OPPOSITION No B 2 764 416

Pagero AB, Box 11006, 404 21 Göteborg, Sweden (opponent), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative)

a g a i n s t

3V Benelux B.V., Thorbeckelaan 39, 1981 CH Velsen-Zuid, The Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 416 is partially upheld, namely for the following contested goods and services:

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers, computer peripheral devices; computer hardware and computer software; magnetic and machine-readable cards containing encoded information; encoded payment cards; smart cards; encoded stored value cards; encoded credit cards and identity cards; electronically encoded cards; image, sound and other data carriers in electronic, magnetic, optical or other form; downloadable sound and/or video recordings, including obtainable via streaming from computer and telecommunications networks, including the internet; electronic apparatus for computerised financial transactions, including point-of-sale terminals; electronic publications, downloadable.

Class 36:         Insurance; financial affairs; monetary affairs; finance services; payment card services; issuing payment cards and stored value prepaid card; automated payment; financial transaction processing services; providing saving opportunities via saving and discount schemes and/or within the context of loyalty schemes; credit agencies and saving banks; information and consultancy relating to the aforesaid services; the aforesaid services whether or not via electronic channels, including the internet.

2.        European Union trade mark application No 15 462 773 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 15 462 773 for the word mark ‘PAY2D’. The opposition is based on European Union trade mark registration No 10 995 421 for the word mark ‘Pay2n’. 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:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 35:         Advertising; business management; business administration; office functions.

Class 36:         Insurance; financial affairs; monetary affairs; real estate affairs.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The contested goods and services are the following:

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers, computer peripheral devices; computer hardware and computer software; magnetic and machine-readable cards containing encoded information; encoded payment cards; smart cards; encoded stored value cards; encoded credit cards and identity cards; electronically encoded cards; image, sound and other data carriers in electronic, magnetic, optical or other form; downloadable sound and/or video recordings, including obtainable via streaming from computer and telecommunications networks, including the internet; electronic apparatus for computerised financial transactions, including point-of-sale terminals; electronic publications, downloadable.

Class 16:         Paper, cardboard; publications, newsletters, books, newspapers, magazines, brochures, leaflets and other printed matter and texts; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); uncoded (card-like) information carriers, including for identification, credit, saving and payment purposes, of paper, cardboard, plastic, including clubcards, membership cards, discount, advantage, payment and savings cards for use by club members; customer cards and discount cards, not equipped with a magnetic strip; printers' type; printing blocks.

Class 36:         Insurance; financial affairs; monetary affairs; finance services; payment card services; issuing payment cards and stored value prepaid card; automated payment; financial transaction processing services; providing saving opportunities via saving and discount schemes and/or within the context of loyalty schemes; credit agencies and saving banks; information and consultancy relating to the aforesaid services; the aforesaid services whether or not via electronic channels, including the internet.

The term ‘including’, used in the applicant’s list of services, indicates that the specific 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 scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers, computer software are identically contained in both lists of goods.

The contested computer hardware is included in the broad category of the opponent’s computers in Class 9. Therefore, they are identical.

The contested magnetic and machine-readable cards containing encoded information; encoded payment cards; smart cards; encoded stored value cards; encoded credit cards and identity cards; electronically encoded cards are included in the broad category of the opponent’s magnetic data carriers in Class 9. Therefore, they are identical.

The contested image, sound and other data carriers in electronic, magnetic, optical or other form are included in the broad category of the opponent’s magnetic data carriers and other digital recording media in Class 9. Therefore, they are identical.

The contested computer peripheral devices are similar to the opponent’s computers in Class 9, as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.

The contested electronic apparatus for computerised financial transactions, including point-of-sale terminals are similar to the opponent’s computer software in 9, as they can have the same distribution channels, target the same relevant public and are complementary.

The contested electronic publications, downloadable are similar to the opponent’s computer software in 9, as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested downloadable sound and/or video recordings, including obtainable via streaming from computer and telecommunications networks, including the internet are similar to a low degree to the opponent’s computer software in Class 9, as they can coincide in end user and distribution channels. Furthermore they are complementary.

Contested goods in Class 16

All the contested goods in this class, namely paper, cardboard; publications, newsletters, books, newspapers, magazines, brochures, leaflets and other printed matter and texts; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); uncoded (card-like) information carriers, including for identification, credit, saving and payment purposes, of paper, cardboard, plastic, including clubcards, membership cards, discount, advantage, payment and savings cards for use by club members; customer cards and discount cards, not equipped with a magnetic strip; printers' type; printing blocks do not have the same purpose or method of use as the earlier mark’s goods and services. They do not share the same distribution channels and are not expected to be provided by the same undertakings as the contested goods and services. Furthermore, they are not in competition. Therefore, the Opposition Division considers that there are no sufficient points of contact between the goods and services concerned for finding a degree of similarity. As a result, the contested goods are considered to be dissimilar to the opponent’s goods and services in Classes 9, 35, 36 and 42.

Contested services in Class 36

The contested insurance; financial affairs; monetary affairs; finance services; the aforesaid services whether or not via electronic channels, including the internet are included in the broad categories of the opponent’s insurance; financial affairs; monetary affairs in Class 36. Therefore, they are identical.

The contested payment card services; issuing payment cards and stored value prepaid card; automated payment; financial transaction processing services; providing saving opportunities via saving and discount schemes and/or within the context of loyalty schemes; credit agencies and saving banks; the aforesaid services whether or not via electronic channels, including the internet are included in the broad category of the opponent’s financial affairs in Class 36. Therefore, they are identical.

The contested information and consultancy relating to the aforesaid services [insurance; financial affairs; monetary affairs; finance services; payment card services; issuing payment cards and stored value prepaid card; automated payment; financial transaction processing services; providing saving opportunities via saving and discount schemes and/or within the context of loyalty schemes; credit agencies and saving banks] are included in the broad categories of the opponent’s the opponent’s insurance; financial affairs; monetary affairs in Class 36. Therefore, they are identical.

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 different degrees are primarily targeted at a professional public, who will have a heightened level of attention when purchasing or contracting them. For the general public, who may also be the addressee of, at least, some of the goods in Class 9, such as ‘computer software’ or ‘encoded payment cards’ and some of the services in Class 36, for example, ‘payment card services’, the level of attention will also be enhanced, as these goods and services are not purchased or contracted on a regular basis and/or their price might be relatively high. To this extent, it should be pointed out that, since such services are specialised services that may have important financial consequences for their users, the consumers’ level of attention would be high when choosing them (03/02/2011, R 0719/2010-1, f@ir Credit, § 15; appeal dismissed in judgment of 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444; appeal dismissed in judgment of 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874).

3. The signs

Pay2n	PAY2D
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 Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Even though, the marks as a whole have no meaning, the Opposition Division considers it reasonable to assume that the relevant public will dissect the term ‘PAY’ in both marks not only due to its respective meaning, as referred to below, but also because of the fact that this verbal element is followed by a digit. Having said that, it should be pointed out that most likely at least part of the relevant public will perceive this English term as a reference to an action of making a due return for goods and services.

Within the context of the contested services in Class 36, account needs to be taken of the fact that the common element ‘PAY’ is widely used and commonly understood in the field of financial services, in particular with regard to card and electronic payment services. In other words, it is not a random English term with no connection to the specific services or which is never or rarely used in their marketing, but on the contrary, it is one of the core terms and ubiquitous in the area of payment services. As far as the services are directed at financial experts it can be assumed that those specialists in the financial market will understand the meaning of the English term ‘pay’. Furthermore, the general public for financial services, in particular of payment services, will also understand that the word ‘pay’ refers directly to the kind of services in Class 36.

Moreover, when talking about the general public in relation to financial services, the consumers at issue are those interested in payment services and, therefore, they have a certain financial background and knowledge. It is a generally known fact that English is the dominant language in financial affairs. Many English terms which are known and used by interested consumers of financial services exist outside the English-speaking territories (e.g. ‘cash’, ‘bonds’, ‘blue chip’, ‘daytrading’, ‘outperform’, ‘broker’ etc.). The Opposition Division considers it realistic that also non-English-speaking consumers navigating the financial services market, in particular electronic payment services, will come across the English term ‘pay’ or ‘payment’ frequently enough in order to grasp its general meaning or at least recognize it as a technical, and thus, descriptive term in that sector (see in analogy 27/11/2007, T-434/05, Activy Media Gateway, EU:T:2007:359, § 38, where the Court held that in the context of IT goods and services, the European consumer is more familiar with the use of English words than the average consumer). It is, therefore, highly likely that the relevant public of payment services throughout the European Union is familiar with the internationally used verb ‘pay’ and will associate it immediately with these kinds of services, i.e. financial and payment services. Thus, the relevant public for financial services throughout the European Union will understand the concept ‘pay’ of the conflicting signs as having a very low distinctive character, if any, for those services.

The same holds true insofar as some of the payment related goods in Class 9 are concerned, such as encoded payment cards. On the other hand, the contested sign also covers, inter alia, computer programs and different types of data carriers in Class 9. In comparison with the payment services in Class 36, there is no direct link between the meaning of ‘PAY’ and those goods for example. Accordingly, the common element ‘PAY’ of the conflicting signs enjoys, for example, a higher degree of inherent distinctiveness for those goods than for the payment services in Class 36.

For the sake of completeness, it should be pointed out that the Opposition Division does not concur with the applicant’s allegations that the relevant public will perceive the digit ‘2’ followed by the letter ‘D’ in the contested sign in relation to the goods and services at stake as an abbreviation stemming from the English word ‘today’. This assumption is as farfetched as regards the possibility that the relevant public would perceive this element as an abbreviation of the terms ‘Two Dimensional’. Even if these scenarios were the case, a part of the relevant public, will perceive the element ‘2D’ as a simple combination of the digit ‘2’ and the letter ‘D’. Consequently, the Opposition Division will focus its assessment on the latter part of the public which is more prone to confusion.

Visually, in the first place, it must be pointed out that both are word signs. To this extent, it should be mentioned that as both signs are word marks it is irrelevant whether they are written in lowercase or uppercase letters or a combination of both (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57).  The signs coincide in ‘PAY2’ whereas differ in the last letter, i.e. ‘n’ vs ‘D’, respectively. Due to the same length of the signs, the consumers are less likely to notice differences, especially those encountered at the end of the signs. At this point it should be pointed out that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Whilst considering the previous assertions regarding the distinctiveness of the common element ‘PAY’, it is still true that the slight (one letter) differences at the end of the marks, under comparison cannot overcome the finding of at least an average degree of visual similarity between the signs.

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 term ‘P-A-Y’ and the digit ‘2’, the latter depending on the consumer’s language bearing a different sound. Nonetheless, it cannot be excluded that the majority of the relevant public understanding the English word ‘PAY’, as referred to above, would pronounce the following digit in English as ‘two’. The pronunciation differs in the sound of the last letter of the signs, i.e. ‘n’ vs ‘D’, where the consumer usually focuses less, and amidst identical sounds of the beginnings, they are less audibly perceptible. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs, taken as a whole, refer to the notion of ‘pay’, thus taking into account the distinctive issues, the digit ‘2’, bearing in mind the differentiating concept of the single letters ‘N’/’D’, the signs are conceptually similar overall to a low degree.

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. Even considering what was stated in section c) of this decision, the distinctiveness of the earlier mark as a whole is normal.

5. Global assessment, other arguments and conclusion

The goods and services have been found partially identical, partially similar to different degrees and partially dissimilar. The earlier mark, as a whole, has a normal degree of distinctiveness. The signs are visually similar to at least an average degree whereas aurally the signs are similar to a high degree. From the semantic perspective, the signs are similar to a low degree. The relevant public is the public at large and/or the professional public whose level of attention is high.

Therefore, there is a likelihood of confusion even for the professional public with a high level of attention. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical. In the present case, the overall impression of the marks is also rather similar, as the coinciding term is followed in both marks by the number ‘2’ and a letter.

Regarding the difference in the final letters ’n’ or ‘D’, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand of the opponent, bearing the letter ‘D’, being a variation of the earlier mark configured in a different way according to the type of goods and services which it designates. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common element, ‘PAY2’, in order to distinguish various lines from one another. It is, therefore, conceivable that the targeted public may regard the goods and services designated by the trade marks as belonging to two ranges of goods and services coming, nonetheless, from the same undertaking.

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, in the case at hand, the similarity of the marks is sufficiently high to offset the low degree of similarity of some goods in Class 9, bearing in mind that in relation to those goods the distinctiveness of the common element ‘PAY’ is seen as normal.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public, and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 10 995 421. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical or similar to different degrees to those of the earlier trade mark.

The opposition is not successful insofar as the goods that are dissimilar are concerned, namely those in Class 16. 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.

 

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

Chantal VAN RIEL

Klaudia MISZTAL

Vít MAHELKA

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.