OPPOSITION No B 3 047 268

ALV GmbH & Co. KG, Birkensteige 10/1, 88069, Tettnang, Germany (opponent), represented by Baker Tilly Rechtsanwaltsgesellschaft Mbh, Nymphenburger Straße 3b, 80335, München, Germany (professional representative)

a g a i n s t

Nexstgo Company Limited, Room 1602, 16/F, Enterprise Square II, No. 9 Sheung Yuet Road, Kowloon Bay, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Ralf Sieckmann, Schumannstr. 97-99, 40237 Düsseldorf, Germany (professional representative).

On 28/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 268 is upheld for all the contested goods.

2. European Union trade mark application No 17 364 506 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 364 506 for the word ‘AVITA’, namely goods in Class 9. The opposition is based on international trade mark registration No 846 194 designating the European Union for the word ‘AVIRA’. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

SUBSTANTIATION

In its observations, the applicant argues that the certificate provided by the opponent for its earlier mark does not include its validity and scope and that, therefore, the opposition should be rejected as unfounded.

According to Article 7(2) EUTMDR, within the period to submit the facts, evidence and arguments in support of its opposition, the opposing party must file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, by ticking the corresponding case in the notice of opposition, the opponent formally declared that it relied on online evidence from the relevant online official database, and that this online evidence is used for substantiation purposes.

The Opposition Division accessed the relevant online official database to confirm the existence, validity and scope of protection of the earlier mark as well as the opponent’s entitlement to file the opposition and considers that the opposition is duly substantiated.

Therefore, the applicant’s arguments must be rejected as unfounded.

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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, ‘AVIRA’.

The date of filing of the contested application is 19/10/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 19/10/2012 to 18/10/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9: Computer programs and parts and accessories therefore, namely subprograms, program modules, program generators, support software and interfaces for computer; data recorded on data carriers.

Class 38: Collection and supply of news and collection and transmission of data; running of an electronic information and communication system (included in this class); services of a database, services in connection with online services in the internet, namely transfer of information.

Class 41: Education; training, providing and publishing of publications using all media.

Class 42: Computer programming; technical consultation regarding use and application of the software; installation and maintenance of computer software; services of a software company, namely construction, design, programming, updating, maintenance and installation of software, system analysis and consultation for application regarding software, as well as consultation, support and design of data structures and their modification; services in connection with the internet, namely design and maintenance of programs for use in the internet and/or for use of the internet as well as consultation concerning the use and further development of such programs.

Class 45: Security consultancy for protection of real value and individuals.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 03/05/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 08/07/2019 to submit evidence of use of the earlier trade mark. On 13/06/2019, within the time limit, the opponent submitted evidence of use.

Previously, along with further facts, evidence and arguments in support of the opposition, the opponent submitted evidence of reputation of its trade mark on which the opposition is based. As this evidence, presented on 15/11/2018, was submitted to the Office before the expiry of the time limit for furnishing proof of use, it has to be taken into account for the purposes of assessing the genuine use of the earlier mark, ‘AVIRA’.

Altogether, the following evidence is to be taken into account.

 Certificate of international registration No 846 194 ‘AVIRA’.

 Wikipedia article dated 07/03/2018 on the opponent describing it as a multinational security software company mainly known for their antivirus software, which, as of 2012, is estimated to have over 100 million customers. The article also mentions that in June 2012, ‘AVIRA’ ranked sixth in the antivirus market share and gives a list of awards and reviews since January 2008.

 List of ‘AVIRA’ trade mark registrations worldwide.

 Printouts from the opponent’s website dated 12/02/2018, 16/02/2018, 07/03/2018 and 10/04/2019. The material covers:

- the distribution partners of the opponent’s products worldwide and in Germany;

- its strategic partners (all in the technology market) and its reference customers;

- the awards and certifications obtained between June 2004 and February 2018;

- excerpts of articles published in online newspapers and magazines from 2008 to 2018. The articles are mostly in German and no translation is provided, but the word ‘antivirus’ is recurrent. One article, dated 29/10/2015, is in English and offers an extensive review of ‘AVIRA’ antivirus pros and cons, its functionalities, the pricing, etc;

- a map and a list of threats detected by ‘AVIRA’ antivirus solutions;

- press materials for promotional use;

- downloadable products and services;

- security wordbook and virus lab;

- ‘AVIRA’ list of products.

 document entitled ‘Visual communication, brand guidelines for partners and distributors’.

 printout from whois.com regarding avira.com domain name registration.

 printouts from the opponent’s Facebook page (1 145 000 visitors), Google+ and Twitter accounts (25 107 and 20 600 followers respectively), and the opponent’s blog.

 printouts from FNAC and SATURN online shops with ‘AVIRA’ goods on sale. The pages are in French and German respectively, but they show products marked ‘AVIRA’.

 25 invoices to clients in Austria, France, Germany, Greece, Italy and the UK from 02/12/2010 to 31/07/2018 for the sale of ‘AVIRA’ goods.

 six invoices for advertising and sponsorship costs for the marketing of ‘AVIRA’ goods in Germany and Greece from 24/01/2014 to 10/09/2018.

The applicant argues that the opponent did not submit translations of some of the evidence of use, for example, the excerpts of articles or the lists of distribution partners, and that, therefore, this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office. Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings and their self-explanatory character, as the word ‘antivirus’ is recurrent or as they only show names and addresses, the Opposition Division considers that there is no need to request a translation.

Furthermore, the applicant argues that the map and list of threats detected by ‘AVIRA’ antivirus solutions and the printouts from FNAC and SATURN online shops are hardly readable. However, the Opposition Division considers that at least the trade mark ‘AVIRA’ is sufficiently visible in those documents.

The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The opponent’s website and the invoices show that the place of use is at least Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The opponent’s website and the invoices also provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Therefore, the evidence shows that the mark has been used in accordance with its function and as registered for at least some of the goods and services for which it is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory. The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates mainly to Germany. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

The evidence indicates that the opponent is a software company that offers ‘AVIRA’ as a product portfolio with professional software solutions and IT-security services for data and network protection. The opponent’s goods are solutions for protection, privacy, speed-enhancing applications and performance, design to satisfy diverse needs, intended for multiple IT devices and offered in different formats to secure program, network, server and email. The ‘AVIRA’ software solutions could each be considered as a sub-program or a program module of a larger system for IT security, which also has support software and interfaces for computer.

Therefore, in the present case, the evidence shows genuine use of the trade mark only for the following goods and services:

Class 9: Computer programs and parts and accessories therefore, namely subprograms, program modules, program generators, support software and interfaces for computer.

Class 38: Services of a database, services in connection with online services in the internet, namely transfer of information.

Class 42: Computer programming; technical consultation regarding use and application of the software; installation and maintenance of computer software; services of a software company, namely construction, design, programming, updating, maintenance and installation of software, system analysis and consultation for application regarding software, as well as consultation, support and design of data structures and their modification; services in connection with the internet, namely design and maintenance of programs for use in the internet and/or for use of the internet as well as consultation concerning the use and further development of such programs.

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

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 programs and parts and accessories therefore, namely subprograms, program modules, program generators, support software and interfaces for computer.

Class 38: Services of a database, services in connection with online services in the internet, namely transfer of information.

Class 42: Computer programming; technical consultation regarding use and application of the software; installation and maintenance of computer software; services of a software company, namely construction, design, programming, updating, maintenance and installation of software, system analysis and consultation for application regarding software, as well as consultation, support and design of data structures and their modification; services in connection with the internet, namely design and maintenance of programs for use in the internet and/or for use of the internet as well as consultation concerning the use and further development of such programs.

The contested goods are the following:

Class 9: Personal computers; notebook computers; laptop computers; tablet computers; detachable/convertible laptop computers; computer monitors; all-in-one personal computers; network attached storage device; smartphones; smart watches; headphones; earphones; wireless earphones; wireless headphones; media players; portable media players; DVD players; compact-disc players; optical disc players and recorders for audio, video and computer data; digital audio players; wireless loud speakers; computer loud speakers; loud speakers; soundbars; hard-disk drives; computer mouses; computer keyboards; solid state drives; routers.

An interpretation of the wording of the list of the opponent’s goods and services is required to determine the scope of protection of these goods and services, as the term ‘namely’ shows the relationship of individual goods and services to a broader category. It is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 goods are different types of computers, smartphones and smartwatches, computers peripheral components and accessories such as data storage devices, and apparatus and instruments for recording, transmitting and reproducing sound, images or data.

In the applicant’s opinion, not all the contested goods require software to run properly and are therefore not complementary to the opponent’s goods, and it refers to a previous judgment (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379) to support its arguments. However, the goods compared in the previous case are not comparable to the goods at issue in the current case. It follows that the applicant’s arguments must be set aside.

Irrespective of the complementarity factor between the contested and the opponent’s goods in Class 9, the fact is that these goods are similar, as they serve to run or to store software, give access to the internet and allow the download and use of software products. Therefore, at least, they usually coincide in producer, relevant public and distribution channels.

Additionally, the contested personal computers; notebook computers; laptop computers; tablet computers; detachable/convertible laptop computers; all-in-one personal computers; smartphones; smart watches are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate and, therefore, are closely linked to the opponent’s computer programming services in Class 42. This is because manufacturers of computers and/or software will also commonly provide computer- and/or software-related services (e.g. as a means of keeping the system updated). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

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 found to be similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise in informatics.

The degree of attention will vary from average to high, considering the degree of specialisation, the frequency of purchase and the security implications of some of the relevant goods purchased.

c) Distinctiveness of the earlier mark and the comparison of signs

AVIRA	AVITA
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).

In addition, 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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The applicant claims that (part of) the verbal elements constituting the signs could have meanings in certain territories, for example in those countries where Italian, Portuguese and Spanish are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, such as in Germany.

Irrespective of the enhanced distinctive character claimed by the opponent for some of its goods and services, it is necessary to examine its inherent distinctive character within the comparison of signs, given the strong impact that this has on their similarity.

The verbal element ‘AVIRA’ in the earlier mark has no meaning in German and is, therefore, distinctive.

The contested sign is the verbal element ‘AVITA’, which also has no meaning in German and is, therefore, distinctive.

Therefore, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of similarity of the marks.

Visually and aurally, the signs coincide in the letters/sounds ‘A-V-I-*-A’. They differ in their fourth letter/sound, ‘R’ of the earlier mark and ‘T’ of the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Considering that the only difference lies in the penultimate letter/sound of the signs, they are visually and aurally similar to a high 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) 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).

The goods are similar and target both professionals and the public at large; the degree of attention will vary from average to high. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to a high degree and, as a conceptual comparison is not possible, the conceptual aspect has no influence on the assessment of their similarity. Therefore, the signs have no concepts that could serve to deflect consumers’ attention from their visual and aural similarities.

The signs coincide in the majority of their letters, namely in four letters out of five. Moreover, these four letters are identically positioned and their vowel sequence, ‘A-I-A’ is the same. The signs differ only in their fourth letter (R/T), which, due to its position, the identical beginning and same ending, is in the parts of the signs with the least impact.

The applicant claims that the signs are rather short and that, therefore, the public will be able to perceive all of their elements. The Opposition Division does not share this view as the signs are composed of more than three letters.

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). Furthermore, consumers normally perceive a mark as a whole and do not analyse its details.

Considering all the above, the Opposition Division concludes that the overall impression given by the signs is similar and that there is a likelihood of confusion on the part of the German-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 international trade mark registration No 846 194 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 the other ground of the opposition, namely Article 8(5) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

Solveiga BIEZA

Loreto URRACA LUQUE

Birute SATAITE-GONZALEZ

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.