic communication network and/or GPS system; apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; components for all the aforesaid goods, included in this class;

Class 35 – Wholesaling and retailing of data processing equipment and computers, computer systems, software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system and parts for the aforesaid goods; the aforesaid services also provided via electronic networks, such as the Internet.

Class 42 – Design and development of computers and computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; ICT specialists; IT services; consultancy and information regarding the aforesaid services; Including the aforesaid services provided via electronic networks, including the Internet.

• Visually, the signs coincide only in the sequence of letters ‘cli*’. However, they differ in the letter ‘*Q’ of the earlier trade mark and the letters ‘*c’, ‘key’, the figurative element depicting a sign for a network or waves, the stylisation and the blue colour of the contested sign. Moreover, the marks have a different structure because the earlier mark is composed of only one word consisting of four letters whereas the contested sign is a complex sign consisting of a figurative element depicting a sign for a network or waves and the stylised interconnected words ‘clic’ and ‘key’ written on two lines.
• 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 ‛CLI*’, present identically in both signs. The pronunciation of the letters ‘Q’ and ‘C’ (the last letters of the words ‘CLIQ’ and ‘CLIC’) can be either the same or similar or dissimilar, depending on the EU language used. The pronunciation differs in the sound of the letters ‛KEY’ of the contested mark, which have no counterparts in the earlier sign.
• Conceptually, a part of the relevant public, such as the English, French or Spanish-speaking one, will perceive the word ‘CLIQ’ in the context of the opponent’s goods (all revolving around locks) as an allusion to the sound made by a lock (see for example the entry ‘click’ in Collins English Dictionary: ‘a short light often metallic sound’).
• As the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
• The marks are visually similar only to a low degree and aurally similar to an average degree. The marks are conceptually similar to a low degree for a part of the relevant public and for the remaining part of the public, there is no conceptual similarity. The relevant goods and services are not normally bought aurally but rather visually which lowers the significance of the average degree of aural similarity and makes the visual aspects of the marks more important. Bearing in mind that the public normally perceives the marks as a whole and does not thoroughly analyse their individual elements, it is considered that there are sufficient differences between the signs to enable the public to safely distinguish between the marks.
• The opponent argues that the word ‘key’ in the contested mark refers to the goods of the earlier mark and that this contributes to the risk of confusion. The Opposition Division considers that this argument is not sufficient for a finding of likelihood of confusion in the present case. First of all, the word ‘key’ will be understood only by a part of the relevant EU public, namely the English-speaking part. Second, the public will not analyse the contested sign in order to look for possible references or associations with other marks and goods. Third, as mentioned in the conceptual comparison, the word ‘key’ has multiple meanings. In the context of the contested sign and the contested goods and services, the meaning of ‘key’ as ‘a metal instrument, usually of a specifically contoured shape, that is made to fit a lock and, when rotated, operates the lock’s mechanism’ is not likely to be perceived by the public in a clear and immediate way.
• Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
• Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
• The opponent has also based its opposition on the European Union trade mark registration No 2 222 453 for the figurative mark:

for the following goods:

Class 6 – Locks and keys therefor; lock cylinders, parts for all the aforesaid goods;

Class 9 – Electric, electronic and electromechanical locks and lock cylinders, electronic keys; units for programming said locks, cylinders and keys; parts for all the aforesaid goods; software for use with the aforesaid goods.

• This mark invoked by the opponent is less similar to the contested mark. This is because it contains an additional figurative element which is not present in the contested trade mark and the letters ‘CL’ and ‘IQ’ are depicted in two different shades of blue which separates them visually to a certain extent. The fact that this earlier right and the contested mark both use blue does not make them any more similar because blue is a common colour and anyway, there are the aforementioned additional differences that outweigh the partial coincidence in colour. Moreover, the earlier figurative mark covers the same scope of the goods.
• Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

8. On 1 September 2016, the opponent filed an appeal against the contested decision, requesting that the decision be partially set aside. The opponent limits its opposition to the goods and services that the Opposition Division has considered identical and similar to the goods on which the opposition is based. The statement of grounds of the appeal was also received on 1 September 2016. The opponent requests that the contested decision be annulled and the costs be borne by the applicant.
9. In its observations in reply received on 21 October 2016, the applicant requests that the appeal be dismissed, the EUTM application No 13 195 011 be registered for all its goods and services and that the cost be borne by the opponent.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

Visual similarity

• The pre-dominant element in the applicant’s figurative mark ‘CLIC KEY’ is the word ‘CLIC’ due to the central position of this word in the mark and the distinctive character of ‘CLIC’ in relation to the generic figurative element depicting a sign for network or waves and the basic English generic word ‘KEY’. The opponent’s mark ‘CLIQ’ is visually very similar to the pre-dominant sign ‘CLIC’ in the applicant’s mark ‘CLIC KEY’. It is the identical prefix ‘CLI-’ in the opposing marks that the relevant public pays attention to. The only differences between ‘CLIQ’ and ‘CLIC’ are the last letters ‘Q’ respectively ‘C’ in the opposing marks.

Aural similarity

• The opponent’s mark ‘CLIQ’ is aurally identical or very similar to the pre-dominant element ‘CLIC’ in the applicant’s mark ‘CLIC KEY’. In the pronunciation of ‘CLIC KEY’ the word ‘CLIC’ clearly stands out.
• The Opposition Division has made a wrong assumption that the relevant goods and services are rather bought visually. The relevant goods and services are not sold on the shelves of a supermarket. On the contrary the relevant public will normally aurally order the opponent’s goods from the specialized access control resellers. The relevant public may aurally order the products after having obtained information about the products in for instance marketing videos published on YouTube: (reference is made to Item 7 submitted as evidence of use during the opposition proceedings dated 11 December 2015).

Conceptual similarity

• The opposing marks ‘CLIQ’ and ‘CLIC KEY (logo)’, respectively, are conceptually similar for the relevant public.
• A large part of the relevant public in the EU will associate ‘CLIQ’ and ‘CLIC’, respectively, with the same conceptual meaning. The English, French or Spanish-speaking public can perceive ‘CLIQ’ respectively ‘CLIC’ as meaning or alluding to either the sound made by a lock or door, or an act of pressing and releasing a button on a mouse. However, it is not only the English, French or Spanish-speaking public that may perceive ‘CLIQ’ respectively ‘CLIC’ as the sound of made by a lock or door. In Swedish the word for the sound made by a lock is the similar word ‘KLICK’, which is very similar to the English word ‘CLICK’. The corresponding word in Dutch and Danish is ‘KLIK’. Additionally, the German word for ‘CLICK’ is KLICK’ (reference is made to Enclosure 1-4 filed with the statement of grounds on     1 September 2016).
• ‘KEY’ in the applicant’s mark ‘CLIC KEY’ is a very basic English word comparable with common English words such as ‘surf’ and ‘love’ that even people in Member States who do not speak English are familiar with. In that regard see EUIPO Guidelines for Examination in the Office, Part C, Opposition (reference is made to Enclosure 5 filed with the statement of grounds on 1 September 2016) and General Court’s judgement of 26/11/2008, T435/07, New Look, EU:T:2008:534, confirming that the general public in the Scandinavian countries, the Netherlands and Finland has a basic understanding of English. The relevant public (including the non-English-speaking public) will very likely foremost associate the word ‘KEY’ with a metal instrument, usually of a specifically contoured shape, that is made to fit a lock and, when rotated, operates the lock’s mechanism. The ground for this standpoint is that many people even from non-English-speaking countries in EU come across the word ‘KEY’ with the aforementioned conceptual meaning when staying in hotels in foreign countries and using keys or key cards to get into their hotel rooms.

Distinctiveness

• The opponent’s mark ‘CLIQ’ has a normal degree of distinctiveness
• Due to its distinctiveness, the visual, the aural and conceptual similarities and the identity and similarity of the opposing goods and services, the opposing marks are confusingly similar.
• It is clear that the relevant public will think that there is a connection between the opponent’s mark ‘CLIQ’ for e.g. software for use with locks and keys and the contested sign ‘CLIC KEY’ for e.g. software. When a consumer goes to a lock/key seller and ask for commercial information about ‘CLIQ’ key software or ‘CLIC KEY’ software, a clear confusion may arise. It is very likely that the relevant public will think that ‘KEY’ in the applicant’s mark ‘CLIC KEY’ means key for a lock. The risk of confusion also becomes clear when noting how the applicant uses the  mark ‘CLIC KEY’ on its products. One of the products under the mark ‘CLIC KEY’ resembles a key or a key tab, see Enclosure 6.  Evidence on how the opponent marks its keys with ‘CLIQ’, is to be found in Enclosure 7.
• There is a clear similarity between how the opposing marks are being used.
  The applicant writes in the product information published on its website https://clickey.eu/en/aDDlication/ that ‘The small clickey’s can be used on a key-ring’, see Enclosure 8. This means that there is an evident risk that a consumer may think that a key tab under ‘CLIC KEY’ and a key marked ‘CLIQ’ have the same commercial origin when they are placed on the same key ring. Thus, there is a likelihood of confusion on the part of the public. (Enclosure 6, 7 and 8 were filed with the statement of grounds on 1 September 2016).
• Taking the above grounds of appeal into consideration the Board of Appeal is requested to reject the opposed application for the contested goods and services and that the applicant bears the costs.

11. The arguments raised in reply to the appeal may be summarised as follows:

Visual similarity

• The signs are visually similar to a low degree, since they only share the characters ‘CLI.’ The differences between the respective signs with regard to the placing of the respective word elements, the different figurative elements, the number of characters, the differences in colour and the missing of the character ‘Q’ in the contested application cannot be considered visually similar to the trade marks of the opponent.

Aural similarity

• The element ‘CLIQ’ in the trade marks of the opponent is pronounced in one syllable. The element ‘KEY’ in the contested sign has no counterpart in the opponent’s trade marks.
• As a result of the different number of syllables and a clear difference with regard to pronunciation of the last syllable the respective signs cannot be considered similar from phonetic point of view.

Conceptual similarity

• The signs are similar to a low degree for a part of the relevant public. For the remaining part the signs are not conceptually similar.
• The opponent has intentionally chosen for a distinctive spelling by replacing the ‘CK’ at the end of ‘CLICK’ with a ‘Q’. The applicant is of the opinion that the alternative spelling chosen by the opponent should not broaden the scope of protection of its trade marks to all variations in the spelling of the word ‘CLICK’.

Distinctiveness

• The degree of distinctiveness of the trade mark ‘CLIQ’ is normal. This should be taken into account when assessing the likelihood of confusion.
• The opponent argues that there is a similarity between how the respective signs are used and refers to the possibility to use the respective products in combination with a key ring. In this respect we note that there are numerous items which can be used in combination with a key ring. Common examples of such items are USB-sticks, toys, compasses, key cords and flash lights. The fact that these items can be used in combination with a key-ring, is by no means sufficient to assume a likelihood of confusion, since the nature, method of use and their end users are different.
• In relation to the goods and services covered by trade marks, the Court of Justice stated that ‘it should also be borne in mind that the level of attention of the average informed consumer is likely to vary according to the category of goods or services in question’ (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In this respect we draw attention to the fact that consumers will be very attentive with regard to the goods and services of the contested application. The respective goods and services are offered by specialists in the field and are not consumed on a daily basis. These goods and services are generally expensive and must therefore comply with specific requirements. The level of attention of consumers with regard to these goods and services should therefore be considered very high, with a corresponding low likelihood of confusion.
• Both trade marks of the opponent are subject to proof of use in accordance with Article 42(2) and 42(3) EUTMR. On 11 December 2015, the opponent filed several items which was to constitute proof of use. On 5 February 2016, the applicant filed observations in response to these documents. The contested decision concluded that as the opposition was not well founded under Article 8(1) EUTMR, it was not necessary to examine the evidence of use filed by the opponent. In case the Board of Appeal upholds the appeal and remits the case to the Opposition Division, we kindly request that the evidence of used as filed by the opponent be assessed.
• Taking the above stated into account we conclude that the requirements of Article 8(1)(b) EUTMR have not been fulfilled. The contested decision was therefore well founded and the Opposition Division rightly rejected the opposition.

Reasons

12. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Scope of the appeal

13. In the present case, the contested decision was appealed in part, namely to the extent that the Opposition Division rejected the opposition with respect to those goods and services designated by the contested EUTM application which were   found to be identical with or similar to the goods covered by the earlier mark. To that extent, the appeal at hand applies to whether or not the Opposition Division correctly assessed the likelihood of confusion between the marks in accordance with Article 8(1)(b) EUTMR.

On proof of use

14. Pursuant to Article 42(2) and (3) EUTMR an applicant for a European Union trade mark may request proof that the earlier trade mark on which an opposition is based has been put to genuine use in the designated countries in connection with the goods or services in respect of which it is registered during the five-year period preceding the date of publication of the European Union trade mark application against which the opposition has been filed, provided that the earlier EUTM has, at that date, been registered for more than five years.
15. As follows both from the ninth recital to the Directive and from the tenth recital to the EUTMR, the reason behind the requirement is that there is no justification for protecting an earlier trade mark except where the mark has actually been used (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 38).
16. Under Rule 22(2) CTMIR, proof of use must cover the place, time, extent and nature of the use made of the earlier trade mark. These requirements are cumulative (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).
17. Genuine use of a trade mark in the sense of Article 42(2) EUTMR in conjunction
    with Article 15 EUTMR must be understood to denote real use that is not merely
    token, serving solely to preserve the rights conferred by the mark (fictitious use).
    Genuine use of the mark entails use of the mark on the relevant market and not
    just internal use by the undertaking concerned (see 11/03/2003, C-40/01,
    Minimax, EU:C:2003:145, § 36 et seq. and 27/09/2007, T-418/03, La Mer,
    EU:T:2007:299, § 54).
18. As regards the scale of the use made of the earlier trade mark, account must be
    taken of, inter alia, first, the commercial volume of all the acts of use and,
    second, the duration of the period over which the acts of use were carried out
    and the frequency of those acts (14/12/2006, T-392/04, Manu, EU:T:2006:400,
    § 82).
19. Even minimal use can be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 21).
20. In the present case, the opponent had to prove genuine use of the earlier EUTM from 6 November 2009 to 5 November 2014. The opponent filed evidence specified in paragraph 6 above, which included, inter alia, a selection of invoices, promotional articles, annual reports, product brochures and screenshots from online promotional tools.
21. In terms of place, given that the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 15(1) and 42(2) EUTMR). The invoices show sales of various keys, locks, cylinders, and related programming units to customers in various towns and cities in Germany (Düsseldorf, Günburg, Langenhagen, Mosbach, Munich and Oldenburg). In addition, the evidence includes various online articles aimed at the promotion of the earlier EUTM in the United Kingdom. For example, the opponent also presented an article which reports about the opponent’s presence at the IFSEC trade fair that took place in May 2013 in Birmingham, United Kingdom. According to the article the opponent demonstrated adaptable electric locks for use in all kinds of access control systems, stand-alone electro-mechanical master key system and secure web-based software which allows remote management of multiple electronic master-keyed sites. The opponent also presented articles showing that the opponent’s CLIQ product received a prize for ‘Access Control Product of the Year’ at the IFSEC Security Awards 2011 run in association with the British Security Industry Association and in the same year, a further prize was awarded to the CLIQ product at the Detektor International Award in Stockholm, Sweden. In the context of this, the Board is content to conclude that sales have taken place in the European Union during the relevant period, in keeping with the requirements of case-law (19/12/2012, C149/11, Leno, EU:C:2012:816; 30/01/2015, T-278/13, now, EU:T:2015:57).
22. In terms of time of use this need not have been made throughout the relevant five year period, but rather within it. Further, the provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52). The evidence submitted by the opponent demonstrates that the earlier EUTM has been used continuously throughout the relevant period. As shown in the invoice evidence, coupled with the materials demonstrating continuous promotion of the mark, the Board has no hesitation in concluding that the earlier right was used during the pertinent time period from 6 November 2009 to 5 November 2014 inclusive.
23. As regards extent of use, it is well established in case-law that use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). As a minimum, the opponent needs to show a serious attempt to acquire a commercial position in the relevant market. This has very clearly been achieved when the evidence is viewed as a whole. The total volume of sales demonstrated by each invoice varies between EUR 266.27 and EUR 291 358.78. The Board notes that the selection of evidence clearly indicates that the number of items sold is substantial. It must also be taken into account that some items such as programming and remote control units have relatively high costs per unit. Contrary to the arguments raised by the applicant the fact that the product branded under the earlier mark has been awarded various prizes at trade fairs and international competitions held in the European Union clearly shows the opponent’s effort to create or preserve an outlet for those goods.
24. The nature of use is concerned with the how the mark was used. This includes the consideration of whether the earlier right was used as a trade mark, whether the sign as used in the marketplace reflects that as registered and to what extent the use refers to the goods listed in the specifications. The opponent submitted several invoices, product catalogues and promotional material which contain reference to the earlier mark ʽCLIQʼ used in relation to the relevant goods. Inasmuch as the applicant argues that some of the material demonstrates that the word ʽCLIQʼ has not been used independently but together with other words such as ʽREMOTEʼ or ʽVERSOʼ there is little doubt that the earlier EUTM has been used as registered. Firstly, there are many instances where the word ʽCLIQʼ appears independently or only with descriptive indications or alphanumeric product codes (for example invoices of 29 October 2012, 15 October 2013, 25 March 2014, 16 October 2014, article about IFSEC Security Awards of May 2011, article about 2011 Detektor International Awards and product catalogue ‘CLIQ™ Remote’). The Board considers that even where the earlier mark has been used with additional elements, they did not have, due to their secondary position, size or descriptive nature, an impact on the earlier mark’s distinctiveness.
25. Inasmuch as the applicant argues that it is unclear whether the evidence concerns the goods as registered, the Board finds that the evidence such as invoices, product catalogues and articles show the use of the earlier sign in connection with all the goods covered by the earlier mark in Class 6 and 9. When it comes to goods covered in Class 6, the invoices of 15 July 2011 and 25 March 2014 show use of the earlier mark in connection with locks, lock cylinders, lock extensions and parts therefor. As regards, goods in Class 9, the invoice of 25 March 2014 and annual reports indicate use of the earlier mark in relation to electronic and electromechanical locks and lock cylinders, programming units, software for use with keys and locks. Such evidence is corroborated by the articles about trade fairs and awards which indicate that the opponent marketed adaptable electric locks for use in all kinds of access control systems, stand-alone electro-mechanical master key system and secure web-based software allowing remote management of multiple electronic master-keyed sites. Admittedly, a part of the goods is presented under various product names, but when paired with the product catalogues and annual reports it is apparent what goods were offered under the earlier mark.
26. The Board notes that the evidence of use provided by the opponent is not particularly exhaustive but when considered in its entirety it does nevertheless attain the minimum threshold necessary to establish genuine use of the earlier EUTM during the relevant period in the relevant territory.

Likelihood of confusion – Article 8(1)(b) EUTMR

27. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, furthermore, a likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17)
28. The reference point is whether the relevant public will perceive the goods or services concerned as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether the consumers consider it normal that the goods or services are marketed under the same trade mark, which normally implies that a large number of producers or providers are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).

Relevant public and territory

29. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (24/05/2011, T408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited). Furthermore, the relevant public is identified by means of the nature of the goods and services covered by the conflicting marks.
30. The goods and services in question are wide ranging and have varying specialised purposes. Given the nature of these goods and services, they are likely to be aimed at the public at large as well as professional consumers with specific professional knowledge or expertise. The degree of attention will be relatively high for the goods and services which are not bought on an everyday basis, which can be expensive or which can have a significant impact on the running of the business. The relevant territory is the European Union.

Comparison of the goods

31. The assessment of the similarity of the goods and services must take into account all relevant factors, which include their nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 37).
32. It is to be noted that when considering Article 28(7) EUTMR, goods and services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification (20/09/2012, T445/10, Eco-pack, EU:T:2012:454, § 19).
33. Goods or services which are complementary are those where there is a close
    connection between them, in the sense that one is indispensable or important for
    the use of the other in such a way that consumers may think that the
    responsibility for the production of those goods or provision of those services
    lies with the same undertaking. That implies that complementary goods or
    services can be used together, which presupposes that they are intended for the
    same public (12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48 and case-law
    cited therein).
34. The reference point is whether the relevant public will perceive the goods or
    services concerned as having a commercial origin (04/11/2003, T-85/02, Castillo,
    EU:T:2003:288, § 38) and whether consumers consider it normal that the goods
    or services are marketed under the same trade mark, which normally implies that
    a large number of producers or providers are the same (11/07/2007, T-150/04,
    Tosca Blu, EU:T:2007:214, § 37).
35. Following the limitation of the opposition made by the opponent in the statement of grounds, the goods and services to be compared in the present case are the following:

 

Earlier goods

Contested goods and services

Class 6 – Locks and keys therefor; lock cylinders, parts for all the aforesaid goods; Class 9 – Electric, electronic and electromechanical locks and lock cylinders, electronic keys; units for programming said locks, cylinders and keys; parts for all the aforesaid goods; software for use with the aforesaid goods.

Class 9 – Magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment and computers; computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and people, whether or not using an electronic communication network and/or GPS system; apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; components for all the aforesaid goods, included in this class; Class 35 – Wholesaling and retailing of data processing equipment and computers, computer systems, software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system and parts for the aforesaid goods; the aforesaid services also provided via electronic networks, such as the Internet. Class 42 – Design and development of computers and computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; ICT specialists; IT services; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet.

36. The contested decision carried out a detailed comparison of the goods and services in question, finding that they were partly identical or similar and to some extent dissimilar.  The opponent explicitly agrees with the conclusions of the Opposition Division when it comes to the identity or similarity of the goods and services concerned. The applicant in its observations has not disputed the comparison of the goods and services. The Board confirms that assessment and refers to its underlying reasoning, as stated in the contested decision.

Comparison of the signs

37. The global appreciation of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarities between the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
38. The signs to be compared are:

 

CLIQ
Earlier EUTM No 1 307 065	Contested sign

39. The earlier mark is a word mark consisting of the word ʽCLIQʼ. The contested sign is a figurative mark consisting of the stylised interconnected words ʽclicʼ and ʽkeyʼ, whereby the letters ʽiʼ and ʽkʼ interconnected, forming a continuous vertical line. The two verbal elements of the contested sign are depicted on two lines, in lower-case letters and are accompanied by the figurative element representing a sign for a wireless network connection.
40. Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘C-L-I’. This sequence of letters appears in the sole verbal element of the earlier sign and in the first verbal element of the contested sign. It should be borne in mind that consumers normally attach more importance to the beginnings of words (see, to that effect, 30/11/2011, T477/10, SE© Sports Equipment, EU:T:2011:707, § 54; 17/03/2004, T183/02 and T184/02, Mundicor, EU:T:2004:79, § 81). On the other hand, the signs differ in the final consonant of the first verbal element of the contested sign, second verbal element ʽkeyʼ and the graphic device depicting a sign for wireless network. The Board agrees with the finding of the contested decision that the signs are visually similar only to a low degree.
41. Aurally, regardless of the different pronunciation rules in different parts of the European Union, the pronunciation of the signs coincides in the sound produced on the basis of the first three letters ʽCLI*ʼ. The pronunciation of the letters ʽQʼ and ʽCʼ at the end of these words can be either identical, similar or dissimilar depending on the EU language used. However, the relevant consumers of the goods and services in question are likely to have at least some knowledge of English and it is therefore likely that they will pronounce the contested sign in accordance with the English pronunciation rules. It follows that for most consumers the earlier mark and the first element of the contested sign will produce identical aural impression. On the other hand, pronunciation of the conflicting signs differs in the sound of the letters ʽKEYʼ of the contested sign. Therefore, the signs are aurally similar to an average degree.
42. Conceptually, the relevant consumers will perceive the words ʽCLIQʼ and ʽclicʼ in the context of the relevant goods and services (all related to locks and electronic and IT equipment) as an allusion to the sound made by a lock or an act of pressing and releasing a button on a mouse. Such meaning will be attributed to these words not only by English-speaking consumers but, as the opponent rightly points out, also by consumers in many other Member States, including France, Germany, Spain, Scandinavian countries, the Czech Republic, Romania, Slovakia and the Netherlands. To that extent, the signs under comparison convey identical concepts. On the other hand the contested sign contains the very basic English word ʽkeyʼ and a symbol for wireless network which will be understood by the relevant public and have no counterpart in the earlier sign. Therefore, the signs are similar to an average degree.
43. Having regard to visual, phonetic and conceptual similarity between the signs, the Board finds that the signs are similar to an average degree.

Overall assessment of the likelihood of confusion

44. A likelihood of confusion on the part of the public must be assessed globally which implies some interdependence between the relevant factors, and in particular a similarity between the marks under comparison and the goods and/or services under comparison. Accordingly, a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the marks, and vice versa (29 September 1998, C39/97, Canon, EU:C:1998:442, § 17).
45. According to settled caselaw, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by them are marketed (03/07/2003, T129/01, Budmen, EU:T:2003:184, § 57, 06/10/2004, T117/03 – T119/03 & T171/03, NL, EU:T:2004:293, § 49 and 15/03/2012, T288/08, Zydus, EU:T:2012:124, § 64)
46. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29 September 1998, C39/97, Canon, EU:C:1998:442, § 18).
47. The opponent did not explicitly claim that its earlier mark has acquired reputation or enhanced distinctiveness through intensive use. Therefore, the assessment of distinctiveness of the earlier mark will rest on its inherent distinctiveness. As indicated above, the relevant public is likely to perceive the earlier sign in connection with the relevant goods and services as an allusion to sound made by a lock or an act of pressing and releasing a button on a mouse. It must be therefore considered that the earlier mark possesses a less than normal degree of distinctiveness.
48. The differences between the signs have been fully analysed previously, where
    visual, aural and conceptual similarities between them were found. It must be noted that those similarities result exclusively from similarity between the earlier mark ʽCLIQʼ which, as indicated above, possesses a less than normal degree of distinctiveness, and the first verbal element of the contested sign (ʽclicʼ). The question to be addressed therefore is whether the additional elements present in the contested sign are capable of serving to safely distinguish the conflicting signs. The Board considers that both additional elements, namely the word ʽkeyʼ and the widely used symbol for wireless network also convey information about characteristics of the goods and services which are all related to keys, locks, access systems and information technology. Consequently they cannot be considered as fully distinctive elements which would enable the relevant consumer to distinguish the contested mark from the earlier mark. It must also be borne in mind that according to the settled case-law a coincidence in the initial part of the sign is particularly relevant since consumers generally pay more attention to the beginnings of marks rather than the end so that it is likely to have a greater impact than the rest of the sign for which registration is sought (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64).
49. The applicant contests the finding of the Opposition Division that the relevant goods and services are bought visually. The Board considers that in the present case, the relevant consumers are faced both visually and phonetically with the marks designating the goods and services at issue. There is no factor which makes it possible to attribute a preponderant weight to the visual aspect or, conversely, to the phonetic aspect in the overall assessment of the likelihood of confusion. Certain goods, such as simple locks and standard cylinders in Class 6 or the contested data carriers in Class 9 may be placed on shelves in supermarkets, DIY or electronics stores where they can be examined by consumers; they may also be sold over the counter in specialised shops where the purchases are made with the assistance of a professional and involve a verbal reference to the marks concerned. In any event, even if one were to assume that the goods and services at issue are usually purchased without the name of the mark having to be pronounced, and the visual aspect is therefore of greater importance in the overall assessment of the likelihood of confusion, the finding that the conflicting marks are confusingly similar would still be fully justified because, as was stated in paragraph 40 above, the marks at issue indeed also display a certain degree of visual similarity albeit low.
50. Having regard to the identity or similarity between a part of the goods and services, the aural, visual and conceptual characteristics of the conflicting signs and consequent similar overall impressions, the Board finds that the consumers are likely to confuse the marks, including believing that the goods and services originate from the same  undertaking or from economically-related undertakings. This also holds true despite the fact that the level of attentiveness of the relevant public will be higher than average. Given the degree of similarity found between the marks and identity or similarity between the part of the goods and services concerned, the fact that the relevant public’s level of attention may be above average is insufficient to exclude any likelihood of confusion (see, to that effect, 16/12/2010, T-363/09, Resverol, EU:T:2010:538, § 33 and the case-law cited).
51. Insofar as the opponent has also based its opposition on the figurative EUTM     No 2 222 453, there is no need to adjudicate on this right since the outcome cannot be different in view of the fact that this mark covers the same scope of the goods as the earlier word EUTM No 1 307 065.

Conclusion

52. For these reasons, and contrary to the applicant’s assertions, the Board partially annuls the contested decision to the extent that it rejected the opposition with regard to the goods and services designated by the contested EUTM application which were found to be identical or similar to the goods covered by the earlier mark.

Costs

53. Since the appeal is allowed to the full extent and the applicant is the losing party, it must bear the fees and representation costs pursuant to Article 85(1) and (6) EUTMR. It follows that it must bear the appeal fee incurred by the opponent of EUR 720 and the representation costs of the opponent in the appeal proceedings of the amount of EUR 550.
54. Considering that the opposition succeeds only in part, each party shall be ordered to bear its own costs incurred in the opposition proceedings pursuant to Article 85(2) EUTMR.

---

Order

On those grounds,

THE BOARD

hereby:

1. Partially annuls the contested decision to the extent that it rejected the opposition for the following goods and services:

Class 9 – Magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment and computers; computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and people, whether or not using an electronic communication network and/or GPS system; apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; components for all the aforesaid goods, included in this class;

Class 35 – Wholesaling and retailing of data processing equipment and computers, computer systems, software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system and parts for the aforesaid goods; the aforesaid services also provided via electronic networks, such as the Internet;

Class 42 – Design and development of computers and computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; ICT specialists; IT services; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet.

2. Orders the applicant to bear the opponent’s costs and fees in the appeal
   proceedings, which are fixed at EUR 1270.
3. Orders each party to bear its own costs and fees in the opposition proceedings.

 

 

 

 

 

 

 

 

Signed   G. Humphreys

Signed   A. Kralik

Signed   V. Melgar

 

 

Registrar:   Signed   H. Dijkema