OPPOSITION Nо B 3 110 710

 

Autentia Real Business Solutions, S.L., Avda. de Castilla 1, Edificio Best Point, planta 2ª, Local 21B, 28830 San Fernando de Henares (Madrid), Spain (opponent), represented by Arpe Patentes y Marcas, S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative) 

 

a g a i n s t

 

Authentic8, Inc., 333 Twin Dolphin Drive, Suite 112, 94065 Redwood City, United States of America (applicant), represented by Baker & Mckenzie Amsterdam N.V., Claude Debussylaan 54, 1082 Md Amsterdam, Netherlands (professional representative).

 

On 28/01/2021, the Opposition Division takes the following

 

DECISION:

1.	Opposition No B 3 110 710 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 099 908 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 18 099 908 ‘AUTHENTIC8’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 18 061 535 (figurative mark). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 18 061 535.

 

a) The services

 

The services on which the opposition is based are, inter alia, the following:

 

Class 42: Scientific and technological services, and related research and design services; industrial analysis and research services; design and development of computer hardware and software; design of computer hardware; computer hardware development; rental of computer hardware; computer hardware development; consultation services relating to computer hardware; rental of computer hardware and computer software; technical project studies in the field of computer hardware and software; design of office automation equipment; consultancy in the field of office and workplace automation; rental of computer software, data processing equipment and computer peripheral devices; expert consultancy services in connection with computing equipment; quality control for others; quality-control services; quality assurance consultancy; certification [quality control]; digitization of documents [scanning]; documentary research relating to data base management; development and creation of computer programmes for data processing; preparation, design, development and implementation of computer software; document data transfer from one computer format to another; providing information about computer programs; consultancy in the field of computers; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; provision of on-line support services for computer program users; development of systems for the storage of data; data storage services; testing of computing equipment; office furniture design; services for the planning [design] of offices; design of layouts for office furniture; design services relating to interior decorating for offices; software development in the framework of software publishing; editing of computer programs.

The contested services are the following:

 

Class 42: Computer security services, namely, data encryption for protecting the integrity of data and electronic communications over computer network; web browser protection services blocking malicious, untrustworthy and unwanted content and programs; providing temporary use of on-line non-downloadable software for use in the protection of computers against unauthorized third-party access and for computer security and authentication; computer authentication services, namely, providing user authentication services in e-commerce transactions, providing multi-factor authentication and authentication between users and websites, and providing authentication of personal identification information, authentication, validation and issuance of digital certificates.

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

 

The term ‘namely’, used in the applicant’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.

 

The contested computer security services, namely, data encryption for protecting the integrity of data and electronic communications over computer network; web browser protection services blocking malicious, untrustworthy and unwanted content and programs; computer authentication services, namely, providing user authentication services in e-commerce transactions, providing multi-factor authentication and authentication between users and websites, and providing authentication of personal identification information, authentication, validation and issuance of digital certificates are included in the opponent's broad category of, or overlap with, provision of on-line support services for computer program users. Therefore, they are identical.

The contested providing temporary use of on-line non-downloadable software for use in the protection of computers against unauthorized third-party access and for computer security and authentication overlaps with, the opponent's providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet and providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 are directed at the general public and at business customers with specific professional knowledge or expertise from IT area. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

 

c) The signs

 

	AUTHENTIC8
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The English word ‘AUTHENTIC’ of the contested sign will be understood as ‘undisputed origin or authorship; genuine; trustworthy, reliable’ (information extracted from Collins English Dictionary on 28/01/2021 at https://www.collinsdictionary.com/dictionary/english/authentic).

The verbal elements ‘AUTHENTIC’ of the contested and 'AUTENTIA' in the earlier mark sign will be understood with the same meaning in certain territories because, although they do not exist as such, the equivalent words in the relevant languages, namely ‘autentico’ in Italian, ‘auténtico’ in Spanish, ‘authentiek’ in Dutch’ and ‘autentic’ in Romanian, are so similar in spelling and/or pronunciation, that the meaning will be recognised as such.

Therefore, they are considered weak as they indicate that the relevant services concern, or may concern, services related to identification and authentication or are suggestive of a characteristic thereof (i.e. authenticity). Moreover, they are laudatory of the relevant services in that they indicate that the relevant services are reliable or trustworthy.

Therefore, these verbal elements will be understood in certain territories as it is explained above, for example in those countries where Italian-, Dutch-, Romanian- and Spanish are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-, Dutch-, Romanian- and Spanish-speaking parts of the public.

 

The numeral ‘8’ of the contested sign will be associated with the number that it identifies. As it is not allusive or otherwise descriptive in relation to the relevant services, it is distinctive.

 

The blue line underlining the letter ‘n’ in the earlier mark is of a purely decorative nature and, therefore, less distinctive than the verbal element.

The earlier mark has no element that could be considered clearly more dominant than other elements.

 

Visually, the signs coincide in letters ‘AUT(*)ENTI’, placed on almost the same positions. The signs have the same beginnings. 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. However, they differ in the final letter ‘A’ of the earlier mark and the letter ‘H’ placed in the middle and the final letter ‘C’ of the contested sign. The signs also differ in the underlining of the letter ‘n’ of a decorative nature, the blue colour and the stylisation of the earlier mark and the numeral ‘8’ of the contested mark.

 

Therefore, the signs are visually similar to an average degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the letter ‘H’ in the contested mark is mute. Therefore, the pronunciation of the signs coincides in the sound of the letters ‛AUTENTI’, present identically at the beginning in both signs. The pronunciation differs in the sound of the final letters ‛A’ of the earlier sign and ‘C‘ of the contested mark, as well as in the correspondent sound of the numeral ‘8’ of the contested mark.

Therefore, the signs are aurally similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to a low degree taking into account the weak character of the common concept.

 

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. In the present case, the earlier mark as a whole possesses below average distinctive character give the presence therein of a weak element, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The services are identical and target the general public and the specialised public, who possesses a degree of attention that may vary from average to high.

The distinctiveness of the earlier mark is below average. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier sign of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T-72/08, smartWings, EU:T:2010:395, §63; 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

The signs are visually and aurally similar to an average degree, due to the common sequence of letters ‘AUT(*)ENTI’, placed on almost the same positions. However, they differ in the ending letters of their verbal element, ‘A’ of the earlier mark and ‘C’ of the contested mark, as well in the letter ‘H’ placed in the middle and the numeral ‘8’ of the contested mark. Visually, the signs differ in the underlining of the letter ‘n’, the blue colour and the stylisation of the mark. The signs are conceptually similar to a low degree.

Furthermore, it is settled case-law that the public normally pays less attention to the endings of signs (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64-65). It is likely that average consumers will better remember the similarities located at the beginnings of the signs than the differences located in their more distant parts.

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 identity of the services offsets the fact that the signs are conceptually similar to a low degree only and that the earlier mark has a below average distinctive character.

In cases where the services are identical, such as in the present one, the conflicting signs must maintain a sufficient distance from each other (29/01/2013, T‑283/11, Nfon, EU:T:2013:41, § 69; 28/04/2014, T‑473/11, Menochron, EU:T:2014:229, § 46). The differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical services are likely to think that they come from the same undertaking or from economically linked undertakings.

The fact that the relevant public will be more attentive does not mean that they will examine the mark before it in the slightest detail. Even for a public with a high level of attentiveness, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that s/he has kept in his/her mind (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48).

Considering all the above, there is a likelihood of confusion on the part of the Italian-, Dutch-, Romanian- and Spanish-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 18 061 535. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 18 061 535 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Tzvetelina IANTCHEVA

Francesca DRAGOSTIN

Sofía SACRISTÁN MARTÍNEZ

 

 

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.