OPPOSITION No B 2 724 717

Multicom Security AB, Telefonvägen 30, 126 26 Hägersten, Sweden (opponent), represented by Awapatent AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative)

a g a i n s t

Matica Technologies, Theresienhöhe 30, 80339 München, Germany (applicant), represented by DLA Piper Rudnick Gray Cary Uk LLP, Westhafenplatz 1, 60327 Frankfurt am Main, Germany (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 717 is partially upheld, namely for the following contested goods and services:

Class 9:                Recorded content; information technology and audiovisual equipment; safety, security, protection and signalling devices; measuring, detecting and monitoring instruments, indicators and controllers; apparatus, instruments and cables for electricity; card reading equipment; encoded cards; read only memory [rom] cards; electronic card readers; USB card readers; printed cards [encoded]; printed cards [magnetic]; chipcards; smart cards; cards bearing electronically recorded data; encoded integrated circuit cards; electronic cards for processing images; card operated electronic locks; cards encoded with security features for identification purposes; cards encoded to access computer software; augmented reality software for creating maps; software for the operational management of portable magnetic and electronic cards.

Class 38:        Computer communication and Internet access.

Class 42:        IT services; design services; testing, authentication and quality control; science and technology services.

2.        European Union trade mark application No 14 946 164 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 946 164. The opposition is based on, inter alia, European Union trade mark registration No 13 728 051. 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.

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 13 728 051.

1. The goods and services

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

Class 9:         Alarm systems, -apparatus, -instruments and -equipment; alarm transmitters and receivers; apparatus and instruments for measuring, signaling, checking (supervision) and for alarm generating; electronic control and warning systems; apparatus for recording, transmission and reproduction of sound and images; parts and fittings for the aforesaid goods, included in class 9; antennas, batteries, thermometers, detectors and coupling devices for antenna cables for alarm transmitters; software for alarm systems.

Class 37:         Installation, repair and maintenance of alarm apparatus, -instruments and -equipment.

Class 38:         Computer and telecommunication services; mobile-based alarm transmission from alarm systems, elevators and technical equipment of alarm- and fire stations.

Class 42:         Computerized storage and generation of signals and data interchange in computer and telecommunication systems.

Class 45:         Alarm and security services; monitoring alarms including elevator-, theft-, and burglary alarm systems and equipment.

The contested goods and services are the following:

Class 9:        Recorded content; information technology and audiovisual equipment; safety, security, protection and signalling devices; measuring, detecting and monitoring instruments, indicators and controllers; apparatus, instruments and cables for electricity; card reading equipment; encoded cards; read only memory [rom] cards; electronic card readers; USB card readers; printed cards [encoded]; printed cards [magnetic]; encoded cards for use in point of sale transactions; chipcards; smart cards; cards bearing electronically recorded data; encoded integrated circuit cards; electronic cards for processing images; card operated electronic locks; encoded cards for use in relation to the electronic transfer of funds; cards encoded with security features for identification purposes; cards encoded to access computer software; encoded cards for use in relation to the electronic transfer of financial transactions; augmented reality software for creating maps; software for the operational management of portable magnetic and electronic cards; electronic and magnetic ID cards for use in connection with payment for services.

Class 38:        Computer communication and Internet access.

Class 42:        IT services; design services; testing, authentication and quality control; science and technology services.

        

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

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 encoded cards; printed cards [encoded]; printed cards [magnetic]; chipcards; smart cards; cards bearing electronically recorded data; encoded integrated circuit cards; electronic cards for processing images; cards encoded with security features for identification purposes; cards encoded to access computer software all include cards that can be used as equipment for alarm systems, e.g. cards to be used as a way of identifying one self. These contested goods therefore included in, or overlap with, the opponent’s alarm systems equipment. Therefore, the goods are considered identical.

The contested Information technology and audiovisual equipment includes, inter alia, monitors that can reproduce images, and these goods therefore includes, as broader categories, or overlap with, the opponent’s apparatus for recording, transmission and reproduction of sound and images. Since the Opposition Division cannot dissect ex officio the broader categories of the contested goods, they are considered identical to the opponent’s goods.

The contested signalling devices are included in, or overlapping with, the broader category of the opponent’s apparatus for signalling. Therefore, they are identical.

The contested measuring instruments and the opponent’s instruments for measuring are identical, despite the slightly different wording.

The contested safety, security, protection devices; detecting and monitoring instruments, indicators and controllers include as broader categories, or overlap with, the opponent’s alarm systems, -apparatus, -instruments and -equipment; alarm transmitters and receivers. Since the Opposition Division cannot dissect ex officio the broader categories of the contested goods, they are considered identical to the opponent’s goods.

The contested card reading equipment; electronic card readers; USB card readers are included in the broad categories of, or overlap with, the opponent’s apparatus for recording, transmission and reproduction of images. Therefore, they are identical.

The contested card operated electronic locks are included in the broad categories of, or overlap with, the opponent’s alarm systems, -apparatus, -instruments and -equipment. Therefore, they are identical.

The contested software for the operational management of portable magnetic and electronic cards is included in the broad category of, or overlap with, the opponent’s software for alarm systems as electronic cards can be part of an alarm system. Therefore, they are identical.

The contested recorded content includes, inter alia, recorded music and it therefore coincide in producer, relevant public and distribution channels with the opponent’s apparatus for recording, transmission and reproduction of sound, as these goods include, inter alia music players. Therefore, the goods are also complementary and are considered similar to a high degree.  

The contested apparatus, instruments and cables for electricity can all be for the purpose of conducting electricity. Therefore, they coincide in relevant public and distribution channels with the opponent’s apparatus for recording, transmission and reproduction of sound and images. Furthermore, these goods must be seen as complementary. Therefore, they are similar.

The contested augmented reality software for creating maps is, inter alia, software for increasing the functionality of the opponent’s apparatus for recording, transmission and reproduction of sound and images as these apparatus can be used to create maps. Therefore, they are both aimed at the same public and produced by the same or related undertakings. They are distributed through the same channels and use of the one is indispensable for use of the other. Consequently, they are considered to be similar.

The contested read only memory [rom] cards and the opponent’s software for alarm systems coincide in producer. Furthermore, the goods are also considered complementary. Therefore, they are similar to a low degree.

The contested encoded cards for use in point of sale transactions; encoded cards for use in relation to the electronic transfer of funds; encoded cards for use in relation to the electronic transfer of financial transactions; electronic and magnetic id cards for use in connection with payment for services are all for the purpose of financial transactions/affairs and therefore they do not share purpose with the opponent’s goods and services. Moreover, they do not have any other coinciding points with the opponent’s goods and services, as their nature and relevant consumer differs. Furthermore, they do not coincide in producer nor in distribution channels and they cannot be seen as complementary or in competition with any of the goods and services of the opponent. Therefore, they are dissimilar.

Contested services in Class 38

The contested computer communication and Internet access are included in the broader category of the opponent’s computer and telecommunication services. Therefore, they are identical.

Contested services in Class 42

The contested IT services and science and technology services includes, as  broader categories, or overlap with, the opponent’s computerized storage and generation of signals and data interchange in computer and telecommunication systems. Since the Opposition Division cannot dissect ex officio the broader categories of the contested services, they are considered identical to the opponent’s services.

The contested design services include, inter alia, computer software design services whilst the contested testing, authentication and quality control includes, inter alia, these services in the form of IT services. These contested services and the opponent’s software for alarm systems in Class 9 (which includes software for testing, authenticating and quality control) coincide in producer and relevant public and are furthermore complementary. Therefore, they are similar.

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 found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in IT and telecommunication fields.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

AddSecure	EDISECURE
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.

The common element ‘secure’ is meaningful in certain territories, for example, in those countries where English is understood, where it, inter alia, will indicate that a place is safe from harm or attack, that someone cannot enter or leave it or the feeling of being safe (Collins Dictionary). For this part of the public the common element will therefore be non-distinctive (at least in relation to some of the goods), and consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public for which the element has no meaning.

Both the earlier mark and the contested sign are word marks, the earlier mark consisting of the element ‘AddSecure’ and the contested sign consisting of the element ‘EDISECURE’. As no components of the signs have any meaning for the relevant public, both signs will be perceived as consisting of one element each.

None of the elements in the signs have a meaning and will be perceived as fanciful in relation to the goods and services in question. Therefore, both the element of the earlier mark and of the contested sign has an average degree of distinctiveness.

It can be noted that the fact that the earlier mark is written using a combination of lower and upper case letters and the contested sign is written in upper case letters is immaterial.  The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

Visually and aurally, the signs coincide in the (sound of) the letters ‘*D*SECURE’ which makes up seven of the signs’ nine letters. They merely differ in two out of the signs’ nine letters, namely in (the sound) of the letters ‘E*I******’ in the contested sign and ‘A*d******’ in the earlier mark.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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 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 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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but 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 for goods for which the degree of attention is high, as is the case for some of the goods and services in question, consumers need to rely on their imperfect recollection of the trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar to various degrees and partly dissimilar, and the distinctiveness of the earlier mark is normal. The relevant public’s degree of attention varies from average to high.

The signs differ only in two letters, however they coincide in seven letters, and the Opposition Division has found in section c) of this decision that the signs are visually and aurally similar to an average degree; considering the consumer’s imperfect recollection, the differences between the signs are not sufficient to outweigh the similarities between them and to exclude any likelihood of confusion, even taking into consideration the high degree of attention of the relevant public, in relation to some of the goods. Taking the interdependence principle into consideration, this also applies to the contested goods found to be similar to a low degree with the opponent’s.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish–speaking part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 13 728 051. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on earlier European Union trade mark registration No 13 860 291 for the figurative mark: .

This mark invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements which are not present in the contested trade mark. Moreover, it covers the same scope of goods and services. 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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

María Clara IBÁÑEZ FIORILLO

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.