OPPOSITION No B 2 720 400

Kobil Systems GmbH, Pfortenring 11, 67547 Worms, Germany (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

SignWise Corporation Ltd., 24 Holborn Viaduct, London EC1 2BN, United Kingdom (applicant), represented by Patent & Trade Mark Agency Koitel, Tina 26, 10126 Tallinn, Estonia (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 400 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 241 061 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 241 061. The opposition is based on European Union trade mark registration No 10 446 144. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 9:        Data processing equipment and computers, in particular for integrating integrated circuits (chips) into computers; Data carriers for mobile transport and for encoded storage of electronic data, in particular as components which may be plugged into computers; Integrated electronic circuits (chips) being electronic keys for controlling access rights to computers, for encrypting electronic data, for digitally signing electronic data or for producing digital certificates; Data processing equipment for configuring computers and networks, in particular in order to provide user profiles and settings on the operating system, for authenticating computer users, time recording and billing.

Class 42:        Design and development of computer hardware and computer software, in particular design and development of software for controlling access to computers and electronic data, software for checking the authentication and permission of computer users, software for configuring networks and computers, software for producing digital certificates, software for digitally signing electronic data and software for encoded storage of selected electronic data.

The contested goods and services are the following:

Class 9:        Identity cards, encoded; Encoded identity cards.

Class 45:        Identity verification; Identity validation services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 identity cards, encoded; encoded identity cards are highly similar to the opponent’s data processing equipment and computers, in particular for integrating integrated circuits (chips) into computers, as they have the same producers and distribution channels and they target the same consumers. Furthermore, they are complementary.

Contested services in Class 45

The contested identity verification and identity validation services are used by businesses to confirm the identities of users by ensuring that they provide information associated with their real identity. They are similar to the opponent’s design and development of computer hardware and computer software, in particular design and development of software for controlling access to computers and electronic data, software for checking the authentication and permission of computer users, software for configuring networks and computers, software for producing digital certificates, software for digitally signing electronic data and software for encoded storage of selected electronic data in Class 42. They can have the same providers, distribution channels and relevant public.

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 similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. Contrary to the opponent’s view, the public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

mIDentity App	midentity
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).

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is in upper or lower case characters.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51). Consequently, the public in the relevant territory will perceive the element ‘identity’ in the signs, as it is meaningful in English and very close to the equivalent words in other official languages in the European Union, such as French (‘identité’), German (‘Identität’), Italian (‘identità’), Portuguese (‘identidade’) and Spanish (‘identidad’). In relation to the goods and services in question, this element is weak, as it alludes to their purpose, namely that they serve to establish who the holder, owner or wearer is by bearing their name and often other details such as a signature or photograph (information extracted from English Oxford Living Dictionaries on 23/05/2017 at https://en.oxforddictionaries.com/definition/identity).

The word ‘App’ of the earlier sign will be associated with an application programme. Bearing in mind that the relevant goods and services are technology-related, this element is non-distinctive for these goods and services, namely for identity cards, encoded; encoded identity cards; identity verification; identity validation services.

Visually and aurally, the signs coincide in the distinctive word ‘midentity’, which constitutes the entirety of the contested sign. This element is wholly reproduced in the earlier mark and plays an independent and distinctive role therein. The signs differ in the descriptive element ‘App’ of the earlier trade mark, which has no counterpart in the contested sign. Considering what has been stated above about the coincidence in the distinctive element ‘midentity’, the marks are visually and aurally highly similar.

Conceptually, although neither of the signs, taken as a whole, has any meaning for the public in the relevant territory, they will be associated with the meaning of the element ‘identity’, which is of limited distinctiveness. Since the additional element ‘App’ of the earlier mark is non-distinctive for the relevant goods and services, as explained above, the marks are conceptually highly similar.

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 as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods and services are similar (to varying degrees) and they target the general public and business customers; the consumer’s degree of attention may vary from average to high. Furthermore, the earlier mark has a normal degree of distinctiveness.

The marks under comparison are visually, aurally and conceptually highly similar because the contested sign is reproduced in the earlier trade mark and the only difference is confined to a non-distinctive element, as explained above in section c) of this decision.

From the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant public, even when displaying a high degree of attention, will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 446 144. It follows that the contested trade mark must be rejected for all the contested 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.

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

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

The Opposition Division

Richard BIANCHI

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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

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