OPPOSITION No B 3 055 698

Quadro Partners, Inc., 295 Lafayette Street, 7th Floor, 10012 New York, United States (opponent), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, EC2M 1QS London, United Kingdom (professional representative)

a g a i n s t

Qadre Ltd, 8-12 Leeke Street, WC1X 9HT London, United Kingdom (applicant), represented by Meissner Bolte UK, 4a Top Land Country Business Park, Cragg Vale, HX7 5RW Hebden Bridge, United Kingdom (professional representative).

On 29/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 698 is partially upheld, namely for the following contested goods and services:

Class 9: Security software; authentication software; software for use in the validation of goods and services; software for network and device security; computer programmes relating to financial matters.

Class 42: Computer programming services; computer programming services for electronic data security; design and development of security systems for use in the validation of goods and services.

2. European Union trade mark application No 17 841 602 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 17 841 602 ‘QADRE’. The opposition is based on international trade mark registration No 1 387 170 ‘designating European Union, CADRE’. 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 services on which the opposition is based are the following:

Class 36: Real estate investing services for others via an Internet website portal; providing investment opportunities in the field of real estate via an Internet website portal; providing information in the field of investment of funds for investors via a website; purchasing and selling investments in the nature of investment brokerage; real estate investment services for others via an Internet website portal; providing investment opportunities via an Internet website portal.

Class 42: Software as a service (SAAS) services featuring software for enabling investors to invest in real estate via an Internet website portal; providing technology via a website that enables users to view investment opportunities and perform research on those investments using material and information provided by the website; software as a service (SAAS) services featuring software for enabling investors to invest in, purchase, sell, market investment opportunities via an Internet website portal.

The contested goods and services are the following:

Class 9: Security software; authentication software; software for use in the validation of goods and services; software for network and device security; computer programmes relating to financial matters; silicon chips; electronic chips for use in transmitting data to and from a central processing unit; RFID chips; radio-frequency identification (RFID) tags; radio-frequency identification (RFID) readers; labels with integrated RFID chips.

Class 42: Computer programming services; computer programming services for electronic data security; design and development of security systems for use in the validation of goods and services.

Class 45: Electronic monitoring services for security purposes; security marking of goods; security monitoring services; security consultancy.

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 security software; authentication software; software for use in the validation of goods and services; software for network and device security; computer programmes relating to financial matters and the opponent’s software as a service (SAAS) services featuring software for enabling investors to invest in, purchase, sell, market investment opportunities via an Internet website portal are all software with the difference that they are provided to the public in a different manner. Indeed, the contested software is normally provided on different tangible means, for instance, on discs, whereas the earlier software are provided through the Internet from where they are downloaded. Yet, despite the aforementioned differences, they are similar since they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

However, the contested silicon chips; electronic chips for use in transmitting data to and from a central processing unit; RFID chips; radio-frequency identification (RFID) tags; radio-frequency identification (RFID) readers; labels with integrated RFID chips and the opponent’s earlier services, whether in Class 36 or 42, have nothing in common in terms of nature, purpose and method of use. Moreover, they are neither complementary nor in competition and they are not usually produced/provided by the same companies through the same distribution channels. Therefore, and taking further into account that the opponent has not provided any argument allowing to conclude otherwise, the goods and services at issue are dissimilar.

Contested services in Class 42

The contested computer programming services; computer programming services for electronic data security; design and development of security systems for use in the validation of goods and services and the opponent’s services software as a service (SAAS) services featuring software for enabling investors to invest in, purchase, sell, market investment opportunities via an Internet website portal are similar as they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 45

The contested electronic monitoring services for security purposes; security marking of goods; security monitoring services; security consultancy are security services for the physical protection of tangible property and/or individuals. Such services do not comprise services relating to financial or monetary affairs and services dealing with insurance (in Class 36) or computer programming services for the protection of software and computer and internet security consultancy and data encryption services (in Class 42) and they do not coincide with the opponent’s services in those classes, whether in terms of nature, purpose, method of use, distribution channels or providers. Finally, they are neither complementary nor in competition. Therefore, and taking further into account that the opponent has not provided any argument allowing to conclude otherwise, the services at issue 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 similar are essentially directed 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, sophistication or specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

CADRE	QADRE
Earlier trade mark	Contested sign

The relevant territory is European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). 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.

Both signs are word marks which have no meaning in certain parts of the relevant territory, for example in the Spanish-, Italian, or Dutch-speaking parts. However, as detailed below, in other parts of the relevant territory, for instance in the French-speaking parts, both will be understood as referring to the same concepts. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, such as in France, Belgium and Luxembourg. Indeed, this part of the relevant public will associate the earlier mark either with an ‘executive’ of a company, or with a ‘frame’ and, given its pronunciation, also associate the contested sign with such concepts despite the fact that, as such, given its spelling with a ‘Q’ (pronounced as the ‘C’ in the earlier mark), it has no meaning. In any event, in relation to any of the respective goods and services, neither ‘CADRE’ nor ‘QADRE’ have a meaning, and therefore, both are distinctive to a normal degree. In view of the foregoing, they are also aurally and, upon aural perception, even conceptually identical. Visually, however, since they coincide in the letters ‘*ADRE’ but differ in their respective first letters, ‘C’ and ‘Q’, they are 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) 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.

While the opponent states that its mark is ‘inherently highly distinctive’, it did not actually explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Such use or reputation are conditio sine qua non in order to establish the high distinctive character of the earlier mark and in any event, the opponent did not file any evidence either in order to prove the mark’s enhanced distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, as seen above in section c), the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the French-speaking part of the public in the relevant territory. Therefore, contrary to the opponent’s view, the distinctiveness of the earlier mark must be seen as normal.

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).

As seen above, part of the contested goods and services are similar to the opponent’s services in Class 42 and they are essentially directed at business customers with specific professional knowledge or expertise whose attention when purchasing such goods and services will vary from average to higher than average. The earlier mark is distinctive to a normal degree and the signs at issue are visually similar to a high degree but aurally and conceptually identical.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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

The remaining contested goods and 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 goods and services cannot be successful. For the sake of completeness, the result would be the same even if the earlier mark had been ‘inherently highly distinctive’, as the opponent considers, since similarity of goods and services is a necessary condition for the application of Article 8(1)(b).

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

Begoña URIARTE VALIENTE

Martina GALLE

Christian STEUDTNER

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.