OPPOSITION No B 2 977 141

F-Secure Corporation, Tammasaarenkatu 7, FI00180 Helsinki, Finland (opponent), represented by Jarkko Konola, Elektroniikkatie 3, FI90590 Oulu, Finland (professional representative)

a g a i n s t

Samsung Electronics Co., LTD., 129 Samsung-ro, Yeongtong-gu - Suwon-si, Gyeonggi-do, Republic of Korea (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU, London, United Kingdom (professional representative).

On 30/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 977 141 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 265 621 for the word mark ‘S Secure’, namely against all the goods in Class 9. The opposition is based on:

1. European Union trade mark registration No 731 950 ‘F-SECURE’,

2. European Union trade mark registration No 3 764 041 ‘F-SECURE;

3. European Union trade mark registration No 15 348 295 ‘F-Secure’.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMIARY REMARK ON PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

In its observations, received by the Office on 31/08/2018, the applicant requested that the opponent submit proof of use of European Union trade mark No 731 950 ‘F-SECURE’ and European Union trade mark No 3 764 041 ‘F-SECURE’.

However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. Therefore, as the Office informed both parties in its communication of 28/11/2018, the request for proof of use is rejected as inadmissible pursuant to Article 10(1) EUTMDR.

On 03/12/2018, the applicant submitted a second request for proof of use in relation to European Union trade mark No 731 950 ‘F-SECURE’ and European Union trade mark No 3 764 041 ‘F-SECURE’, but in a separate document.

However, as the Office stated in its communication of 20/06/2018, the time limit for the applicant to submit observations in reply to the opposition (including request for proof of use) was until 30/09/2018. Therefore, as the Office informed both parties in its communication of 13/12/2018, that the documents submitted by the applicant on 03/12/2018 would not be taken into account as they were not received within the time limit, in accordance with Article 8(2), (3) and (4) EUTMDR.

Therefore, both requests for proof of use submitted by the applicant are not admissible pursuant to Article 10(1) EUTMDR.

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:

1. European Union trade mark registration No 731 950 ‘F-SECURE’

Class 9: Data processing equipment and computers.

Class 42: Computer programming.

2. European Union trade mark registration No 3 764 041 ‘F-SECURE’

Class 9: Software solutions for workstations, servers, network and internet use security, including encryption, anti-virus, content filtering and data security software.

Class 42: Designing, providing and updating software solutions including encryption, anti-virus, content filtering and data security software solutions for workstations, servers, network and internet use security; providing computer and information technology data security services; providing information on issues related to data security.

3. European Union trade mark registration No 15 348 295 ‘F-Secure’

Class 9: Software; computer antivirus software; privacy protection software; downloadable computer security software; computer software for encryption; software for mobile device management; wireless routers; computer network routers.

Class 38: Providing virtual private network (VPN) services; secure e-mail services; providing access to databases; providing user access to information on the internet; communication via virtual private networks.

Class 42: Monitoring of network systems; computer system monitoring services; computer security system monitoring services; updating of computer software relating to computer security and prevention of computer risks; computer virus protection services; IT consultancy, advisory and information services; professional consultancy relating to computer security.

The contested goods are the following:

Class 9: Downloadable computer security software; integrated circuits; digital computer chip for security; chips [integrated circuits]; computer software for providing security to networks; computer application software for security for mobile phone; computer application software for security for tablet computers; computer application software for security for portable media players; computer application software for security for handheld computer; software.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, used in the list of goods and services of the opponent’s European Union trade mark registration No 3 764 041, indicates that the specific goods or 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).

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.

The contested downloadable computer security software; computer software for providing security to networks; computer application software for security for mobile phone; computer application software for security for tablet computers; computer application software for security for portable media players; computer application software for security for handheld computer; software are identical to the opponent’s software; computer antivirus software; downloadable computer security software of European Union trade mark registration No 15 348 295, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with the contested goods.

The contested integrated circuits; digital computer chip for security; chips [integrated circuits], also called microelectronic circuit, microchip, or chip, is an assembly of electronic components, fabricated as a single unit, in which miniaturised active devices (e.g. transistors and diodes) and passive devices (e.g. capacitors and resistors) and their interconnections are built on a thin substrate of semiconductor material (typically silicon). The resulting circuit is a small monolithic ‘chip’, which may be as small as a few square centimetres or only a few square millimetres (information extracted from Encyclopaedia Britannica Academic on 20/09/2019 at https://academic.eb.com/levels/collegiate/article/integrated-circuit/106026). These contested goods do not have sufficient in common to be found similar to the opponent’s goods and services in Classes 9 (software; data processing equipment and computers), Class 38 (providing virtual private network (VPN) services, access to databases/information on the internet; secure e-mail services and communication via virtual private networks) and Class 42 (computer programming; designing, providing and updating software solutions; information and data security services; monitoring of network systems and IT consultancy services).

The Opposition Division considers that the manufacturers of integrated circuits and manufacturers/providers of the abovementioned opponent’s goods and services are not usually the same. Even taking into account large companies that can be active in a number of fields in relation to electronic devices and/or their components, as is explained in the Guidelines for Examination in the Office, Part C, Comparison of Goods and Services, Section 3.2.8 Usual origin (producer/provider), ‘the criterion ‘usual origin’ has to be applied in a restrictive way in order not to dilute it. If all kinds of goods/services deriving from one large (multinational) company or holding were found to have the same origin, this factor would lose its significance’.

Moreover, the abovementioned contested goods are directed at the professional public in the fields of electric/electronic components and/or manufacturers of electronic equipment exclusively; whereas the opponent’s goods target the general public looking for security software solutions for their computers and professionals looking for security software solutions for their computer networks/systems. Even though there might be some overlap in the consumers as far as the professional public is concerned, this is not sufficient to reach a conclusion that the goods and services in question target, on the whole, the same part of the public. Therefore, the relevant publics in the present case are not the same. Since the relevant public differs, it is rather unlikely that these goods will be provided via the same distribution channels. Furthermore, the goods for different publics cannot be complementary (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30).

In addition, the abovementioned very specific contested goods have clearly different natures and purposes from the opponent’s goods and services. The mere fact that the contested goods can be incorporated in the opponent’s goods, such as data processing equipment and computers, is insufficient by itself to find similarity between them, since in most cases, the fact that one product is used for the manufacture of another will not be sufficient in itself to demobstrate that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). The same applies in relation to the opponent’s services, which have clearly different natures and purposes from the very specific contested goods. Furthermore, the method of use usually depends on the nature and purpose of the goods and services. Given that the natures and purposes of the goods and services under comparison are clearly different, their methods of use must also be considered different.

Taking all the above into account, it can be concluded that the abovementioned contested goods have different natures, purposes and methods of use from the opponent’s goods and services in Classes 9, 38 and 42. Furthermore, they are not commonly produced by the same companies, they target different relevant publics and they have different distribution channels. These goods and services are neither in competition nor complementary. Therefore, contrary to the opponent’s assertions, they are considered dissimilar.

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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. While professionals have, by definition, a higher degree of attention than the average consumer (12/01/2006, T‑147/03, Quantum, EU:T:2006:10, § 62), the degree of attention of the non-professional part of the public may vary from average to high, depending on the technical level of the goods, the frequency of purchase and their price (05/05/2015, T‑423/12, Skype / SKY et al., EU:T:2015:260, § 22; 27/03/2014, T‑554/12, AAVA MOBILE / JAVA , EU:T:2014:158, § 27; 08/09/2011, T‑525/09, Metronia, EU:T:2011:437, § 37). In the present case, the goods at issue are mainly specialised software related to security, which is usually chosen attentively when purchased and may be quite expensive. Therefore, contrary to the opponent’s assertions, the degree of attention of the relevant public, either the general public or a professional one, is considered to be relatively high.

3. The signs

F-SECURE F-Secure	S Secure
Earlier trade marks	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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier marks and the contested sign are word marks, composed of one letter, ‘F’ or ‘S’ respectively, followed by the word ‘Secure’, separated by hyphens in the earlier marks and by a space in the contested sign. The protection offered by the registration of word marks apply to the words stated in the application for registration and not to the individual graphic or stylistic characteristics which those marks might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper case or a combination of upper- and lower-case letters, as is the case with the contested sign and one of the earlier marks.

The word ‘Secure’, present in all the signs and clearly perceptible as a separate word, will be understood by the relevant public as meaning ‘certain to remain safe and unthreatened’ or more specific: ‘protected against attack or other criminal activity’ (information extracted from LEXICO Powered by Oxford on 20/09/2019 at https://www.lexico.com/en/definition/secure/). Although this is an English word, it is considered that the relevant professional public is more familiar with the use of technical or basic English vocabulary than the average consumer, irrespective of territory (27/11/2007, T‑434/05, Activy Media Gateway, EU:T:2007:359, § 38). Moreover, taking into account that the goods in question are software in which the use of English is very common and, more precisely, specialised security software which is chosen attentively and with prior considerations, it is reasonable to assume that the meaning of the word ‘Secure’ will be understood by both the public at large and the professional public throughout the European Union, irrespective of their native language. In relation to the goods in question, the word ‘Secure’ will be primarily understood as a direct reference to their intended purpose, namely that the goods are to protect devices, networks or other electronic systems against threats (such as viruses, unauthorised accesses and other potential harms) and is, therefore, non-distinctive.

According to the established practice of the Office, single letters convey concepts. Therefore, the public in the relevant territory will perceive the letter ‘F’ in the earlier marks and the letter ‘S’ in the contested sign as letters of the Latin alphabet (08/05/2012, T‑101/11, G, EU:T:2012:223, § 56). However, since the letter ‘S’ of the contested sign coincides with the first letter of the verbal element ‘Secure’, it cannot be excluded that the relevant public may link the letter ‘S’ with this word. In any case, as the letter ‘S’, as such, is not a common abbreviation for ‘secure’ or ‘software’, it is inherently distinctive. The same applies to the letter ‘F’ of the earlier marks, which does not directly refer or allude to any characteristics of the goods in question. The hyphen in the earlier marks is a mere punctuation mark separating the letter from the word and will not be attributed any trade mark significance by the relevant consumers. Therefore, the letters ‘F’ and ‘S’ are the only distinctive elements in the earlier marks and the contested sign respectively.

Visually and aurally, the earlier marks and the contested sign coincide in their non-distinctive verbal element ‘Secure’. The signs differ in the letter ‘F’ at the beginning of the earlier marks and ‘S’ at the beginning of the contested sign. The signs also differ in the way the two elements (the letter and verbal) are separated in the marks, namely, a hyphen in the earlier marks and a space in the contested sign.

For the assessment of similarity, the degree of distinctiveness of the common element must be taken into account. The more distinctive the common element is, the higher the degree of similarity in each aspect of the comparison can be established. Although the signs, when considered as a whole, are of the same length and have similar structures, they clearly differ visually in their only distinctive elements, ‘F’ of the earlier marks and ‘S’ of the contested sign, which, moreover, are at the beginning of the marks and will be the first to catch the consumers’ attention. Contrary to the opponent’s assertions, the Opposition Division does not consider that, when pronounced, the letters ‘F’ and ‘S’ may be easily confused as they both are unvoiced consonants. Although the letters ‘F’ and ‘S’ are consonants, they have clearly perceptible aural differences, which is even more relevant taking into account that these elements are the only distinctive elements in the signs under comparison and the relevant public attention will focus on them as they are at the beginning of the signs.

Taking into account all the above and the fact that the only coinciding verbal element ‘Secure’ is non-distinctive, at most a low degree of visual and aural similarity can be established between the marks in question.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs coincide only in the concept conveyed by their non-distinctive verbal element, ‘Secure’, they are conceptually similar to a low degree at most.

As the signs have been found similar to a low degree 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 initially did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation, nor did it invoke Article 8(5) EUTM in the notice of opposition, which would constitute an implicit claim of enhanced distinctiveness. However, in its observations of 12/11/2018, in reply to the applicant’s observations, the opponent submitted evidence of proof of use and, in addition, claimed that its marks have acquired reputation or, at least, enhanced distinctiveness due to their extensive use and recognition on the cyber security market, both within the general public and business consumers.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

In the present case, on 25/01/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After further extension, this time limit expired on 30/07/2018. The opponent did not submit any evidence of enhanced distinctiveness of the earlier marks.

Therefore, the opponent’s evidence submitted on 12/11/2018 was late, as it was submitted after the expiry of the abovementioned time limit.

Even though, according to Article 7(2) EUTMDR, the opponent has to provide evidence of substantiation within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

According to Article 8(5) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office facts or evidence that supplement prior relevant facts or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. However, according to Article 8(5) EUTMDR, the Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement. It follows that no discretionary power is available, if the late facts or evidence intend to prove a legal requirement for which no initial evidence had been submitted.

In the present case, no initial evidence was submitted by the opponent within the set time limit to support its claim of enhanced distinctiveness in relation to the earlier marks. It follows that no discretionary power is available, as the late evidence intends to prove a legal requirement for which no initial evidence had been submitted. Therefore, the evidence submitted by the opponent on 12/11/2018, after expiry of the time limit, cannot be taken into account.

Considering all the above, the opponent’s claim of enhanced distinctiveness must be rejected as unfounded.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no clear descriptive meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non‑distinctive element in the marks, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

As concluded above, the contested goods are identical or dissimilar to the opponent’s goods and services. The relevant goods target the public at large and a professional public whose degree of attention is relatively high. The degree of distinctiveness of the earlier marks is average.

The earlier marks and the contested sign are similar insofar as they have the verbal element ‘Secure’ in common. However, as explained in section c), this commonality only leads to — at most — a low degree of visual, aural and conceptual similarity as this element is non-distinctive in all the marks. Taking into account that the earlier marks and the contested sign clearly differ in their distinctive elements, the mere coincidence in the non-distinctive element will not lead to a likelihood of confusion. Therefore, it can be concluded that differences between the earlier marks and the contested sign outweigh the similarities. Consequently, it can be safely assumed that the relevant consumers, with a higher degree of attention, and even taking into account the abovementioned principle of interdependence and identity of the goods, will not confuse the marks in question and will not be led to believe that the goods at issue come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irina SOTIROVA

Rasa BARAKAUSKIENE

Ferenc GAZDA

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.