OPPOSITION No B 2 478 629

Securiton AG, Alpenstr. 20, 3052 Zollikofen, Bern, Switzerland (opponent), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (professional representative)

a g a i n s t

Securion Payments Group AG, Sihleggstrasse 23, 8832 Wollerau, Switzerland (applicant), represented by Oficina Ponti SLP, Consell de Cent 322, 08007 Barcelona, Spain (professional representative).

On 29/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 478 629 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 13 235 304. The opposition is based on international trade mark registration No 470 704 designating Austria, Benelux, Bulgaria, Czech Republic, France, Germany, Hungary, Italy, Latvia, Portugal, Romania, Poland, Slovenia, Slovakia and Spain. The opponent invoked Article 8(1)(b) EUTMR.

SECURITON	SecurionPay
Earlier trade mark	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the international trade mark registration designating Austria, Benelux, Bulgaria, Czech Republic, France, Germany, Hungary, Italy, Latvia, Poland, Portugal, Romania, Slovenia, Slovakia and Spain No 470 704 on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade mark has had protection in the designated countries for more than five years prior to the publication of the contested application.

The contested application was published on 18/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the territories where each of them is registered, namely in Austria, Benelux, Bulgaria, Czech Republic, France, Germany, Hungary, Italy, Latvia, Poland, Portugal, Romania, Portugal, Slovenia, Slovakia and Spain from 18/11/2009 to 17/11/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 9: Apparatus and instruments for protecting valuables, apparatus and instruments for protecting persons, apparatus and instruments for access control, apparatus and auxiliary electronic instruments for searching, apparatus and electronic instruments for transmission, fire alarm apparatus and instruments.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 07/10/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/01/2016 to submit evidence of use of the earlier trade mark. On 18/01/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Exhibit 1: Evidence for Hungary

• Doc 1-21: brochures in English on which the sign appears. The brochures show that the company 'SECURITON' produces products such as 'SecuriRAS ASD 533' aspirating smoke detectors and fire detectors, 'SecuriSENS MHD 535' heat detectors, management systems, software for secure access, etc.

• Doc 22: 12 invoices issued between 28/10/2009 and 14/08/2014 showing the sale of goods presented in the Doc 1-21 (for example heat and smoke detectors, smoke sensor devices, control units, etc.). The invoices are all issued by the company Securiton AG, Switzerland to Securiton Szolgaltato KFT, Hungary.

Exhibit 2: Evidence for Poland

• Doc 1-2: Two information leaflets concerning the goods 'SecuriRAS ASD 535' aspiration smoke detector. The sign appears on both leaflets.

• Doc 3: 15 invoices dated between 22/09/2009 and 16/12/2014 issued by the company Securiton AG, Switzerland to a daughter company in Poland. The invoices contain references to the sale of smoke detectors, multiple detectors interface, rotary snap lock, etc.

Exhibit 3: Evidence for Romania

• Doc 1-5: Pictures showing the mark .

• Doc 6: 12 invoices dated between 11/09/2009 and 15/05/2014. The invoices are issued by the opponent’s company Securiton AG, Switzerland to the companies SC ProSecurity Distribution SRL and Fire Security System Srl, Romania. The invoices contain references to the goods such as smoke sensor devices, SecuriFire 3000, SecuriRAS aspiration smoke detectors, SecuriLine extended boards, multiple sensor detectors, flame detectors, etc.

Exhibit 4: Evidence for the Czech Republic

• Doc 1-3: Pictures showing the mark in relation to the goods heat detector, special fire detection technology securities and fire alarm systems.

• Doc 4: 13 invoices dated between 12/10/2009 and 29/08/2014 issued by the company Securiton AG, Switzerland to Tribase Networking spol. S.r.o., Czech Republic. The invoices contain references to goods such as smoke switches, sockets, small fire panels, extinguishing zone boards, seismic detectors, temperature criteria detectors, aspiration smoke detectors, digital smoke detectors, etc.

Exhibit 5: Evidence for France

• Doc 1-7: a document containing information about products such as ‘SecuriRAS ASD 535’ smoke detector, Securiton outdoor surveillance system, universal management system ‘SecuriLink UMS’, fire alarm system ‘SecuriFire’, security access software.

• Doc 8-10: brochures concerning security network for fire panels and security fire system.

• Doc 11: 11 invoices dated between 17/11/2009 and 01/09/2014 issued by Securiton AG Switzerland to the companies FARE and Securiton based in France. The invoices concern the sale of the different goods mentioned in the Doc 1-7.

Exhibit 6: Evidence for Portugal

• Doc 1-5: undated brochures in Portuguese, containing a reference to the opponent’s goods heat linear detectors SecuriSens ADW 535, SecuriStar alarm detectors, smoke detectors SecuriRAS ASD 535, fire detector SecuriFire 500, etc.

• Doc 6: 12 invoices dated between 24/09/2009 and 26/08/2014 issued by the company Securiton AG to the company Gunnebo, Portugal. The invoices concern the sale of the goods SecuriPro main control unit, seismic detector, universal SecuriStar base, smoke detector, main control board, etc.

Exhibit 7: Evidence for Italy

• Doc 1-20: extracts from different brochures where SECURITON mark appears in relation to the goods linear heat detector, aspirating smoke detectors, software for secure access, compact fire detection system, heat detectors, etc.

• Doc 20: invoices dated between 16/10/2009 and 29/08/2014 issued by the opponent’s company to different customers in Italy. The invoices refer to the earlier goods.

Exhibit 8: Evidence for Luxembourg

• Doc 1-3: pictures of a package on which the mark appears.

• Doc 4: 3 invoices dated between 11/09/2009 and 12/05/2011 issued by the opponent to different customers in Luxemburg. The invoices contain references to goods such as smoke sensors, socket, small fire panel, extinguishing zone board, seismic detector, temperature criteria detector, aspiration smoke detector, digital smoke detector, etc.

Exhibit 9: Evidence for Bulgaria

• Doc 1: an undated brochure in Portuguese, containing a reference to the opponent’s goods thermal linear sensors SecuriSens ADW 535, SecuriStar alarm detectors, etc.

• Doc 2-3: Photos of shop windows where goods appear.

• Doc 4: 10 invoices dated between 15/09/2009 and 12/05/2014 issued by the opponent to the customers in Bulgaria. The invoices contain references to goods such as smoke switches, sockets, small fire panels, extinguishing zone boards, seismic detectors, temperature criteria detectors, aspiration smoke detectors, digital smoke detectors, etc.

Exhibit 10: Evidence for Spain

• Doc 1-3: photos of exposition stands. On the last photo, a date of an event ‘Il JornadasTecnicas 01/06/2011-03/06/2011’ appears

• Doc 4: a leaflet on which the mark appears. The leaflet refers to fire detection systems.

• Doc 5-9: Pictures of exposition stands showing or presenting the opponent’s goods such as temperature detectors or thermic detectors.

• Doc 10-12: Several articles taken from different magazines (for example 'Urbanas', octubre 2012; 'Cuadernos de Seguridad', junio 2011; Instal Sec, diciembre 2010, etc.) mentioning the mark ‘SECURITON’ in relation to the temperature detectors or thermic detectors.

• Doc 13: 18 invoices issued by Securiton AG to different companies in Spain, for example Zettler Sales and Financedated or Technologia Avanzada en Seguridad y Control, S.L.. The invoices are dated between 02/11/2009 and 03/09/2014 and concern the sale of goods such as smoke sensor device, temperature criteria detector, aspiration smoke detector SecuriRAS ASD 535, SecuriSENS heat detector, etc.

Exhibit 11: Evidence for Germany

• Doc 1-3: catalogues and brochures showing the goods such as ‘SecuriFire’ fire alarm systems, ‘SecuriStar’ fire detectors, ‘SecuriRAS’ aspirating smoke detectors, ‘FireVision’ fire detection by image analysis, ‘SecuriSens ADW’ linear heat alarms, ‘SecurSens MHD’ thermal sensor cables, etc.

• Doc 4-17: brochures concerning the earlier goods such as aspirating smoke detectors, temperature detectors, software for secure access, outdoor surveillance system, universal management system, fire alarms, security fire systems, etc.

• Doc 18-34: leaflets in German concerning aspirating smoke detectors, heat detectors, alarm systems, fire detection systems, etc.

• Doc 35-50: several articles from different magazines such as ‘Euro Parking’, ‘IT&Production’, ‘Protector’, ‘Security Technics’, ‘BS brand Schutz’, etc. showing the earlier goods

• Doc 51 and 60: pictures from the exhibition.

• Doc 61-66: packaging on which the earlier mark is depicted.

• Doc 67: 15 invoices dated between 22/09/2009 and 11/07/2014 issued by the opponent to different customers in Germany. They concern the sale of the goods such as smoke sensors, water sensors.

The invoices show that the place of use is Bulgaria, Czech Republic, France, Germany, Hungary, Italy, Latvia, Poland, Portugal, Romania, Luxembourg and Spain. This can be inferred from the addresses of the customers. However, no evidence is submitted to prove the use of the earlier international mark in Austria, Slovenia and Slovakia. Therefore, the evidence relates partially to the relevant territory.

Most of the evidence is dated within the relevant period. The invoices submitted to prove use in the mentioned countries refer to transactions that took place in the relevant period. The exceptions are the brochures or catalogues that seem undated but still serve as a reference to the kind of goods that the opponent is producing and selling.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, namely the invoices, the brochures and catalogues provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark. With regard to the frequency of use, the invoices leave no doubt that sale transactions under the ‘SECURITON’ trade mark were carried out regularly throughout the relevant period in Bulgaria, Czech Republic, France, Germany, Hungary, Italy, Latvia, Poland, Portugal, Romania, Luxembourg and Spain. Although the opponent did not submit turnover figures, the information presented in the invoices indicates that the physical volumes of sales, whilst not high, were not merely token, but sufficient for establishing a commercial scale of transactions related to the goods at issue. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence shows that the opponent used the sign 'SECURITON' in a trade mark sense, publicly and outwardly. The trade mark was directly affixed on the goods shown in the brochures. Moreover, the earlier mark also appears in each of the product catalogues or brochures.

In the present case, the earlier mark ‘SECURITON’ is registered as a word mark. In the extracts from the brochures, the mark appears a graphic depiction as and in some cases with the additional verbal elements such as ‘SecuriFire,’ ‘SecuriRAS’, ‘SecuriStar’ or ‘SecuriSens’.

The slightly stylised format and the addition of the figurative element in a shape of an eye do not alter the distinctive character of the mark as registered. Moreover, the additional words such as ‘SecuriFire’, ‘SecuriRAS’, ‘SecuriStar’ or ‘SecuriSens’ are mostly merely descriptive of the kind, quality or intended purpose of the goods at issue (at least for the part of the public that perceive the word 'securi' as alluding to 'security' and also understands the meaning of the terms 'fire' and 'sens'). For the remaining part of the public these additions will be perceived as an independent mark. In this respect it has to be noted that it is quite common in some market areas for goods to bear their individual mark, indicating a product range, as well as a house mark. In this case, the registered mark is not used in a different form but the two independent marks are used validly at the same time. Several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 34).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied either where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C‑12/12, SM JEANS/LEVI’S, EU:C:2013:253, § 36).

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for fire alarm apparatus and instruments. These goods are listed specifically in the goods protected by the earlier mark. Fire alarm apparatus and instruments may be used both for for protecting valuables and for protecting persons. For this reason, fire alarm apparatus and instruments fall under the broad categories of both Apparatus and instruments for protecting valuables and apparatus and instruments for protecting persons. Therefore it can be said that fire alarm apparatus and instruments can be considered to form an objective subcategory of, namely Apparatus and instruments for protecting valuables, apparatus and instruments for protecting persons. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for:

Class 9: Fire alarm apparatus and instruments.

The evidence submitted by the opponent makes no reference to the use of the earlier mark in relation to apparatus and instruments for access control, apparatus and auxiliary electronic instruments for searching, apparatus and electronic instruments for transmission. Consequently, it is considered that no genuine use of the marks has been proven for these goods.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

Moreover, as use in relation to the mentioned goods was proven for Bulgaria, Czech Republic, France, Germany, Hungary, Italy, Latvia, Poland, Portugal, Romania, Luxembourg, Portugal and Spain, the Opposition Division will proceed with the assessment only in relation to these designations of earlier international trade mark registration.

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: Fire alarm apparatus and instruments.

The contested goods and services are the following:

Class 9: Terminals for electronically processing credit card payments; Financial management software; Computer software relating to financial history; Computer software relating to the handling of financial transactions; Computer programmes relating to financial matters; Computer e-commerce software; Telecommunications networks; Data processing systems; Data processing software.

Class 35: Data processing; Data processing verification.

Class 36: Credit card payment processing; Processing of payments in relation to credit cards; Financial services relating to credit cards; Financial services for the management of credit cards; Financial information services relating to stolen credit cards; Financial information services relating to lost credit cards; Processing electronic payments made through prepaid cards; Payment processing; Financial transfers and transactions, and payment services; Financial transaction services; Execution of financial transactions (Services for the -); Actuarial services relating to financial transactions; Credit card transaction processing services; Processing credit card transactions for others; Processing debit card transactions for others; Electronic credit card transactions; Electronic debit transactions; Financial transactions.

Class 38: Mobile communications services; Communications by means of mobile phones; Communication services for the electronic transmission of data; Transmission of electronic mail [e-mail data services].

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 terminals for electronically processing credit card payments; Financial management software; Computer software relating to financial history; Computer software relating to the handling of financial transactions; Computer programmes relating to financial matters; Computer e-commerce software; Telecommunications networks; Data processing software. Data processing systems are apparatus and software for handling the financial transactions. These goods have no relevant points in common with the opponent's fire alarm apparatus and instruments. The goods under comparison have a different nature, different purposes and different methods of use. They are not complementary to or in competition with each other. Furthermore, they are usually provided by different undertakings and offered/provided through different distribution channels. Therefore, they are dissimilar.

Contested services in Class 35

The contested services data processing; data processing verification have nothing in common with the opponent’s goods in Class 9 for which use has been proven. These goods and services have different nature (fire detector systems and the service of data processing), different purposes and different methods of use. They are not complementary to or in competition with each other. Furthermore, they are usually provided by different undertakings and offered/provided through different distribution channels. Therefore, they are dissimilar.

Contested services in Class 36

The contested credit card payment processing; Processing of payments in relation to credit cards; Financial services relating to credit cards; Financial services for the management of credit cards; Financial information services relating to stolen credit cards; Financial information services relating to lost credit cards; Processing electronic payments made through prepaid cards; Payment processing; Financial transfers and transactions, and payment services; Financial transaction services; Execution of financial transactions (Services for the -); Actuarial services relating to financial transactions; Credit card transaction processing services; Processing credit card transactions for others; Processing debit card transactions for others; Electronic credit card transactions; Electronic debit transactions; Financial transactions are services related to financial matters. These services have no relevant points in common with the opponent’s goods for which use has been proven. The goods and services have different nature and different purposes (fire detector systems and financial services). They are not complementary to or in competition with each other. Furthermore, they are provided by different undertakings through different distribution channels. Therefore, they are dissimilar.

Contested services in Class 38

The contested mobile communications services; communications by means of mobile phones; communication services for the electronic transmission of data; Transmission of electronic mail [e-mail data services] are different telecommunication services. These services have no relevant points in common with the opponent’s goods in Class 9 for which use has been proven. The goods and services have different nature and different purposes (security systems and financial services). They are not complementary to or in competition with each other. Furthermore, they are provided by different undertakings through different distribution channels. Therefore, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Janja FELC

Adriana VAN ROODEN

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.