OPPOSITION DIVISION
OPPOSITION No B 2 803 495
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
Bundesdruckerei GmbH, Kommandantenstraße 18, 10969 Berlin, Germany
(applicant), represented by Jungblut & Seuss, Max-Dohrn-Str. 10, 10589 Berlin,
Germany (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 803 495 is partially upheld, namely for the following
contested goods and services:
Class 9: Computer software, in particular software for recording and
processing of data and software for paperless applications for personal
documents, encoding software and signature software; operating software for
computers; software for running an authentication server, software for running
a certification provider, software for electronic signing of any binary data,
including documents, invoices, enquiries, transaction requirements, in relation
to local applications on a user-computer or online applications, including web
applications or web services, including applications for PCs and apps for
smartphones; computers; computer peripheral devices, data processing
equipment, printers for computers, modems, monitors (computer hardware),
memories, keyboards, scanners; products for a PKI infrastructure, namely
software for this purpose; computer hardware and software identification
systems for persons and goods; access systems for persons, namely
apparatus and software for controlling access rights for persons; computer
hardware and software for systems to personalise ID cards; border monitoring
and management systems (border management systems), namely apparatus
and software for monitoring and detecting persons at border stations; computer
hardware and software for automated ID checks; computer hardware and
software for electronic identification systems; computer hardware and software
for systems for securing the electronic transmission of data; systems for the
electronically controlled issuing and checking of access certificates, in
particular of tickets for transport, events or exhibitions; computer hardware and
software for systems for processing optical information; computer hardware
and software for systems for use in security technology and for product
protection, in particular using computer chips, transponders, aerials, sensors,
optically variable elements, security paper, copy protection; hardware (data
processing equipment) and software for systems for use of prepaid
technologies.
Class 35: Processing of data for identification of applicants by means of
the eID function of the new German identity cards, generating codes on the
Decision on Opposition No B 2 803 495 page: 2 of 15
new German identity cards, creating qualified certificates and loading onto the
new German identity cards; processing of electronic data relating to systems
for access protection and checking of individuals and relating to security
infrastructures, in particular in the field of access management, for
guaranteeing secure identities, of managing access rights, of compliance
management systems, of processes for safe and legal export control and
customs, in the field of secure identities in the health sector, in the field of
secure identities for electronic invoice generation and dispatch, in relation to
secure management of documents, to secure internal and external business
communication, and in the field of secure identities regarding energy supply
from any energy supplier.
Class 38: Electronic transmission of data in the field of secure identities;
communication by computer terminal; communications by computer terminals;
fascimile transmission; transmission of digital information, in particular using
symmetrical and asymmetrical keys and/or digital signatures; trustworthy
telecooperation (transmission of documents to the customer for printing or for
electronic use), in particular protected data traffic, including secure
transmission of documents to the customer for printing or for electronic use,
transmission via telecommunications of test results established by testing any
signed binary data, including the associated certificates, including verifying of
signed documents, to others, forwarding of authorisations issued by the
certification provider, online or offline.
Class 42: Electronic storage of data in the field of secure identities;
scientific and technological services and research and design relating thereto,
industrial analysis and provision of research services, design and development
of computer hardware and software, all being in particular in fields of access
management, in relation to goods for guaranteeing secure identities, to
managing access rights, to implementation of compliance management
systems, to implementation of processes for safe and legal export control and
customs, in the field of secure identities in the health sector, in the field of
secure identities for electronic invoice generation and dispatch, in relation to
secure management of documents, to secure internal and external business
communication, and in the field of secure identities regarding energy supply
from any energy supplier; development of new products, for others, in
particular for security technology using computer chips, transponders, aerials,
sensors, holograms, kinegrams, special printing techniques incorporating
physical and/or chemical security elements, security paper and copy-protection
elements; creation, updating, maintenance and rental of computer software, in
particular databases, logistical tracking systems, trust-centre solutions,
software for paperless applications for personal documents, encoding software
and signature software; rental of data processing equipment and accessories;
consultancy in the field of computers; services of a company involved in
electronic data and information processing and electronic media, namely the
developing of computer hardware and software for strategies and methods for
cryptology and other basic technologies, for ensuring security in
communications technology; developing of computer hardware and software
for security infrastructure; developing of computer hardware and software for
registering users of a security infrastructure; electronic storage of user data in a
security infrastructure; special document security services for document
creation, production and distribution, namely creating software for code
generation, code storage and code management; trusteeship, namely
electronic storage of data in connection with the depositing, development and
application of codes; encryption of digital data, authentication services, namely
Decision on Opposition No B 2 803 495 page: 3 of 15
certification, registration of users and personalisation; development of
computer software and hardware for application of identification and
authentication processes and corresponding codes; time-stamping;
digitalisation of initials and signatures; development of computer hardware and
software for access protection systems; development of computer hardware
and software in the field of construction and operation of access protection
systems in connection with digital signature codes; development of computer
hardware and software for systems for copy and forgery protection for digital
data and information; digital watermarking, creating digital fingerprints;
development of computer hardware and software for electronic payment
systems, certification service providers, providing and maintenance of
certificates, namely electronic storage of certificates; electronic identification of
applicants for certificates in order to produce certificates within the framework
of running a certification service, on the basis of analogue or electronic
identification information, including the electronic identity function on an identity
card or electronic residence permit, passport, device certificate, a clear
individual manufacturer code; electronic storage of advanced or qualified
certificates, on devices provided for this purpose, including smartcards, secure
signature devices, soft tokens or secure elements, and on sovereign electronic
documents, including electronic identity cards, electronic residence permits,
electronic passes; electronic storage of signature data of any binary data,
including documents, including invoices, enquiries, transaction requirements, in
relation to local applications on a user-computer or online applications,
including web applications or web services, including applications for PCs and
apps for smartphones; electronic storage of test data of any signed binary data,
including the associated certificates, including signed documents, in particular
being certification provider services; storage of electronic data for conducting
test stages in the testing of any signed binary data, including the associated
certificates, including verifying of signed documents, and informing customers
of the test results; computer services for a PKI infrastructure; compiling of
programs for operating card personalisation installations; creating,
maintenance and rental of computer programs, in particular for mobile radio
systems; technological consultancy for the production of forgery-proof
documents, central and local recording of document production and data; trust
centre services, in particular the application and management of electronic
signatures; electronic storage of data, in particular data on and from industrial
property rights; digitising of archives; storage of electronic data on and from
industrial property rights; technical consultancy in the field of security and
product protection, in particular security using computer chips, transponders,
aerials, sensors, optically variable elements, security paper, copy protection;
storage of electronic data relating to systems for access protection and
checking of individuals and relating to security infrastructures, in particular in
the field of access management, for guaranteeing secure identities, for
managing access rights, for compliance management systems, for processes
for safe and legal export control and customs, in the field of secure identities in
the health sector, in the field of secure identities for electronic invoice
generation and dispatch, in relation to secure management of documents, to
secure internal and external business communication, and in the field of secure
identities regarding energy supply from any energy supplier; providing and
testing of digital stamps.
Class 45: Security services for the protection of property and individuals;
Identification and/or registration of individuals using digital data assigned to
individuals; providing and testing of electronic codes and digital data for
identifying individuals.
Decision on Opposition No B 2 803 495 page: 4 of 15
2. European Union trade mark application No 15 526 197 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
REASONS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 526 197 ‘GoID’ (word mark). The opposition is
based on, inter alia, Swedish trade mark registration No 534 457 ‘GOID’ (word mark).
The opponent invoked Article 8(1)(a) and (b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s Swedish trade mark registration No 534 457.
a) The goods and services
The services on which the opposition is based are the following:
Class 42: Providing temporary use of non-downloadable software for
provisioning, managing and authenticating digital government identity credentials
carried on smart phones, tablets and other wireless mobile devices; software as a
service, featuring software for over the air provisioning, managing and authenticating
digital government identity credentials carried on smart phones, tablets and other
wireless mobile devices; provisioning of authentication for others digital government
identity credentials carried on smart phones, tablets and other wireless mobile.
Class 45: Identification verification services, namely, providing, management
and authentication of digital government identity credentials carried on smart phones,
tablets and other wireless mobile devices.
Decision on Opposition No B 2 803 495 page: 5 of 15
The contested goods and services are the following:
Class 9: Apparatus for recording, transmission or reproduction of sound or
images; Optical measuring and checking (supervision) apparatus and instruments;
Mechanisms for coin-operated apparatus and apparatus which issue money;
Computer software, in particular software for recording and processing of data and
software for paperless applications for personal documents, encoding software and
signature software; Operating software for computers; Software for running an
authentication server, software for running a certification provider, software for
electronic signing of any binary data, including documents, invoices, enquiries,
transaction requirements, in relation to local applications on a user-computer or
online applications, including web applications or web services, including applications
for PCs and apps for smartphones; Computers; Magnetic encoders; Computer
peripheral devices, data processing equipment, printers for computers, modems,
monitors (computer hardware), memories, keyboards, scanners, video cameras,
photographic cameras (digital), optical recording apparatus; Machine-readable data
carriers of all kinds, in particular optical and magnetic data carriers; Integrated
circuits, including on smart cards; Aerials and transponders; Sensor; Testing
equipment for valuables and security products, in particular for bank notes,
documents, identity cards, stamps, shares; Products for a PKI infrastructure, namely
smartcards, secure signature creation devices, security modules, card readers and
software for this purpose; Electronic, optical or magnetic recognition apparatus;
Magnetic encoders for data processing; Bar code readers; Chip card terminals;
Apparatus for testing chip cards; Apparatus for simulating chip cards for testing
purposes in connection with chip card terminals; Operating systems for chip cards;
Computer hardware and software identification systems for persons and goods;
Access systems for persons, Namely apparatus and software for controlling access
rights for persons; Computer hardware and software for systems to personalise ID
cards; Border monitoring and management systems (border management systems),
namely apparatus and software for monitoring and detecting persons at border
stations; Computer hardware and software for automated ID checks; Computer
hardware and software for electronic identification systems; Computer hardware and
software for systems for securing the electronic transmission of data; Systems for the
electronically controlled issuing and checking of access certificates, in particular of
tickets for transport, events or exhibitions; Computer hardware and software for
systems for processing optical information; Apparatus for recording data contained in
optically variable elements; Apparatus for the central and local recording of
document production and data; Computer hardware and software for systems for use
in security technology and for product protection, in particular using computer chips,
transponders, aerials, sensors, optically variable elements, security paper, copy
protection; Plastic cards [encoded]; Electronically controlled installations for exposure
and development of photographic coatings; Laser installations, In particular laser
installations for the personalising of security documents and/or documents of value;
Holograms of all kinds, imprinted hologram foils; Kinegrams; Optically or
mechanically readable security features for protection against forgeries or plagiarism;
Screens for photoengraving; Hardware (data processing equipment) and software for
systems for use of prepaid technologies.
Class 16: Paper, card, cardboard, plastic and/or foil materials for packaging;
Paper of all kinds, in particular security paper with physical and/or chemical security
devices, including being copy-protection elements; Printed matter, in particular
labels; Bookbinding material; Photographs [printed], Pictures, Graphic
representations, Photo-engravings, Drawings; Stationery; Plastic materials for
packaging, included in class 16, printing blocks; Security products, including
personalised documents, bank notes, identity cards and entrance tickets.
Decision on Opposition No B 2 803 495 page: 6 of 15
Class 35: Business consultancy, in particular in the field of access management,
in relation to goods for guaranteeing secure identities, to managing access rights, to
implementation of compliance management systems, to implementation of processes
for safe and legal export control and customs, in the field of secure identities in the
health sector, in the field of secure identities for electronic invoice generation and
dispatch, in relation to secure management of documents, to secure internal and
external business communication, and in the field of secure identities regarding
energy supply from any energy supplier; Business research, professional business
consultancy, in particular in the field of quality control, certification, standardisation,
marketing, and communications, market analysis, economic consultancy, economic
research, compilation of statistics, advertising, in particular development and
providing of advertising concepts and advertising material, including brochures and
pamphlets, processing of data in the field of secure identities; Processing of data
regarding test results obtained from signed binary data within the framework of an
information service; Processing of data from any external systems in order to reserve
authorisations, for others, in particular customers, systems, equipment and
computer-based guidance of others through a workflow (administrative services);
Processing of data for identification of applicants by means of the eID function of the
new German identity cards, generating codes on the new German identity cards,
creating qualified certificates and loading onto the new German identity cards;
Processing of electronic data relating to systems for access protection and checking
of individuals and relating to security infrastructures, in particular in the field of
access management, for guaranteeing secure identities, of managing access rights,
of compliance management systems, of processes for safe and legal export control
and customs, in the field of secure identities in the health sector, in the field of secure
identities for electronic invoice generation and dispatch, in relation to secure
management of documents, to secure internal and external business communication,
and in the field of secure identities regarding energy supply from any energy supplier.
Class 37: Building, repair and maintenance of computer hardware, office
equipment, electric apparatus and machines.
Class 38: Electronic transmission of data in the field of secure identities;
Communication by computer terminal; Communications by computer terminals;
Fascimile transmission; Transmission of digital information, in particular using
symmetrical and asymmetrical keys and/or digital signatures; Trustworthy
telecooperation (transmission of documents to the customer for printing or for
electronic use), in particular protected data traffic, including secure transmission of
documents to the customer for printing or for electronic use, transmission via
telecommunications of test results established by testing any signed binary data,
including the associated certificates, including verifying of signed documents, to
others, forwarding of authorisations issued by the certification provider, online or
offline.
Class 41: Arranging and conducting of seminars, in particular in the fields of
access management, in relation to goods for guaranteeing secure identities, to
managing access rights, to implementation of compliance management systems, to
implementation of processes for safe and legal export control and customs, in the
field of secure identities in the health sector, in the field of secure identities for
electronic invoice generation and dispatch, in relation to secure management of
documents, to secure internal and external business communication, and in the field
of secure identities regarding energy supply from any energy supplier.
Decision on Opposition No B 2 803 495 page: 7 of 15
Class 42: Electronic storage of data in the field of secure identities; Scientific
and technological services and research and design relating thereto, industrial
analysis and provision of research services, design and development of computer
hardware and software, all being in particular in fields of access management, in
relation to goods for guaranteeing secure identities, to managing access rights, to
implementation of compliance management systems, to implementation of processes
for safe and legal export control and customs, in the field of secure identities in the
health sector, in the field of secure identities for electronic invoice generation and
dispatch, in relation to secure management of documents, to secure internal and
external business communication, and in the field of secure identities regarding
energy supply from any energy supplier; Technical project studies; Research with
regard to new products, for others; Development of new products, for others, in
particular for security technology using computer chips, transponders, aerials,
sensors, holograms, kinegrams, special printing techniques incorporating physical
and/or chemical security elements, security paper and copy-protection elements;
Providing of expert opinion; Creation, updating, maintenance and rental of computer
software, in particular databases, logistical tracking systems, trust-centre solutions,
software for paperless applications for personal documents, encoding software and
signature software; Rental of data processing equipment and accessories;
Consultancy in the field of computers; Chemical laboratories; Engineering services;
Quality control; Design, physics research; Services of a company involved in
electronic data and information processing and electronic media, namely the
developing of computer hardware and software for strategies and methods for
cryptology and other basic technologies, for ensuring security in communications
technology; Developing of computer hardware and software for security
infrastructure; Developing of computer hardware and software for registering users of
a security infrastructure; Electronic storage of user data in a security infrastructure ;
Special document security services for document creation, production and
distribution, namely creating software for code generation, code storage and code
management; Trusteeship, namely electronic storage of data in connection with the
depositing, development and application of codes; Encryption of digital data,
authentication services, namely certification, registration of users and
personalisation; Development of computer software and hardware for application of
identification and authentication processes and corresponding codes; Time-
stamping; Digitalisation of initials and signatures; Development of computer
hardware and software for access protection systems; Development of computer
hardware and software in the field of construction and operation of access protection
systems in connection with digital signature codes; Development of computer
hardware and software for systems for copy and forgery protection for digital data
and information; Digital watermarking, Creating digital fingerprints; Development of
computer hardware and software for electronic payment systems, certification
service providers, providing and maintenance of certificates, namely electronic
storage of certificates; Electronic identification of applicants for certificates in order to
produce certificates within the framework of running a certification service, on the
basis of analogue or electronic identification information, including the electronic
identity function on an identity card or electronic residence permit, passport, device
certificate, a clear individual manufacturer code; Electronic storage of advanced or
qualified certificates, on devices provided for this purpose, including smartcards,
secure signature devices, soft tokens or secure elements, and on sovereign
electronic documents, including electronic identity cards, electronic residence
permits, electronic passes; Electronic storage of signature data of any binary data,
including documents, including invoices, enquiries, transaction requirements, in
relation to local applications on a user-computer or online applications, including web
applications or web services, including applications for PCs and apps for
smartphones; Electronic storage of test data of any signed binary data, including the
Decision on Opposition No B 2 803 495 page: 8 of 15
associated certificates, including signed documents, in particular being certification
provider services; Storage of electronic data for conducting test stages in the testing
of any signed binary data, including the associated certificates, including verifying of
signed documents, and informing customers of the test results; Computer services
for a PKI infrastructure; Compiling of programs for operating card personalisation
installations; Creating, maintenance and rental of computer programs, in particular
for mobile radio systems; Technological consultancy for the production of forgery-
proof documents, central and local recording of document production and data; Trust
centre services, in particular the application and management of electronic
signatures; Electronic storage of data, in particular data on and from industrial
property rights; Digitising of archives; Storage of electronic data on and from
industrial property rights; Technical consultancy in the field of security and product
protection, in particular security using computer chips, transponders, aerials,
sensors, optically variable elements, security paper, copy protection; Storage of
electronic data relating to systems for access protection and checking of individuals
and relating to security infrastructures, in particular in the field of access
management, for guaranteeing secure identities, for managing access rights, for
compliance management systems, for processes for safe and legal export control
and customs, in the field of secure identities in the health sector, in the field of secure
identities for electronic invoice generation and dispatch, in relation to secure
management of documents, to secure internal and external business communication,
and in the field of secure identities regarding energy supply from any energy
supplier; Providing and testing of digital stamps.
Class 45: Security services for the protection of property and individuals;
Identification and/or registration of individuals using digital data assigned to
individuals; Providing and testing of electronic codes and digital data for identifying
individuals.
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 computer software, in particular software for recording and processing
of data and software for paperless applications for personal documents, encoding
software and signature software; operating software for computers; software for
running an authentication server, software for running a certification provider,
software for electronic signing of any binary data, including documents, invoices,
enquiries, transaction requirements, in relation to local applications on a user-
computer or online applications, including web applications or web services,
including applications for PCs and apps for smartphones; computers; computer
peripheral devices, data processing equipment, printers for computers, modems,
monitors (computer hardware), memories, keyboards, scanners; products for a PKI
infrastructure, namely software for this purpose; computer hardware and software
identification systems for persons and goods; access systems for persons, namely
apparatus and software for controlling access rights for persons; computer hardware
and software for systems to personalise ID cards; border monitoring and
management systems (border management systems), namely apparatus and
software for monitoring and detecting persons at border stations; computer hardware
and software for automated ID checks; computer hardware and software for
electronic identification systems; computer hardware and software for systems for
securing the electronic transmission of data; systems for the electronically controlled
Decision on Opposition No B 2 803 495 page: 9 of 15
issuing and checking of access certificates, in particular of tickets for transport,
events or exhibitions; computer hardware and software for systems for processing
optical information; computer hardware and software for systems for use in security
technology and for product protection, in particular using computer chips,
transponders, aerials, sensors, optically variable elements, security paper, copy
protection; hardware (data processing equipment) and software for systems for use
of prepaid technologies are similar to the opponent’s software as a service, featuring
software for over the air provisioning, managing and authenticating digital
government identity credentials carried on smart phones, tablets and other wireless
mobile devices in Class 42. These goods and services can have the same
producer/provider, as it is common for large IT companies producing computers and
hardware to also provide software as a service. Furthermore, these goods and
services have the same distribution channels, target the same end users and are
complementary.
The contested apparatus for recording, transmission or reproduction of sound or
images; optical measuring and checking (supervision) apparatus and instruments;
mechanisms for coin-operated apparatus and apparatus which issue money;
magnetic encoders; video cameras, photographic cameras (digital), optical recording
apparatus; machine-readable data carriers of all kinds, in particular optical and
magnetic data carriers; integrated circuits, including on smart cards; aerials and
transponders; sensor; testing equipment for valuables and security products, in
particular for bank notes, documents, identity cards, stamps, shares; products for a
PKI infrastructure, namely smartcards, secure signature creation devices, security
modules, card readers; electronic, optical or magnetic recognition apparatus;
magnetic encoders for data processing; bar code readers; chip card terminals;
apparatus for testing chip cards; apparatus for simulating chip cards for testing
purposes in connection with chip card terminals; operating systems for chip cards;
apparatus for recording data contained in optically variable elements; apparatus for
the central and local recording of document production and data; plastic cards
[encoded]; electronically controlled installations for exposure and development of
photographic coatings; laser installations, in particular laser installations for the
personalising of security documents and/or documents of value; holograms of all
kinds, imprinted hologram foils; kinegrams; optically or mechanically readable
security features for protection against forgeries or plagiarism; screens for
photoengraving have nothing in common with the opponent’s services in Class 42,
which are software services for authenticating digital government identity credentials,
or Class 45, which are identification verification services. These goods and services
have different natures, purposes and methods of use. They are neither
complementary to nor in competition with each other, and they are
produced/provided and distributed by different companies. Even though some of the
applicant’s goods and the opponent’s services can have the same end users, this is
not enough to establish similarity between them. Therefore, they are dissimilar.
Contested goods in Class 16
The contested goods in Class 16 are all kinds of paper, cardboard and plastic goods,
printed matter and stationery, while the opponent’s services in Class 42 are software
services for authenticating digital government identity credentials and the opponent’s
services in Class 45 are identification verification services. The contested goods are
clearly dissimilar to the opponent’s services, since they have nothing in common.
They have different natures, purposes and methods of use. They satisfy different
needs, they are produced and distributed by different companies, and they are
neither complementary nor in competition.
Decision on Opposition No B 2 803 495 page: 10 of 15
Contested services in Class 35
The contested processing of data for identification of applicants by means of the eID
function of the new German identity cards, generating codes on the new German
identity cards, creating qualified certificates and loading onto the new German
identity cards; processing of electronic data relating to systems for access protection
and checking of individuals and relating to security infrastructures, in particular in the
field of access management, for guaranteeing secure identities, of managing access
rights, of compliance management systems, of processes for safe and legal export
control and customs, in the field of secure identities in the health sector, in the field of
secure identities for electronic invoice generation and dispatch, in relation to secure
management of documents, to secure internal and external business communication,
and in the field of secure identities regarding energy supply from any energy supplier
and the opponent’s identification verification services, namely, providing,
management and authentication of digital government identity credentials carried on
smart phones, tablets and other wireless mobile devices in Class 45 have similar
purposes, namely to verify the identification of persons by processing data. These
services can have the same provider and are distributed through the same sales
channels. Finally, they target the same end users. Consequently, these services are
similar.
The contested business consultancy, in particular in the field of access management,
in relation to goods for guaranteeing secure identities, to managing access rights, to
implementation of compliance management systems, to implementation of processes
for safe and legal export control and customs, in the field of secure identities in the
health sector, in the field of secure identities for electronic invoice generation and
dispatch, in relation to secure management of documents, to secure internal and
external business communication, and in the field of secure identities regarding
energy supply from any energy supplier; business research, professional business
consultancy, in particular in the field of quality control, certification, standardisation,
marketing, and communications, market analysis, economic consultancy, economic
research, compilation of statistics, advertising, in particular development and
providing of advertising concepts and advertising material, including brochures and
pamphlets, processing of data in the field of secure identities; processing of data
regarding test results obtained from signed binary data within the framework of an
information service; processing of data from any external systems in order to reserve
authorisations, for others, in particular customers, systems, equipment and
computer-based guidance of others through a workflow (administrative services) are
either business consultancy or administrative data processing services. These
services have nothing in common with the opponent’s services in Class 42 (software
services for authenticating digital government identity credentials) or Class 45
(identification verification services). They have different natures, purposes and
methods of use, and they are neither complementary nor in competition. They do not
have the same providers or end users and they have different distribution channels.
Consequently, these services are dissimilar.
Contested services in Class 37
The contested services in Class 37 are building, repair and maintenance services,
while the opponent’s services in Class 42 are software services for authenticating
digital government identity credentials and the opponent’s services in Class 45 are
identification verification services. The natures, purposes and methods of use of
these services are different. They are neither complementary nor in competition.
They do not have the same providers and their distribution channels are also
Decision on Opposition No B 2 803 495 page: 11 of 15
different. Finally, they target different end users. Consequently, these services are
dissimilar.
Contested services in Class 38
The contested electronic transmission of data in the field of secure identities;
communication by computer terminal; communications by computer terminals;
fascimile transmission; transmission of digital information, in particular using
symmetrical and asymmetrical keys and/or digital signatures; trustworthy
telecooperation (transmission of documents to the customer for printing or for
electronic use), in particular protected data traffic, including secure transmission of
documents to the customer for printing or for electronic use, transmission via
telecommunications of test results established by testing any signed binary data,
including the associated certificates, including verifying of signed documents, to
others, forwarding of authorisations issued by the certification provider, online or
offline and the opponent’s providing temporary use of non-downloadable software for
provisioning, managing and authenticating digital government identity credentials
carried on smart phones, tablets and other wireless mobile devices in Class 42 have
the same purpose. They can have the same providers and distribution channels.
Furthermore, these services are complementary. Consequently, they are similar.
Contested services in Class 41
The contested services in Class 41 concern the organisation and conducting of
seminars, while the opponent’s services in Class 42 are software services for
authenticating digital government identity credentials and the opponent’s services in
Class 45 are identification verification services. The applicant’s services and the
opponent’s services have nothing in common, as they are usually provided by
entirely different undertakings and they target different end users. Their natures,
purposes and methods of use are entirely different, they are neither complementary
to nor in competition with each other, and they do not have the same distribution
channels. Therefore, these services are dissimilar.
Contested services in Class 42
The contested electronic storage of data in the field of secure identities; scientific and
technological services and research and design relating thereto, industrial analysis
and provision of research services, design and development of computer hardware
and software, all being in particular in fields of access management, in relation to
goods for guaranteeing secure identities, to managing access rights, to
implementation of compliance management systems, to implementation of processes
for safe and legal export control and customs, in the field of secure identities in the
health sector, in the field of secure identities for electronic invoice generation and
dispatch, in relation to secure management of documents, to secure internal and
external business communication, and in the field of secure identities regarding
energy supply from any energy supplier; development of new products, for others, in
particular for security technology using computer chips, transponders, aerials,
sensors, holograms, kinegrams, special printing techniques incorporating physical
and/or chemical security elements, security paper and copy-protection elements;
creation, updating, maintenance and rental of computer software, in particular
databases, logistical tracking systems, trust-centre solutions, software for paperless
applications for personal documents, encoding software and signature software;
rental of data processing equipment and accessories; consultancy in the field of
computers; services of a company involved in electronic data and information
processing and electronic media, namely the developing of computer hardware and
Decision on Opposition No B 2 803 495 page: 12 of 15
software for strategies and methods for cryptology and other basic technologies, for
ensuring security in communications technology; developing of computer hardware
and software for security infrastructure; developing of computer hardware and
software for registering users of a security infrastructure; electronic storage of user
data in a security infrastructure; special document security services for document
creation, production and distribution, namely creating software for code generation,
code storage and code management; trusteeship, namely electronic storage of data
in connection with the depositing, development and application of codes; encryption
of digital data, authentication services, namely certification, registration of users and
personalisation; development of computer software and hardware for application of
identification and authentication processes and corresponding codes; time-stamping;
digitalisation of initials and signatures; development of computer hardware and
software for access protection systems; development of computer hardware and
software in the field of construction and operation of access protection systems in
connection with digital signature codes; development of computer hardware and
software for systems for copy and forgery protection for digital data and information;
digital watermarking, creating digital fingerprints; development of computer hardware
and software for electronic payment systems, certification service providers,
providing and maintenance of certificates, namely electronic storage of certificates;
electronic identification of applicants for certificates in order to produce certificates
within the framework of running a certification service, on the basis of analogue or
electronic identification information, including the electronic identity function on an
identity card or electronic residence permit, passport, device certificate, a clear
individual manufacturer code; electronic storage of advanced or qualified certificates,
on devices provided for this purpose, including smartcards, secure signature
devices, soft tokens or secure elements, and on sovereign electronic documents,
including electronic identity cards, electronic residence permits, electronic passes;
electronic storage of signature data of any binary data, including documents,
including invoices, enquiries, transaction requirements, in relation to local
applications on a user-computer or online applications, including web applications or
web services, including applications for PCs and apps for smartphones; electronic
storage of test data of any signed binary data, including the associated certificates,
including signed documents, in particular being certification provider services;
storage of electronic data for conducting test stages in the testing of any signed
binary data, including the associated certificates, including verifying of signed
documents, and informing customers of the test results; computer services for a PKI
infrastructure; compiling of programs for operating card personalisation installations;
creating, maintenance and rental of computer programs, in particular for mobile radio
systems; technological consultancy for the production of forgery-proof documents,
central and local recording of document production and data; trust centre services, in
particular the application and management of electronic signatures; electronic
storage of data, in particular data on and from industrial property rights; digitising of
archives; storage of electronic data on and from industrial property rights; technical
consultancy in the field of security and product protection, in particular security using
computer chips, transponders, aerials, sensors, optically variable elements, security
paper, copy protection; storage of electronic data relating to systems for access
protection and checking of individuals and relating to security infrastructures, in
particular in the field of access management, for guaranteeing secure identities, for
managing access rights, for compliance management systems, for processes for
safe and legal export control and customs, in the field of secure identities in the
health sector, in the field of secure identities for electronic invoice generation and
dispatch, in relation to secure management of documents, to secure internal and
external business communication, and in the field of secure identities regarding
energy supply from any energy supplier; providing and testing of digital stamps and
the opponent’s software as a service, featuring software for over the air provisioning,
Decision on Opposition No B 2 803 495 page: 13 of 15
managing and authenticating digital government identity credentials carried on smart
phones, tablets and other wireless mobile devices in Class 42 have similar natures.
Furthermore, they can have the same provider, as large IT companies can provide
services for the development of software and hardware, computer consultancy and
the electronic storage of data, as well as software as a service. Finally, these
services have the same end users. Therefore, these services are similar.
The contested technical project studies; research with regard to new products, for
others; providing of expert opinion; chemical laboratories; engineering services;
quality control; design, physics research are research, study and engineering
services. Their natures, purposes and methods of use are different from the
opponent’s services in Class 42 (software services for authenticating digital
government identity credentials) and Class 45 (identification verification services).
These services are neither complementary nor in competition. They do not have the
same providers or end users and they have different distribution channels. Therefore,
they are dissimilar.
Contested services in Class 45
The contested security services for the protection of property and individuals;
identification and/or registration of individuals using digital data assigned to
individuals; providing and testing of electronic codes and digital data for identifying
individuals are similar to the opponent’s identification verification services, namely,
providing, management and authentication of digital government identity credentials
carried on smart phones, tablets and other wireless mobile devices in Class 45, as all
these services are related to security and verifying the identity of individuals. They
have similar natures and purposes, have the same provider and target the same end
users.
b) 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 similar are specialised goods
and services directed at business customers and governmental bodies with specific
professional knowledge or expertise.
The degree of attention is considered to be high.
c) The signs
GOID GoID
Earlier trade mark Contested sign
Both marks are word marks. As both signs are word marks, it is irrelevant whether
they are written in lower case or upper case letters or a combination of both.
Decision on Opposition No B 2 803 495 page: 14 of 15
Therefore, the signs are identical.
d) Global assessment, other arguments and conclusion
The goods and services are partly similar and partly dissimilar. They target business
customers and governmental bodies with a higher than average degree of attention.
The signs are identical, and the earlier mark has a normal degree of distinctiveness.
Taking into account that the signs are identical, there can be no other conclusion than
a likelihood of confusion on the part of the relevant public for the similar goods and
services.
Therefore, the opposition is partly well founded on the basis of the opponent’s
Swedish trade mark registration No 534 457.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be similar to those of the earlier trade mark.
The rest of the contested goods and services 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 and services cannot be
successful.
The opponent has also based its opposition on the following earlier trade mark:
Swedish trade mark registration No 534 456 for the word mark ‘HID GOID’.
The other earlier right invoked by the opponent covers the same or a narrower scope
of the 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.
For the sake of completeness, it must be mentioned that the opposition must also fail
insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the
remaining goods and services because the goods and services are obviously not
identical.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) 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 for only some 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.
Decision on Opposition No B 2 803 495 page: 15 of 15
The Opposition Division
Gueorgui IVANOV Ieva SMILGAINE Marzena MACIAK
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.