OPPOSITION No B 3 061 944

Authentic B.V., van Hogendorpstraat 3, 3581 KA Utrecht, Netherlands (opponent), represented by Merkwerk Utrecht BV, Zaadmarkt 94, 7201 DE Zutphen, Netherlands (professional representative)

a g a i n s t

Authenteq ehf, Borgartun 27, 105 Reykjavik, Iceland (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, United Kingdom (professional representative).

On 14/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 944 is partially upheld, namely for the following contested goods and services:

Class 9: Magnetic identity cards; computer software for interpreting fingerprints or palm prints; computer software for biometric systems for the identification and authentication of persons; biometric identification systems; authentication software; encoded identity cards; identity cards, encoded.

Class 42: Digital watermarking; internet security consultancy; outsource service providers in the field of information technology; research in the field of data processing technology; research in the field of information technology; technological research relating to computers; IT services; science and technology services; authentication of pictures; IT consultancy, advisory and information services; IT security, protection and restoration; data security consultancy; consultancy in the field of data security; design and development of systems for data input, output, processing, display and storage; design of computer machine and computer software for commercial analysis and reporting; design and development of wireless data transmission apparatus, instruments and equipment; design and development of wireless data transmission apparatus; design and development of wireless computer networks; design and development of electronic database software; design and development of electronic data security systems; design and development of data storage systems; design of data storage systems; design and development of testing and analysis methods; development and testing of computing methods, algorithms and software; services for the development of methods of testing; development of measuring and testing methods; development of testing methods; monitoring of computer systems for security purposes; consultancy in the field of office and workplace automation; authentication services for computer security; providing user authentication services using single sign-on technology for online software applications; providing user authentication services using biometric hardware and software technology for e-commerce transactions; testing, authentication and quality control.

2. European Union trade mark application No 17 929 302 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 929 302, ‘Authenteq’. The opposition is based on European Union trade mark registration No 15 308 356, . 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.

1. The goods and services

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

Class 9: Computer software, downloadable computer software and software for mobile apparatus for identifying users and for authorising access with the aim of guaranteeing the correct identity of a user; all of the before-mentioned goods not relating to the feature of a computer chip which prevents the execution of unauthorized software and prevents the unauthorized manufacturing of finished products using the chip and related software.

Class 42: Design, development, modification and maintenance of computer software, including computer software and software for mobile apparatus for identifying users and for authorising access; computer services, namely providing automated identification of users and providing automated authorisation of access; software as a service (SaaS) in the field of identifying users and for authorising access; all of the before-mentioned services not relating to the feature of a computer chip which prevents the execution of unauthorized software and prevents the unauthorized manufacturing of finished products using the chip and related software.

The contested goods and services are the following:

Class 9: Magnetic identity cards; computer software for interpreting fingerprints or palm prints; computer software for biometric systems for the identification and authentication of persons; biometric identification systems; authentication software; encoded identity cards; identity cards, encoded.

Class 35: Corporate identity services; business assistance relating to business image; business assistance relating to corporate identity.

Class 42: Digital watermarking; internet security consultancy; outsource service providers in the field of information technology; research in the field of data processing technology; research in the field of information technology; technological research relating to computers; it services; science and technology services; authentication of pictures; it consultancy, advisory and information services; it security, protection and restoration; data security consultancy; consultancy in the field of data security; design and development of systems for data input, output, processing, display and storage; design of computer machine and computer software for commercial analysis and reporting; design and development of wireless data transmission apparatus, instruments and equipment; design and development of wireless data transmission apparatus; design and development of wireless computer networks; design and development of electronic database software; design and development of electronic data security systems; design and development of data storage systems; design of data storage systems; design and development of testing and analysis methods; development and testing of computing methods, algorithms and software; services for the development of methods of testing; development of measuring and testing methods; development of testing methods; monitoring of computer systems for security purposes; design of logos for corporate identity; consultancy in the field of office and workplace automation; authentication services for computer security; providing user authentication services using single sign-on technology for online software applications; providing user authentication services using biometric hardware and software technology for e-commerce transactions; testing, authentication and quality control.

Class 45: Legal services; safety, rescue, security and enforcement services; dating services; internet dating services; issuing of passports; key holding services; missing persons location information; monitoring of security systems; opening of door locks; opening of security locks; passport control services [security]; personal background investigations; investigations (personal background -); pre-employment background screening; pre-employment background investigation services; security assessment of risks; security clearance for preparation of identification cards; security marking of goods; security services for the protection of property and individuals; vetting services; consulting in the field of workplace safety; consulting services in the field of national security; electronic monitoring services for security purposes; finger printing analysis; fingerprinting services; fraud detection services in the field of health care insurance; information services relating to health and safety; identity verification; identity validation services; providing authentication of personal identification information [identification verification services]; providing background check services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Finally, it is to be noted that all the opponent’s goods and services are limited as follows:

All of the before-mentioned goods/services not relating to the feature of a computer chip which prevents the execution of unauthorized software and prevents the unauthorized manufacturing of finished products using the chip and related software.

For reason of procedural economy, the Opposition Division will not reproduce these limitations in the comparison of each of the goods and services; however, they are taken into consideration for the purpose of comparison.

Contested goods in Class 9

The contested computer software for interpreting fingerprints or palm prints; computer software for biometric systems for the identification and authentication of persons; authentication software include, or overlap with, the opponent’s computer software for identifying users and for authorising access with the aim of guaranteeing the correct identity of a user. Therefore, they are identical.

The contested biometric identification systems and the opponent’s computer software for identifying users and for authorising access with the aim of guaranteeing the correct identity of a user can have the same producers, end users and distribution channels. Furthermore, they are complementary. Therefore, the goods are similar.

The contested magnetic identity cards; encoded identity cards; identity cards, encoded are similar to a low degree to the opponent’s computer software for identifying users and for authorising access with the aim of guaranteeing the correct identity of a user as they can be part of the same electronic identification systems. They usually coincide in producer. Furthermore they are complementary.

Contested services in Class 35

Corporate identity services are those relating to the manner in which a corporation, firm or business presents itself to inter alia the public, including its actual or potential customers, for the purpose of maintaining and building its identity in accordance with the corporate business objectives. Business assistance relating to business image or to corporate identity concerns the provision of such assistance by third-party service providers.

The said contested services are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers, inter alia, to communicate with the public, and to create a corporate identity.

The said contested services do not share any relevant points of contact with the opponent’s goods in Class 9 or services in Class 42, which relate to different types of software for identifying users and for authorising access with the aim of guaranteeing the correct identity of a user and related computer services. In particular, they have different natures, purposes and methods of use; they neither complement nor compete with each other; they are provided through different distribution channels, with different providers/producers. Therefore, they are dissimilar.

Contested services in Class 42

All of the contested digital watermarking; internet security consultancy; outsource service providers in the field of information technology; research in the field of data processing technology; research in the field of information technology; technological research relating to computers; IT services; technology services; authentication of pictures; IT consultancy, advisory and information services; IT security, protection and restoration; data security consultancy; consultancy in the field of data security; design and development of systems for data input, output, processing, display and storage; design of computer machine and computer software for commercial analysis and reporting; design and development of wireless data transmission apparatus, instruments and equipment; design and development of wireless data transmission apparatus; design and development of wireless computer networks; design and development of electronic database software; design and development of electronic data security systems; design and development of data storage systems; design of data storage systems; design and development of testing and analysis methods; development and testing of computing methods, algorithms and software; services for the development of methods of testing; development of measuring and testing methods; development of testing methods; monitoring of computer systems for security purposes; consultancy in the field of office and workplace automation; authentication services for computer security; providing user authentication services using single sign-on technology for online software applications; providing user authentication services using biometric hardware and software technology for e-commerce transactions; testing, authentication and quality control, if not identical (e.g. the contested IT services being identical to the opponent’s development of computer software since the former include, as a broader category, the latter), are all at least similar to the opponent’s design, development, modification and maintenance of computer software because they are all IT services, or related to IT services, and, therefore, they coincide at least in distribution channels, relevant public and provider.

The contested science services are similar to the opponent’s design, development, modification and maintenance of computer software as they usually coincide in nature, providers and end users.

However, the contested design of logos for corporate identity does not share any relevant points of contact with the opponent’s services in Class 42. The said contested services are normally provided by specialised corporate or brand consultancy undertakings which are different from the usual software providers of the opponent’s services in Class 42. Therefore, the providers are different. They differ also regarding nature, purpose and method of use; they do not compete or complement each other; they differ also regarding distribution channels and relevant public. Therefore, these services are dissimilar. For the sake of completeness, these contested services are even further away from the opponent’s goods in Class 9 in terms of their respective natures, purposes, methods of use; they are not in competition or complement each other, having different distribution channels and different commercial origin (producers/providers).

Contested services in Class 45

None of the contested services in Class 45 shares relevant points of contact with the opponent’s goods in Class 9 or services in Class 42, which relate to different types of software for identifying users and for authorising access with the aim of guaranteeing the correct identity of a user and related computer services.

In particular, while some of the opponent’s goods and services concern internet security, the contested services security services; monitoring of security systems; personal background investigations; investigations (personal background -); pre-employment background screening; pre-employment background investigation services; security assessment of risks; security clearance for preparation of identification cards; security marking of goods; security services for the protection of property and individuals; vetting services; electronic monitoring services for security purposes; finger printing analysis; fingerprinting services; identity verification; identity validation services; providing authentication of personal identification information [identification verification services]; providing background check services in Class 45, being included in the broad category of security services, concern physical security for the protection of tangible property and individuals.

Whereas the opponent’s goods and services are provided by IT companies or IT consultants, the said security services are, instead, provided by undertakings that usually specialise in physical security, authentication or verification services. Even if some of the opponent’s goods and services may serve the same purpose as the applicant’s services in Class 45, their nature is different. Since the opponent’s goods and services may support the rendering of the contested services, and they target security companies, the contested services and the opponent’s goods and services have different end users. Moreover, the producers/providers are different, their respective methods of use differ, and they do not compete; and, in addition, they differ with respect to distribution channels. Therefore, they are dissimilar.

The remaining contested services in Class 45 - legal services; safety, rescue, and enforcement services; dating services; internet dating services; issuing of passports; key holding services; missing persons location information; opening of door locks; opening of security locks; passport control services [security]; consulting in the field of workplace safety; consulting services in the field of national security; fraud detection services in the field of health care insurance; information services relating to health and safety are even further away from the goods and services of the opponent in Classes 9 and 42 as they do not have relevant points of contact that would justify a finding of similarity. They have different natures, purposes and methods of use, they neither complement nor compete with each other, they are provided through different distribution channels, with different relevant publics and providers/producers. Therefore, they are 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 and services found to be identical or (at least) similar are 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, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

	Authenteq
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 verbal elements ‘authentiq’ and ‘Authenteq‘ of the earlier mark and contested sign respectively are meaningful for the vast majority of the relevant public in the European Union respectively given their close similarity, for example, to the dictionary word ‘authentic’ in English (meaning of undisputed origin or authorship; genuine; trustworthy, reliable, information extracted from Collins English Dictionary on 18/10/2019 at https://www.collinsdictionary.com/dictionary/english/authentic), ‘authentique’ in French, ‘autentico’ in Italian and Spanish, ‘autêntico’ in Portuguese, ‘authentisch’ in German, ‘authentiek’ in Dutch, or autenticky in Czech, the Opposition Division will first consider the assessment with respect to the part of the public for which the verbal terms are meaningful, such as the Czech-, German-, English-, French-, Italian-, Dutch-, Portuguese- and Spanish-speaking part of the relevant public.

The earlier figurative mark consists of the verbal element ‘authentiq’ which, as stated above, is meaningful for the part of the public under analysis, to the left of which is situated the device of a lower-case letter ‘a’, located inside a hexagon in the colour orange. Given that the verbal element is suggestive of a characteristic (i.e. authenticity) or is laudatory of the relevant goods and services, it follows that it is distinctive merely to a low degree thereof.

As the said figurative element includes a basic geometric shape (a hexagon in the colour orange) and as the stylised letter ‘a’ placed therein will be associated with the first letter of the verbal element of the earlier mark, this figurative element is not particularly distinctive such that the attention of the relevant public will be focused instead on the verbal element of the earlier mark.

The contested sign consists of the verbal term ‘Authenteq’ which, as stated above, will be meaningful for the relevant public under analysis. As this term indicates that the relevant goods or services concern, or may concern, goods and services related to identification and authentication, it is suggestive of a characteristic thereof (i.e. authenticity). Moreover, it is laudatory of the relevant goods and services in that it indicates that the relevant goods or services are reliable or trustworthy. It follows that this term possesses low distinctive character in respect of all of the relevant goods and services of the applicant.

Although in its observations, the applicant argues that the suffix “teq” will be associated with “technology” the Opposition Division considers that this is unlikely to be the case, at least for a significant part of the public: it is not an established or common abbreviation for the word “technology” and the verbal element as a whole will rather be associated with the word “authentic” as explained above, such that there would be no reason for consumers to seek any further meanings in the mark (consumers perceive a sign as a whole and do not tend to analyse all of its details).

Contrary to the assertion made by the opponent in its observations, the earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘authent*q’ of the verbal elements of the signs.

They differ in the penultimate letters ‘i’ and ‘e’ thereof, and in the figurative element of the earlier mark.

However, 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.

Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). It follows that, for the relevant public under analysis, the almost-identical coinciding verbal element will have more impact than the differing figurative element of the earlier mark.

Taking the above into account, the signs at issue are considered to be visually similar at least to an average degree.

Aurally, irrespective of the different pronunciation rules used by the relevant public under analysis, the verbal elements of the signs coincide in all but the penultimate letters ‘i’ and ‘e’ thereof.

Although the applicant argues in its observations that the letter ‘a’ within the figurative element of the earlier mark will be pronounced, the Office takes the view that this is not likely because, as stated above, it is likely to be perceived merely as a reinforcement of the first letter of the verbal element thereof so that pronunciation of the letter ‘a’ would be repetitious (03/07/2013, T 206/12, LIBERTE american blend EU:T:2013:342).

Based on the above, the signs at issue are considered to be phonetically similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the relevant public under analysis. Although the figurative elements of the earlier mark (the hexagon shape and the letter ‘a’) will evoke a concept, they are not particularly distinctive, as explained above, so that the attention of the public will be attracted instead to the meaningful verbal elements.

As the verbal elements of both signs will be perceived as having the same semantic meaning, as has been explained above, for the public under analysis, the signs are considered to be conceptually 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.

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 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. In the present case, the earlier mark as a whole possesses below average distinctive character give the presence therein of a weak verbal element, 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the signs at issue are visually similar at least to an average degree and phonetically and conceptually highly similar. The goods and services are partly identical, partly (at least) similar, and partly dissimilar. The distinctive character as a whole for the earlier mark is below average and the level of attention of the relevant public may vary from average to high.

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).

Moreover, 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).

Taking the relevant factors into consideration, including that of imperfect recollection, and the fact that the figurative element of the earlier mark is not particularly distinctive for the reasons set out above such that the focus of attention will rest with the respective verbal elements of the signs at issue, the Opposition Division concludes that, despite the weakly distinctive nature of the verbal elements of the signs for the public under analysis, the similarities between the signs clearly outweigh the differences such that there exists a likelihood of confusion.

As a likelihood of confusion has been found to exist with respect to the part of the relevant public for which the verbal elements of the signs are meaningful and weakly distinctive, it follows a fortiori that there exists a likelihood of confusion also with respect to the part of the public in the European Union for which the verbal elements of the signs at issue would be perceived as meaningless and fanciful, and thus normally distinctive.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or (at least) similar 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 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

Sam GYLLING

Kieran HENEGHAN

Martina GALLE

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.