OPPOSITION No B 3 049 100

Covr Security AB, Adelgatan 5, 211 22, Malmö, Sweden (opponent), represented by Synch Advokat AB, Birger Jarlsgatan 6 P.O. Box 3631, 103 59, Stockholm, Sweden (professional representative)

a g a i n s t

Covomo Versicherungsvergleich GmbH, Rotfeder-Ring 5, 60327 Frankfurt a.M., Germany (applicant), represented by Rechtsanwälte Rohwedder & Partner, Kaiserstr. 74, 55116 Mainz, Germany (professional representative).

On 28/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 100 is partially upheld, namely for the following contested services:

Class 35: Business analysis, research and information services; business assistance, management and administrative services; administration of newspaper subscription [for others]; administrative order processing; administrative processing and organising of mail order services; administrative processing of computerized purchase orders; administrative processing of purchase orders; administrative processing of purchase orders placed by telephone or computer; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of warranty claims; administrative services relating to dental health insurance; administrative services relating to employee stock plans; administrative services relating to the referral of clients to lawyers; administrative services relating to the referral of patients; administrative services relating to warranty claims processing.

Class 36: Financial and monetary services, and banking; fundraising and sponsorship; insurance services; provision of prepaid cards and tokens; safe deposit services; valuation services; insurance underwriting.

Class 42: Design services; science and technology services; IT services.

2. European Union trade mark application No 17 595 001 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 595 001 for the figurative mark . The opposition is based on European Union trade mark registration No 15 523 665 for the word mark ‘Covr’. 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: Software; computer programs [downloadable software]; application software; downloadable applications for use with mobile devices; software for tablet computers; computer software relating to the handling of financial transactions; computer software for checking data integrity; computer software for electronic identity and signature; computer programmes for data processing; programs for computers; computer software for publishing, checking, support and blocking relating to electronic identification, log-in, signing and signature; computer software for encryption and authentication of data; software for facilitating secure credit card transactions; software for ensuring the security of electronic mail.

Class 35: Data processing and verification; automated data processing; on-line data processing services; computerised data verification; information services relating to data processing.

Class 36: Debit card validation services; securing of debit card services; securing of payments for banks; securing of payment transactions for others.

Class 38: Telecommunication services; access to electronic network services for identification and signature between parties via the internet; communications for identification and signature between parties via the internet; providing access to databases intended for publishing, checking and support relating to electronic identification, signing and signature; computer communications services for the transmission of information; providing user access to information on the internet; providing user access to platforms on the internet; providing user access to portals on the internet.

Class 42: Development of computer software application solutions; provision of security services for computer networks, computer access and computerised transactions; software design and development; encryption, decryption and authentication of information, messages and data; software as a service [SaaS].

The contested services are the following:

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; auctioneering services; rental of vending machines; administration of newspaper subscription [for others]; administrative order processing; administrative processing and organising of mail order services; administrative processing of computerized purchase orders; administrative processing of purchase orders; administrative processing of purchase orders placed by telephone or computer; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of warranty claims; administrative services relating to dental health insurance; administrative services relating to employee stock plans; administrative services relating to the referral of clients to lawyers; administrative services relating to the referral of patients; administrative services relating to warranty claims processing; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; advice relating to barter trade; advisory and consultancy services relating to the procurement of goods for others; advisory services relating to commercial transactions; advisory services relating to the ordering of stationery; advisory services relating to the purchase of goods on behalf of business; advisory services relating to the purchase of goods on behalf of others; arranging and conducting sales events for others of livestock and registered and commercial cattle.

Class 36: Financial and monetary services, and banking; fundraising and sponsorship; insurance services; provision of prepaid cards and tokens; real estate services; safe deposit services; valuation services; insurance underwriting.

Class 42: Design services; science and technology services; testing, authentication and quality control; IT services.

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 services in Class 35

The contested administrative order processing; administrative processing and organising of mail order services; administrative processing of computerized purchase orders; administrative processing of purchase orders; administrative processing of purchase orders placed by telephone or computer; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of warranty claims; administrative services relating to warranty claims processing are services concerning the administrative processing of data. These services are identical to the opponent’s data processing because the opponent’s services include, are included in, or overlap with, the contested services.

The contested business analysis, research and information services includes, as a broader category the opponent’s information services relating to data processing. 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 business assistance, management and administrative services are at least similar to a low degree to the opponent’s data processing as they coincide, at least, in producer and relevant public.

The contested administration of newspaper subscription [for others]; administrative services relating to dental health insurance; administrative services relating to employee stock plans; administrative services relating to the referral of clients to lawyers; administrative services relating to the referral of patients are services related to business administration and are similar to a low degree with the opponent’s data processing as they have the same purpose. They usually coincide in producer and relevant public.

The contested advertising, marketing and promotional services; auctioneering services; rental of vending machines; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; advice relating to barter trade; advisory and consultancy services relating to the procurement of goods for others; advisory services relating to commercial transactions; advisory services relating to the ordering of stationery; advisory services relating to the purchase of goods on behalf of business; advisory services relating to the purchase of goods on behalf of others; arranging and conducting sales events for others of livestock and registered and commercial cattle comprises a wide range of services that have a clearly different purposes, methods of use, distribution channels, relevant publics and producers from all the opponent’s goods and services. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 36

The contested financial and monetary services, and banking; fundraising and sponsorship; insurance services; provision of prepaid cards and tokens; safe deposit services; valuation services; insurance underwriting comprises a wide range of services related to finance and insurance. These goods are at least similar with the opponent’s securing of payment transactions for others as they have the same nature. They usually coincide in provider, relevant public and distribution channels.

The contested real estate services refer to services concerning the selling of properties. These goods have clearly different purposes, methods of use, distribution channels, relevant publics and producers and are not complementary or in competition with the opponent’s goods and services. Therefore, they are dissimilar.

Contested services in Class 42

The contested IT services includes, as a broader category, the opponent’s software development. 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 science and technology services; design services are similar to the opponent’s development of computer software application solutions insofar as they usually coincide in producer, relevant public and distribution channels.

The contested testing, authentication and quality control are very specific services aimed to control and confirm the fulfilment of standards and quality requirements which are usually provided by certification or accreditation companies. These services do not have anything in common with any of the opponent’s goods and services. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. 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 services found to be identical or similar in various degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high depending on the specialised nature or terms and conditions of the services purchased.

c) The signs

Covr
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The element ‘.it’ of the contested sign is the country code top-level domain (ccTLD) for Italy. Top level domain codes are often used in trade marks and merely indicate the place where information can be found on the internet. They are technical and generic elements, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, they may also indicate that the services covered by the trade mark can be obtained or viewed online, or are internet related (21/11/2012, T-338/11, Photos.com, EU:T:2012:614, § 22). In addition, and contrary to the parties submissions, the relevant public throughout the European Union is likely to perceive ‘.it’ as referring to a country code top level domain, even if all consumers may not know that it refers precisely to Italy (see, by analogy 11/12/2018, R 797/2018-2, M MAXBET.RO (fig.) / M BET (fig.) et al.). For these reasons, the element ‘.it’, regardless of whether or not it is known to indicate precisely Italy, will be devoid of any distinctive character in relation to all the business, financial or IT related services concerned, which can all be carried out online.

The signs’ shared verbal component ‘COVR’ will be perceived as meaningless by part of the public, being therefore distinctive. As the applicant argues, it cannot be excluded that this element might be perceived by part of the English-speaking consumers as a misspelling of the English word ‘cover’, which might have a reduced degree of distinctiveness in relation to all the services in Class 36 insofar as it can refer, inter alia, to actions that can reduce an investor’s exposure. In this regard, however, it must be pointed out that while the distinctiveness of the elements of the signs is, as a rule, relevant for their comparison, in this particular case whether ‘COVR’ will be meaningful or not for the public and whether such meaning may be in some way related to some of the services at issue, is irrelevant. This is because the public will perceive this element in both signs identically.

On a final note, it must be stressed that backgrounds such as those in the contested application are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

Visually and aurally, the signs coincide in the sequence of letters ‘COVR’ whereas they differ in the contested mark’s non-distinctive last component ‘.it’ and background.

Therefore, the signs are visually similar to an above average degree and aurally highly similar.

Conceptually, neither of the signs has a meaning for part of the public in the relevant territory. Although the contested sign’s element ‘.IT’ will evoke a concept, this difference does not have an impact as this component is non-distinctive and cannot indicate the commercial origin. Since for this part of the public a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

At the same time, for the part of the public that will perceive the sign’s verbal element as meaningful – in the sense outlined above – the signs are conceptually highly similar, since their sole difference is determined by the non-distinctive component ‘.IT’.

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, the distinctiveness of the earlier mark must be seen as low for part of the public in relation to some of the services in question, namely those in Class 36. The mark has a normal degree of distinctiveness for the remaining services as well as in the remaining part of the relevant territory, where the earlier mark has no meaning in relation to the services in question.

e) 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).

In the present case, it has been established that the services at issue are partly identical, partly similar to various degrees and partly dissimilar.

The signs have been found visually similar to an above average degree while aurally and (for part of the public) conceptually similar to a high degree. For part of the public the conceptual comparison is not possible.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or at least similar services are likely to think that they come from the same undertaking or from economically linked undertakings, notwithstanding the high degree of attention paid for some of them.

As regards the services that are similar to a low degree, it must be kept in mind that 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). In the present case, the assessed degree of similarities between the signs is clearly sufficient to offset the low degree of similarity between some of the services, regardless of the high degree of attention paid in relation to some of them.

Finally, since the signs coincide in their verbal elements ‘COVR’, and the contested sign’s additional non-distinctive element ‘.it’ and its background do not significantly change the overall impression created by the signs, the finding of a likelihood of confusion may not be called into question even for the part of the public for whom the common element ‘COVR’ is of reduced distinctiveness.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 523 665.

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

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marianna KONDAS

Aldo BLASI

Sandra IBAÑEZ

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.