OPPOSITION No B 2 981 457

Belgian Mobile ID, Sint-Goedeleplein 5, 1000 Brussel, Belgium (opponent), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170 Brussel, Belgium (professional representative)

a g a i n s t

Verisec AB, Box 3328, SE-103 66 Stockholm, Sweden (applicant), represented by Groth & Co. KB, Birger Jarlsgatan 57 B, SE-113 56 Stockholm, Sweden (professional representative).

On 20/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 981 457 is partially upheld, namely for the following contested goods and services listed under section a) of the present decision:

Class 9: All the contested goods in this class.

Class 36: All the contested services in this class.

Class 38: All the contested services in this class.

Class 42: All the contested services in this class.

2. European Union trade mark application No 16 641 219 is rejected for all the above goods and services. It may proceed for the remaining services.

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 16 641 219 . The opposition is based on Benelux trade mark registration No 994 230 . 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.

a) The goods and services

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

Class 9: Computer hardware, including smart cards (integrated circuit cards), computer software and applications for encryption, decryption and authentication of information, messages and data.

Class 38: Providing of secure or authenticated access to computer networks, websites, electronically accessible applications and/or computer applications; Secure data transmission via electronic means.

Class 42: Encryption, decryption and authentication of information, messages and data; development of computer software, programming and implementation of computer software, all in the field of authentication of information, messages and data; application service provider services for applications for encryption, decryption and authentication of information, messages and data; online authentication services; online computer security services including for single sign-on services; online computer security services; online authentication of electronic signatures; digital security services for IT security of electronic transactions; computer security services for restricting access, by means of computer networks, to and from websites, media and individuals; computer security services, namely for protecting computers, websites and/or databases from unauthorised access; digital security services for controlling access to computers, electronic networks, websites and/or databases; digital security for data transmission and transactions via computer networks; digital security for access to websites, computers and/or databases; security of computers, smartphones and other mobile IT applications; digital security for online transactions; providing of computer software for authentication and identity management and digital security of such computer software; online drawing up and checking of authentication certificates for electronic signatures.

The contested goods and services are the following:

Class 9: Computer software and hardware; computer software and hardware for publishing, checking, support and blocking relating to electronic identification, log-in, certification, signing and signature; computer software for encryption and authentication of data; computer software for electronic and digital identity, signature and certification; application software; application software for cloud computing services.

Class 36: Securing of debit card services.

Class 38: Telecommunications and data communications; communications for identification and signature between parties via the internet; access to electronic network services for identification and signature between parties via the internet; providing access to databases, computer networks and computer programs.

Class 42: Computer programming; design, updating and maintenance of computer software; development of computer hardware and software; it security services; it protection; it services for publishing, checking and blocking relating to electronic identification, log-in, certification, signing and signature; consultancy in the field of computers; development and providing of electronic certificate management; encryption and authentication; computer software consultancy and consultancy in the field of computer hardware; computer security consultancy; software as a service [SaaS]; electronic monitoring of personally identifying information to detect identity theft via the internet; provision of security services for computer networks, computer access and computerised transactions.

Class 45: Identity validation services; providing authentication of personal identification information [identification verification services]; publishing of e-certification; certification of completed security screening for the preparation of identity cards.

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 ‘including’, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 computing hardware is identically contained in the opponent’s list of goods.

The contested computer hardware for publishing, checking, support and blocking relating to electronic identification, log-in, certification, signing and signature is included in the broad category of the opponent’s computer hardware. Therefore, they are identical.

The contested computer software; computer software for publishing, checking, support and blocking relating to electronic identification, log-in, certification, signing and signature; computer software for encryption and authentication of data; computer software for electronic and digital identity, signature and certification; application software; application software for cloud computing services are at least similar to the opponent’s computer software and applications for encryption, decryption and authentication of information, messages and data, as they have the same nature and at least coincide in producer, relevant public and distribution channels.

Contested services in Class 36

An integrated circuit card is a type of payment or identification card that uses an embedded circuit, such as a computer chip, to store data instead of, or in addition to, a traditional magnetic stripe. Therefore, the contested securing of debit card services are at least similar to a low degree to the opponent’s computer hardware, including smart cards (integrated circuit cards) in Class 9 as they may have the same purpose. They may coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 38

The contested telecommunications and data communications; communications for identification and signature between parties via the internet include, as broader categories, or overlap with, the opponent’s secure data transmission via electronic means. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested access to electronic network services for identification and signature between parties via the internet; providing access to databases, computer networks and computer programs are identical to the opponent’s providing of secure or authenticated access to computer networks, websites, electronically accessible applications and/or computer applications because the opponent’s services include, or overlap with, the contested services.

Contested services in Class 42

The contested computer programming includes, as a broader category, the opponent’s programming of computer software, all in the field of authentication of information, messages and data. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested design, updating and maintenance of computer software; development of computer software include, as broader categories, or overlap with, the opponent’s development of computer software, programming and implementation of computer software, all in the field of authentication of information, messages and data. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested IT security services; IT protection; IT services for publishing, checking and blocking relating to electronic identification, log-in, certification, signing and signature; development and providing of electronic certificate management; computer security consultancy; electronic monitoring of personally identifying information to detect identity theft via the internet; provision of security services for computer networks, computer access and computerised transactions include, as broader categories, or overlap with, the opponent’s online computer security services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested encryption and authentication includes, as a broader category, the opponent’s encryption and authentication of information, messages and data. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested development of computer hardware; software as a service [SaaS] are similar to the opponent’s development of computer software, all in the field of authentication of information, messages and data as they usually coincide in producer, relevant public and distribution channels.

The contested consultancy in the field of computers; computer software consultancy and consultancy in the field of computer hardware are at least similar to the opponent’s development of computer software, all in the field of authentication of information, messages and data as they have the same purpose. They usually coincide in relevant public. Furthermore, they are complementary.

Contested services in Class 45

The contested identity validation services; providing authentication of personal identification information [identification verification services] are services for ensuring that there is a real person behind a process and proving that a given person is who they claim to be, preventing someone from carrying out a process in the other person’s name without authorisation, and/or creating false identities or committing fraud. The opponent’s online authentication services in Class 42 are technological services (e.g. mechanisms, analogous to the use of passwords on time-sharing systems) for the secure authentication of the identity of network clients by servers and vice versa, without presuming the integrity of the operating system. Although both services have the same purpose of identity verification, they belong to different industries and, as such, have different distribution channels and providers and have nothing else relevant in common. Therefore, they are dissimilar.

These contested services are also dissimilar to the opponent’s remaining goods and services in Classes 9 and 38 and 42 (in particular computer software and applications for encryption, decryption and authentication of information, messages and data in Class 9). Even if the contested identity validation services; providing authentication of personal identification information [identification verification services] could be rendered with the use of software, in the absence of any evidence to the contrary, it is unlikely that this software would be sold independently from the services to the same consumers and these goods and services are likely to be produced and provided by different undertakings. Furthermore, these goods and services do not have any other relevant factors in common. Therefore, these goods and services are also dissimilar.

As regards the contested publishing of e-certification; certification of completed security screening for the preparation of identity cards, these are services of certification publishing or certification services that do not have anything relevant in common that could justify finding a level of similarity between them and the opponent’s goods and services in Classes 9, 38 and 42. Therefore, they are dissimilar.

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 identical, similar or at least similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 earlier mark is a figurative sign composed of a curved line joined to a vertical line with a dot at the top, which may be perceived as a depiction of the letters ‘ID’; this is placed against a black background and above the verbal elements ‘The Belgian Mobile ID’.

The contested sign is a purple figurative sign that consists of a device composed of a curved line joined to a vertical line with a dot at the top and seven other dots forming a semi-circle that runs down the left side and finishes at the bottom.

The figurative element of the earlier mark will be perceived as a stylised depiction of the letters ‘ID’. This is probable because the letters ‘ID’, in a rather standard typeface, are included as the last word of the verbal elements depicted below it. The combination of the letters ‘ID’ refers to an identification or identity in English (information extracted from Oxford English Dictionary on 07/08/2020 at https://www.oed.com/view/Entry/90670?rskey=8Y5utY&result=2&isAdvanced=false#eid1070392). This meaning will be perceived as such since the relevant public is familiar with English in connection with IT goods and services. Bearing in mind that the relevant goods and services relate to authentication, or that an identification is required for their use, this element is weak for these goods and services as it alludes to their subject matter or to their method of access.

The verbal elements ‘The Belgian Mobile ID’ are English words, which have the following meanings:

The verbal element ‘The’ of the earlier mark is the definite article.

The earlier mark’s verbal element ‘Belgian’ refers to ‘a native or inhabitant of Belgium’ or ‘of relating to the modern state of Belgium’ (information extracted from Oxford English Dictionary on 07/08/2020 at https://www.oed.com/view/Entry/251357?redirectedFrom=belgian#eid).

The verbal element ‘Mobile’ of the earlier mark means, inter alia, ‘not fixed or stationary; capable of or characterized by movement; movable; wandering’ or ‘that uses wireless portable transmitters and receivers, rather than physical connections, to transmit and receive signals. Also: of, relating to, or involved in such communication, esp. (cellular) mobile telephony’ (information extracted from Oxford English Dictionary on 07/08/2020 at https://www.oed.com/view/Entry/120489?rskey=I9pCw6&result=6#eid).

The meaning of the verbal element ‘ID’ has been mentioned above.

These meanings will be perceived by the great majority of the relevant public, either because a significant part of the public understands English or because there are the same or similar equivalent words in their languages, namely ‘mobile’ and ‘Belge’ in French. As regards the first word ‘The’, it is a basic English word that will be understood in all Member States.

Therefore, the whole expression ‘The Belgian Mobile ID’ will be perceived as the mobile identification from Belgium. This expression is allusive of the purpose and geographical origin of the goods and the subject matter of the relevant services. Therefore, it has a weak distinctive character.

The figurative element of a black background in the earlier mark is a basic geometric form of a purely decorative nature and, therefore, non-distinctive.

The figurative element in the contested sign will be perceived at least by a part of the public as a combination of the letters ‘ID’ in a stylised typeface. For this part of the public, this element will be associated with the same meaning as regards the relevant goods and services as explained above, and is, therefore, weak.

The contested sign also includes seven purple dots forming a semicircle that runs down the left side of the letters and finishes at the bottom. These are considered purely decorative with a limited distinctiveness.

For the part of the public that will not perceive the contested sign as the combination of the letters ‘ID’ or as the depiction of another letter such as the letter ‘e’, as claimed by the applicant, the sign does not have any meaning in relation to the relevant goods and services and is, therefore, distinctive.

The figurative element depicting the letters ‘ID’ in the earlier sign is the dominant element as it is the most eye-catching.

For reasons of procedural economy the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public who perceives the contested sign as a stylised depiction of the letters ‘ID’ since for them the signs bear additional conceptual similarities.

Visually, the signs coincide in the weak element formed by the letters ‘ID’ depicted in a highly similar stylisation with the only difference residing at the bottom-left junction where the line forms the bottom of the letter ‘I’ and the upright of the letter ‘D’ (it is pointed in the earlier mark and rounded in the contested sign), and in the colours of the marks: white in the earlier mark and purple in the contested sign. The signs also differ in the additional figurative elements, namely the non-distinctive black background of the earlier mark and the seven purple dots of a limited distinctiveness of the contested sign. Moreover, the signs differ in the additional non-dominant and weak verbal elements ‘The Belgian Mobile ID’ of the earlier mark.

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

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 letters ‘ID’, present identically in both signs. The pronunciation differs in the sound of the earlier mark’s letters ‘The Belgian Mobile ID’, which due to their size and position have a secondary role.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the meaning of the element ‘ID’ of both signs, considering the weak or non-distinctive character of both, the coinciding and not coinciding elements of the marks, the signs are conceptually similar at least 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.

d) 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. Considering what has been stated above in section c) of this decision about the distinctiveness of the elements and the special stylisation of the element ‘ID’, the distinctiveness of the earlier mark must be seen as lower than average for all the goods and services in question.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar to varying degrees (including at least similar to a low degree) and partly dissimilar. They target the public at large and a professional public, whose degree of attention may vary from average to high. The earlier mark’s degree of distinctiveness is lower than average.

Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion due to, in particular, a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70; 13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 63; 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

The signs are visually similar to an average degree, aurally at least similar to an average degree and conceptually at least similar to a low degree on account of the coincidence in the weak element ‘ID’ in a highly similar stylisation.

Although a coincidence in an element with a low degree of distinctiveness will not normally, on its own lead, to a likelihood of confusion, there may be a likelihood of confusion if the other components have a lower (or equally low) degree of distinctiveness or an insignificant visual impact. In the present case, the remaining elements of the signs have the same or a lower degree of distinctiveness and/or are secondary.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the case at issue, the high similarity between the stylisation of the common letters ‘ID’ may lead the public to think that the signs, with their additional verbal and figurative elements, identify different lines of goods and services of the same undertaking.

For these reasons, it is considered that the similarities between the marks outweigh their differences. Therefore, the relevant public might be led to believe that the goods and services found to be identical or similar come from the same undertaking or economically linked undertakings. It is particularly relevant that the only verbal element of the contested sign ‘ID’ is reproduced as the dominant element in the earlier mark with an almost identical stylisation, which may in no event be considered standard or customary.

In its observations, the applicant argues that the idea of simply joining the two letters ‘I’ and ‘D’ into one unit is common practice, and therefore must be considered a generic and non-distinctive way to create an ‘ID-symbol’, and shows some examples of logos containing devices that depict the letters ‘I’ and ‘D’ joined. However, there is no reference as to if they are registered marks or signs used in the market and for what kind of goods and services they have been used. Therefore, on the basis of the data provided by the applicant only, it cannot be assumed that all these trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘ID’ in this stylised manner. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that perceives the letters ‘ID’ in both signs and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration. Although it cannot be excluded that part of the relevant public would not perceive the contested sign as depicting ‘ID’, there is no need to establish that all actual or potential consumers of the relevant goods and services are likely to be confused. If a significant part of the relevant public may be confused about the origin of the goods and services (as is the case here), this is sufficient.

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

The opposition is also successful insofar as the services that are at least similar to a low degree are concerned, since the significant coincidences between the marks are enough to outweigh the low similarity of those services.

The rest of the contested 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 services cannot be successful.

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.

The Opposition Division

Rosario GURRIERI

Victoria DAFAUCE MENENDEZ

Mads Bjørn Georg JENSEN

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.