OPPOSITION DIVISION




OPPOSITION No B 2 470 683


Assa Abloy AB, Klarabergsviadukten 90, 107 23 Stockholm, Sweden (opponent), represented by Kransell & Wennborg KB, P.O. Box 27834, 115 93 Stockholm, Sweden (professional representative)


a g a i n s t


Invenit B.V., Lange Broekstraat 3, 4944 XH Raamsdonk, the Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, the Netherlands (professional representative).


On 04/07/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 470 683 is rejected in its entirety.


2. The opponent bears the costs, fixed at EUR 300.



REASONS:


The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 195 011. The opposition is based on, inter alia, European trade mark registration No 1 307 065. 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 1 307 065.



  1. The goods and services


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


Class 6: Locks and keys therefor; lock cylinders, parts for all the aforesaid goods.


Class 9: Electric, electronic and electromechanical locks and lock cylinders, electronic keys; units for programming said locks, cylinders and keys; parts for all the aforesaid goods; software for use with the aforesaid goods.



The contested goods and services are the following:


Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Data processing equipment and computers; Computer systems, Computer software, Mobile applications and Web applications, Including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and People, whether or not using an electronic communication network and/or GPS system; Apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; Components for all the aforesaid goods, included in this class.


Class 35: Advertising; Business management; Business administration; Office functions; Publication of advertising texts; Dissemination of advertisements; Advertising; Advertising; Business organisation, business economic and business administration consultancy; Marketing services; Market canvassing, market research and market analysis; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, data processing equipment and computers, computer systems, software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or nut using an electronic communication network and/or GPS system and parts for the aforesaid goods; Arranging events for publicity and/or commercial purposes; Compilation and management of data files; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.


Class 38: Telecommunications; Transferring, distribution, transmission and sending of images, sound and data; Providing access to and making available of electronic communication networks, whether or not wireless, websites, electronic databases, online communication facilities, chat rooms, social networks, search engines and forums; Providing access to and providing of an online platform on the internet for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network; Telecommunications using GPS technology; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.


Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computers and computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; Design and development of apparatus and instruments for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or nut using an electronic communication network and/or GPS system, and parts therefor; ICT specialists; IT services; Consultancy and information regarding the aforesaid services; Including the aforesaid services provided via electronic networks, including the Internet.


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 applicant’s list of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).


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 data processing equipment and computers; computer systems …, including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and people, whether or not using an electronic communication network and/or GPS system include, as broader categories, or overlap with, the opponent’s units for programming said locks, cylinders and keys in Class 9. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.


The contested computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, articles and people, whether or not using an electronic communication network and/or GPS system include, as broader categories, or overlap with, the opponent’s software for use with the aforesaid goods in Class 9. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.


The contested apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system include, as broader categories, or overlap with, the opponent’s units for programming said locks, cylinders and keys in Class 9. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.


The contested magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media are similar to a high degree to the opponent’s units for programming said locks, cylinders and keys in Class 9 as they can coincide in producer, relevant consumer and distribution channels. Furthermore they are complementary.


The contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images are dissimilar to all the opponent’s goods in Classes 6 and 9 (which are, in essence, mechanical and electronic locks, keys and parts and accessories therefor). They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.


The contested components for all the aforesaid goods, included in this class can be either identical, similar (to various degrees) or dissimilar to the opponent’s goods in Classes 6 and 9 depending on to which of the ‘aforesaid’ contested goods these components relate. For example, components for data processing equipment overlap with the opponents units for programming said locks, cylinders and keys and are, therefore, identical. However, components for apparatus and instruments for conducting electricity are dissimilar to all the opponent’s goods in Classes 6 and 9 because they do not coincide in any of the relevant criteria of similarity.



Contested services in Class 35


Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.


The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.


Therefore, the contested wholesaling and retailing of … data processing equipment and computers, computer systems …, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system, apparatus and instruments, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or nut using an electronic communication network and/or GPS system and parts for the aforesaid goods; the aforesaid services also provided via electronic networks, such as the Internet are similar to a low degree to the opponent’s units for programming said locks, cylinders and keys in Class 9.


Moreover, the contested wholesaling and retailing of … software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; the aforesaid services also provided via electronic networks, such as the Internet are similar to a low degree to the opponent’s software for use with the aforesaid goods in Class 9.


However, the remaining contested wholesale and retail services in Class 35 (namely wholesaling and retailing of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media; the aforesaid services also provided via electronic networks, such as the Internet) are not similar to any of the opponent’s goods in Classes 6 and 9. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail or wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.


Similarity between retail/wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.


All the remaining contested services in Class 35, namely Advertising; Business management; Business administration; Office functions; Publication of advertising texts; Dissemination of advertisements; Advertising; Advertising; Business organisation, business economic and business administration consultancy; Marketing services; Market canvassing, market research and market analysis; Business mediation in the purchase and sale, import and export; Arranging events for publicity and/or commercial purposes; Compilation and management of data files; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet are dissimilar to all the opponent’s goods in Classes 6 and 9. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.



Contested services in Class 38


The contested Telecommunications; Transferring, distribution, transmission and sending of images, sound and data; Providing access to and making available of electronic communication networks, whether or not wireless, websites, electronic databases, online communication facilities, chat rooms, social networks, search engines and forums; Providing access to and providing of an online platform on the internet for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network; Telecommunications using GPS technology; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet are dissimilar to all the opponent’s goods in Classes 6 and 9. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.



Contested services in Class 42


The contested design and development of computers and computer systems, computer software, mobile applications and web applications, including for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or not using an electronic communication network and/or GPS system; ICT specialists; IT services; Including the aforesaid services provided via electronic networks, including the Internet are similar to the opponent’s units for programming said locks, cylinders and keys and software for use with the aforesaid goods in Class 9 as they can coincide in producer/provider, relevant consumer and distribution channels. Furthermore they are complementary.


The contested scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of apparatus and instruments for detecting, locating, analysing and tracking objects, goods, vehicles, items and people, whether or nut using an electronic communication network and/or GPS system, and parts therefor; Including the aforesaid services provided via electronic networks, including the Internet are dissimilar to all the opponent’s goods in Classes 6 and 9. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.


The contested consultancy and information regarding the aforesaid services; Including the aforesaid services provided via electronic networks, including the Internet can be either similar or dissimilar to the opponent’s goods in Classes 6 and 9 depending on to which of the ‘aforesaid’ contested services these consultancy and information services relate. For example, consultancy and information regarding IT services are similar to the opponents units for programming said locks, cylinders and keys and software for use with the aforesaid goods in Class 9 because they can coincide in producer/provider, relevant consumer and distribution channels and can be complementary. However, consultancy and information regarding scientific services are dissimilar to all the opponent’s goods in Classes 6 and 9 because they do not coincide in any of the relevant criteria of similarity.



  1. 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 similar (to various degrees) are directed both at the public at large and business customers with specific professional knowledge or expertise. The degree of attention will range from average to high. It will be high for the goods/services which are purchased only seldom, which can be expensive or which can have a significant impact on the running of the client’s business.




  1. The signs



CLIQ




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 earlier mark is the word mark ‘CLIQ’.


The contested sign is a figurative mark consisting of the stylised interconnected words ‘clic’ and ‘key’ written on two lines and a figurative element depicting a sign for a network (e.g. a wireless network) or electromagnetic waves. The mark is depicted in blue.


The earlier mark has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements. The distinctiveness of the word ‘CLIQ’ is considered to be average.


The figurative element depicting a sign for a network or waves of the contested sign will be associated with the idea of a network or electromagnetic waves. Bearing in mind that the relevant goods and services all relate to information technology, this element is weak, to a greater or lesser extent, for all the contested goods and services found identical or similar (to varying degrees).


The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.


Visually, the signs coincide only in the sequence of letters ‘cli*’. However, they differ in the letter ‘*Q’ of the earlier trade mark and the letters ‘*c’, ‘key’, the figurative element depicting a sign for a network or waves, the stylisation and the blue colour of the contested sign. Moreover, the marks have a different structure because the earlier mark is composed of only one word consisting of four letters whereas the contested sign is a complex sign consisting of a figurative element depicting a sign for a network or waves and the stylised interconnected words ‘clic’ and ‘key’ written on two lines.


Therefore, the signs are visually similar to a low degree.


Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛CLI*’, present identically in both signs. The pronunciation of the letters ‘Q’ and ‘C’ (the last letters of the words ‘CLIQ’ and ‘CLIC’) can be either the same or similar or dissimilar, depending on the EU language used. The pronunciation differs in the sound of the letters ‛KEY’ of the contested mark, which have no counterparts in the earlier sign.


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


Conceptually, a part of the relevant public, such as the English, French or Spanish-speaking one, will perceive the word ‘CLIQ’ in the context of the opponent’s goods (all revolving around locks) as an allusion to the sound made by a lock (see for example the entry ‘click’ in Collins English Dictionary: ‘a short light often metallic sound’).


Regarding the contested mark, the word ‘clic’ can be perceived by a part of the relevant public, such as the English, French or Spanish-speaking one, as meaning or alluding to either the sound made by a lock or door, or ‘an act of pressing and releasing a button on a mouse’ (see Collins English Dictionary).


The word ‘key’ has multiple meanings in English and can be understood by the English-speaking public for example as ‘a means of achieving a desired end’, ‘a means of access or control’, any of a set of levers operating a typewriter, computer, etc’ or ‘a metal instrument, usually of a specifically contoured shape, that is made to fit a lock and, when rotated, operates the lock's mechanism’. The figurative element depicting a sign for a network or electromagnetic waves will be perceived as such by the entire relevant public.


Consequently, for a part of the public, such as the English, French or Spanish-speaking one, the signs are conceptually similar to a low degree. For the remaining part of the public, the signs are not conceptually similar.


As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.



  1. 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 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.



  1. Global assessment, other arguments and conclusion


The goods and services are partially identical, partially similar (to various degrees) and partially dissimilar.


The degree of distinctiveness of the earlier trade mark is average. The degree of attention of the relevant public will range from average to high.


The marks are visually similar only to a low degree and aurally similar to an average degree. The marks are conceptually similar to a low degree for a part of the relevant public and for the remaining part of the public, there is no conceptual similarity. The relevant goods and services are not normally bought aurally but rather visually which lowers the significance of the average degree of aural similarity and makes the visual aspects of the marks more important. Bearing in mind that the public normally perceives the marks as a whole and does not thoroughly analyse their individual elements, it is considered that there are sufficient differences between the marks to enable the public to safely distinguish between the marks.


The opponent argues that the word ‘key’ in the contested mark refers to the goods of the earlier mark and that this contributes to the risk of confusion. The Opposition Division considers that this argument is not sufficient for a finding of likelihood of confusion in the present case. First of all, the word ‘key’ will be understood only by a part of the relevant EU public, namely the English-speaking part. Second, the public will not analyse the contested sign in order to look for possible references or associations with other marks and goods. Third, as mentioned in the conceptual comparison, the word ‘key’ has multiple meanings. In the context of the contested sign and the contested goods and services, the meaning of ‘key’ as ‘a metal instrument, usually of a specifically contoured shape, that is made to fit a lock and, when rotated, operates the lock's mechanism’ is not likely to be perceived by the public in a clear and immediate way.


Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.


Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.


The opponent has also based its opposition on the European Union trade mark registration No 2 222 453 for the following figurative mark:



This mark invoked by the opponent is less similar to the contested mark. This is because it contains an additional figurative element which is not present in the contested trade mark and the letters ‘CL’ and ‘IQ’ are depicted in two different shades of blue which separates them visually to a certain extent. The fact that this earlier right and the contested mark both use blue does not make them any more similar because blue is a common colour and anyway, there are the aforementioned additional differences that outweigh the partial coincidence in colour. Moreover, the earlier figurative mark covers the same scope of the goods. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.



COSTS


According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.


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


According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.





The Opposition Division


Anna ZIÓŁKOWSKA

Vít MAHELKA

Lucinda CARNEY




According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.


The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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