PayKwik | Decision 2624529
Date Published: May 15, 2018
OPPOSITION No B 2 624 529
Tesco Stores Limited,Tesco House, Shire Park, Kestrel Way, Welwyn Garden City Hertfordshire AL7 1GA United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)
a g a i n s t
XaltPay LTD, 145-157 St. John Street, London EC1V 4PW, United Kingdom (applicant).
On 13/01/2017, the Opposition Division takes the following
1. Opposition No B 2 624 529 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 534 713 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 534 713. The opposition is based on, inter alia, European Union trade mark registration No 12 478 665. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 478 665.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Computer software.
Class 36: Financial affairs.
Class 42: IT services.
The contested goods and services are the following:
Class 9: Computer software relating to the handling of financial transactions.
Class 36: Execution of financial transactions (Services for the -).
Class 42: Provision of security services for computer networks, computer access and computerised transactions.
Contested goods in Class 9
The contested computer software relating to the handling of financial transactions is included in the broad category of the opponent’s computer software. Therefore, they are identical.
Contested services in Class 36
The contested execution of financial transactions (services for the -) are included in the broad category of the opponent’s financial affairs. Therefore, they are identical.
Contested services in Class 42
The contested provision of security services for computer networks, computer access and computerised transactions are included in the broad category of the opponent’s IT services. Therefore, they are identical.
- 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 are directed at both the public at large and also at business customers with specific professional knowledge or expertise. Bearing in mind that the goods and services at issue are IT security services and specialised goods and services that may have important financial consequences for their users, the consumers’ level of attention would be rather high when choosing them.
- The signs
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is the word mark ‘PAYQWIQ’.
The contested sign is a figurative mark consisting of the word ‘PayKwik’ written in slightly stylized letters and a colour combination from which two word elements can be clearly distinguished, namely the first element ‘Pay’, written with a capital white ‘P’ on top of a blue circle and the letters ‘ay’ in blue small case letters and a second element, ‘Kwik’, in orange letters with a capital ‘K’.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57).
In this sense, it is likely that the relevant public will break both the earlier sign and the contested mark into two elements, namely ‘PAY’ and ‘QWIQ’ the former, and ‘Pay’ and ‘Kwik’ the latter.
The first element of both marks, the English verb ‘PAY’, means ‘to settle (a debt, etc.) by handing over money or goods or by doing something’ (information extracted from Wordreference.com dictionary on-line on 09/01/2017 at http://www.wordreference.com/definition/pay). Therefore, this element has a weak distinctive character concerning the goods and services to the extent that they relate or may be related to financial affairs and transactions.
Regarding the second elements of the signs in conflict, namely, ‘QWIQ’ in the earlier mark and ‘Kwik’ in the contested sign, it is highly likely that they will both be perceived as the word ‘quick’, due to their close resemblance with this English adjective, which means ‘done, proceeding or occurring with promptness or rapidity; completed in a short time’ (information extracted from Wordreference.com dictionary on-line on 09/01/2017 at http://www.wordreference.com/definition/quick). This adjective conveys a positive and laudatory message in relation to the goods and services at issue because it transmits that they are provided within short time. Therefore, this word, as such, is non-distinctive in this context. However, since in the marks in conflict it is written in a fanciful manner, as indicated already, the distinctive character of these two terms is slightly below the average.
In accordance with the definitions provided above, the elements composing the marks in conflict convey the same message to the relevant public, namely ‘to hand over money with promptness’. Therefore, this message alludes to a positive or even laudatory quality of the goods and services as well as to their subject matter transmitting that these goods and services concern or relate to the provision of money in a short time. Therefore, the distinctive character of the trade marks in conflict is slightly below the average in relation to the goods and services at issue.
The colour combination and the blue circle contained in the contested sign are of a purely decorative nature.
Neither of the signs at issue has any elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in their first word element ‘PAY’ and in their 5th and 6th letters ‘wi’, placed in the same position. However, they differ in their 4th and 7th letters, namely ‘Q**Q’ in the earlier mark and ‘K**K’ in the contested sign and in the colour combination and slight stylization of the letters in which the latter is represented.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are similar to a low degree.
Aurally, the pronunciation of the signs is identical because the letters ‘Q’ and ‘K’, which are the only differing letters in the marks, have the same phonetic sound.
Therefore, the signs are identical.
Conceptually, as already explained above, the public in the relevant territory will perceive the same message from both the earlier sign and the contested mark which transmits positive laudatory information in relation to the quality of the goods and services at issue and also of the subject matter of the goods and services related to financial affairs, namely, that they concern the provision of money in a short time. Therefore, the signs are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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, considering the explanations provided in section c) of this decision, the distinctiveness of the earlier mark must be seen as slightly below normal due to the allusive message it conveys in relation to the goods and services at issue.
- Global assessment, other arguments and conclusion
The goods and services in conflict are identical. The relevant public’s level of attention will be high. The signs are visually similar to a low degree and aurally and conceptually identical.
In the present case, the marks in conflict coincide in their first element, ‘PAY’ and in the letters ‘wi’ of their second respective elements interspersed among the letters ‘Q**Q’ in the earlier sign and ‘K**K’ in the contested sign. Despite this difference, the differing letters have an identical sound and form the words elements ‘QWIQ’ and ‘KWIK’ which, due to their close resemblance with the English adjective ‘quick’, will be perceived with the same meaning and hence, in combination with the verb ‘PAY’, they will both convey the same message to the relevant public. The differing elements consisting of the colour combination and slight stylization of the letters forming the contested mark are of an ornamental nature and play a secondary role.
The fact that the word elements composing the signs in conflict transmit a positive or even laudatory message in relation to the quality of the goods and services as well as their subject matter is not an obstacle to analyse the likelihood of confusion, specially bearing in mind that the word combination and structure in each of the signs are both very similar.
In this sense, it must be stated that the finding that the distinctiveness of the earlier trade mark is slightly below normal does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (28/09/1998, C-39/97 Canon, ECLI:EU:C:1998:442, § 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03 L’Oréal, ECLI:EU:T:2005:102, § 61). This principle is even more applicable in the present case because the distinctiveness of the earlier mark has been found to be slightly below normal for the goods and services related to financial affairs.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, considering all the above-mentioned principles, the overall impression conveyed by the contested sign is such that even if the level of attention is high, consumers may legitimately believe that the contested sign is a new version or a new stylised brand line of goods and services, originating from the opponent.
In this sense, even consumers with a high level of attention need to rely on their imperfect recollection of trade marks ((21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 478 665. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the earlier right indicated above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine neither the other earlier rights invoked by the opponent nor the other ground of the opposition, namely Article 8(4) EUTMR.
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
Patricia LOPEZ FERNANDEZ DE CORRES
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.