OPPOSITION No B 3 091 033

Cross Match Technologies, Inc., 3950 RCA Boulevard, Suite 5001, 33410 Palm Beach Gardens, United States of America (opponent), represented by Mathys & Squire LLP, The Shard 32 London Bridge Street, London SE1 9SG, United Kingdom (professional representative)

a g a i n s t

Guilhem Decoux, 2 Impasse des roses, 34430 Saint Jean de Védas, France (applicant).

On 03/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 033 is partially upheld, namely for the following contested goods and services:

Class 9: Surveillance cameras; video cameras adapted for monitoring purposes; network monitoring cameras; network monitoring cameras for surveillance; cameras for monitoring and inspecting equipment in a nuclear power station; closed circuit TV [CCTV] software; access control devices; access control installations (automatic -); access security apparatus (automatic -); electrical access control apparatus; biometric access control systems; access control units (automatic -); access control systems (automatic -); access security apparatus (electric -); access control cards [encoded or magnetic]; electronic access control system for buildings; computer software for use in computer access control; electronic access control systems for interlocking doors; computer programs for the enabling of access or entrance control; computer software for controlling and managing access server applications; perimeter access control [PAC] safety light curtains; area access control [AAC] safety light curtains; software to control building environmental, access and security systems.

Class 45: Forensic analysis of surveillance video for fraud and theft prevention purposes; safety, rescue, security and enforcement services; safety evaluation.

2. European Union trade mark application No 18 055 112 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 (Classes 9, 35 and 45) of European Union trade mark application No 18 055 112 for the word mark ‘SeeQ IT’. The opposition is based on international trade mark registration No 928 460 designating the European Union for the word mark ‘SEEK’ and the non-registered trade mark ‘SEEK’ in the United Kingdom and Ireland. The opponent invoked Article 8(1)(b) and Article (4) 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 on which the opposition is based are the following:

Class 9: A multi-biometric collection and enrollment kit comprising a 10-print fingerprint scanner, an iris image scanner and a face image scanner.

The contested goods and services are the following:

Class 9: Surveillance cameras; video cameras adapted for monitoring purposes; network monitoring cameras; network monitoring cameras for surveillance; cameras for monitoring and inspecting equipment in a nuclear power station; closed circuit TV [CCTV] software; access control devices; access control installations (automatic -); access security apparatus (automatic -); electrical access control apparatus; biometric access control systems; access control units (automatic -); access control systems (automatic -); access security apparatus (electric -); access control cards [encoded or magnetic]; electronic access control system for buildings; computer software for use in computer access control; electronic access control systems for interlocking doors; computer programs for the enabling of access or entrance control; computer software for controlling and managing access server applications; perimeter access control [PAC] safety light curtains; area access control [AAC] safety light curtains; software to control building environmental, access and security systems.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services.

Class 45: Forensic analysis of surveillance video for fraud and theft prevention purposes; safety, rescue, security and enforcement services; legal services; physical security consultancy; safety evaluation.

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 opponent’s goods, biometric scanners, are usually used in security and surveillance services. The contested goods are cameras, access control, security light curtains and their related software with the purpose of surveillance and security. Therefore, all the contested goods are at least similar to an average degree to the opponent’s multi-biometric collection and enrollment kit comprising a 10-print fingerprint scanner, an iris image scanner and a face image scanner. Consequently, these goods coincide in purpose, distribution channels, sales outlets and producers. They may be in competition.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Business management and advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements or are the object of the business is insufficient for finding similarity. The contested services are dissimilar to the opponent’s goods, as the purpose of business management and advertising services differ from biometric security products. They don’t share nature, purpose, relevant public, producer/provider, distribution channels, sales outlets, or methods of use. They are neither in competition nor complementary.

Contested services in Class 45

The contested forensic analysis of surveillance video for fraud and theft prevention purposes; safety, rescue, security and enforcement services; safety evaluation are similar to the opponent’s goods in Class 9. The relevant public may consider that companies which develop and sell complex surveillance apparatus, such as biometric products, are the same which usually offer consultancy on security and surveillance to their customers. Additionally, specialised security firms operate in the field of developing and manufacturing security equipment or the other way around in order to provide their customers with a ‘one-hand’ solution, service and product. Consequently, the goods and services are complementary as the relevant public may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (02/10/2013, R 1703/2012‑2 AND R 1722/2012‑2, UVISCAN (FIG. MARK) / EVISCAN, § 49).

The rest of the contested services, namely legal services; physical security consultancy are dissimilar to the opponent’s biometric collection in Class 9. These services require a different know-how: legal services, need a legal background, and physical security consultancy means man power security, not technological IT solutions. Consequently, although these services are somehow related to IT security services and may share the same purpose, these are not normally rendered by the same providers because their knowledge background is different. Their method of use, providers, relevant public and distribution channels are different. They are neither in competition nor complementary.

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 at least similar are directed at the professional public with specific professional knowledge or expertise.

The degree of attention is considered average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

3. The signs

SEEK	SeeQ IT
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 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 perception of the sign by the relevant public is decisive and a component exists wherever the relevant public perceives one. In this regard, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, and also based on the difference of the upper- and lower-case letters of the contested sign, it is undeniable that the English-speaking public will clearly perceive the word ‘See’ in the contested sign.

Therefore, both signs include English words, namely ‘SEEK’ and ‘See’, which will be perceived by the English-speaking public. ‘Seek’ with the meaning ‘if you seek something such as a job or a place to live, you try to find one’ (information extracted from Collins dictionary on 21/06/2020 at https://www.collinsdictionary.com/dictionary/english/seek) and ‘see’, meaning ‘[w]hen you see something, you notice it using your eyes’ (information extracted from Collins dictionary on 21/06/2020 at https://www.collinsdictionary.com/dictionary/english/see).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking public, such as the Spanish-speaking part of the public. This public will not understand the meaning of either English word, therefore it will not notice the conceptual difference they create. Since conceptual differences between the marks often counteract similarities in other aspects, the Opposition Division will assess the signs from the perspective of the abovementioned public that does not understand the meaning of the verbal elements in which the similarities reside in this case.

The earlier mark ‘SEEK’, which is meaningless for the relevant public, is distinctive to a normal degree in relation to the goods and services.

The Spanish-speaking public will not dissect the word ‘SeeQ’ of the contested sign as they will not perceive any meaning behind this word. Consequently, it is normally distinctive for the relevant public.

Furthermore, the contested sign is composed of the verbal element ‘IT’ that stands for ‘information technology’. This verbal element is descriptive with respect to the goods and services which are IT related, and therefore non-distinctive.

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.

Visually, the signs coincide in the sequence of letters ‘SEE*’. They differ in the last letters ‘K’ in the earlier mark and ‘Q’ in the contested sign. Furthermore, they differ in the letters ‘IT’ of the contested sign, which, due to their non-distinctiveness, will have a rather reduced impact in the comparison.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sequence of letters ‘SEE’, at the beginning of the signs. The pronunciation differs in the last letters ‘K’ in the earlier mark and ‘Q’ in the contested sign. The sound of the letter ‘Q’ will be different, depending on whether it will be pronounced as a whole word ‘SEEQ’, then it will sound identical to the sound of the letter ‘/k/’, or whether it will be pronounced as a single letter ‘SeeQ’, in which case the sound would be ‘/ku/’. The difference of the letters ‘IT’ in the contested sign will not have much of an impact for the professional public as they are non-distinctive and will probably not even be pronounced by the relevant public. In this case, they might even be aurally identical for part of the public.

Consequently, the signs are aurally either at least highly similar or similar to an average degree, depending on the pronunciation of the letter ‘Q’ at the end of the contested sign.

Conceptually, neither of the signs has a meaning as a whole. Although the letters ‘IT’ in the contested sign will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are partly at least similar to an average degree and partly dissimilar. The earlier mark has a normal degree of distinctiveness and the relevant public is the professional consumer who will approach the relevant goods and services with an average to high degree of attention as these are related to security issues.

The signs are visually similar to a below-average degree and aurally either at least highly similar or similar to an average degree. The conceptual assessment will not influence the comparison. Both signs have the same beginning, ‘SEE*’, and differ only in the last letters ‘K’ of the earlier mark and ‘Q’ of the contested sign, which is aurally not (always) noticed. The further difference is confined to the non-distinctive element ‘IT’ of the contested sign.

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, the ‘mouth to mouth’ recommendation of the trade marks cannot be denied, in which case they are identical. In this case, it is probable that the relevant public does not even mention the additional letters ‘IT’ of the contested sign as it is non-distinctive. The aural identity of the marks for part of the public, will outweigh the below-average visual similarity, even when the attention is higher.

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

The Opposition Division will proceed now to analyse the second ground of the opposition.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

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

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof 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 the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade or case-law.

On 19/08/2019 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 24/12/2019, however, before its expiration, namely on 20/12/2019, the opponent requested an extension of time which was granted until 24/02/2020.

Although the opponent submitted its arguments in a timely manner regarding the ground Article 8(1)(b) EUTMR on 24/02/2020, it did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based, nor cited any case-law (according to Article 8(4) EUTMR).

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Marta Maria CHYLINSKA

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

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.