OPPOSITION No B 2 508 854
Artec Europe S.a.r.l., 2, rue Jean Engling, 1466 Luxembourg, Luxembourg (opponent), represented by Urquhart-Dykes & Lord LLP, The Podium, 1 Eversholt Street, London NW1 2DN, United Kingdom (professional representative)
a g a i n s t
Image Access GmbH, Hatzfelderstraße 161 – 163, 42281 Wuppertal, Germany (applicant).
On 30/03/2016, the Opposition Division takes the following
1. Opposition No B 2 508 854 is upheld for all the contested goods.
2. European Union trade mark application No 13 639 406 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 639 406. The opposition is based on European Union trade mark registration No 12 832 234. 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 goods on which the opposition is based are the following:
Class 9 Biometric identification apparatus; entry and exit security portal; entry and exit security portal comprised of an electronic passageway equipped with biometric devices for identification, verification and detection of permissible items being carried through.
The contested goods are the following:
Class 9 Image scanning apparatus; Optical scanners; Scanners [data processing equipment]; Electronic scanners.
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 or complementary to each other.
Biometric verification, which is present in the opponent´s list of goods, is any means by which a person can be uniquely identified by evaluating one or more distinguishing biological traits. Unique identifiers include fingerprints, hand and earlobe geometry, retina and iris patterns, voice and facial recognitions, DNA and signatures. Biometric devices, such as fingerprint readers, consist of a reader or scanning device, software to convert the scanned information to a digital format and compare matching points, and a database to store the biometric data for comparison.
An image or optical scanner (often abbreviated to ‘scanner’) generates a digital representation of an image for data input to a computer.
In the light of the foregoing, the contested image scanning apparatus; optical scanners; scanners [data processing equipment]; electronic scanners are similar to the opponent’s biometric identification apparatus or entry and exit security portal comprised of an electronic passageway equipped with biometric devices for identification, verification and detection of permissible items being carried through. The contested goods may be components or used in conjunction with one another, and share a complementary character. Although the nature of these goods may be different, they can be produced by the same undertaking or related undertakings and are distributed via the same channels to the same end user.
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 are directed at the public at large and business customers with specific professional knowledge or expertise, because the goods may have a particular purpose depending on their use or whether they are in conjunction with other devices. Therefore, the degree of attention may vary from average to high.
Earlier trade mark
The relevant territory is the European Union.
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
In the case of word marks, the words as such are protected, not their written form. Therefore, it is irrelevant whether the word marks are depicted in lower or upper case letters.
The earlier mark is a word mark composed of seven letters ‘A-R-T-E-C-I-D’ with a space between the fifth and sixth letter.
The contested sign is a word mark composed of six letters ‘A-R-T-T-E-K’.
Both marks have no elements that could be considered more dominant (visually eye-catching) than other elements.
The first letters of the conflicting marks are identical. Consumers generally tend to focus on the first part of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (‘ART’) the one that first catches the attention of the reader.
The relevant public will grasp the element ‘ART’ in the contested mark and will associate it with ‘the creation of works of beauty or other special significance’ or ‘the products of man's creative activities’ (Collins dictionary http://www.collinsdictionary.com/dictionary/english/art on 17/03/2016). Bearing in mind that the relevant goods are scanner apparatus, this element is distinctive for these goods.
The element ‘TEK’ of the contested sign will be associated by the relevant public with ‘technology’ according to the Greek origin of ‘tekhnologia’ (Collins dictionary http://www.collinsdictionary.com/dictionary/english/technology on 17/03/2016). Bearing in mind that the relevant goods are scanner apparatus, this element is non-distinctive for the goods at issue in relation to biometric identification. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks.
The first verbal element ‘ARTEC’ of the earlier sign, as a whole, does not have any meaning and will be interpreted as decorative. Therefore, it is a distinctive element.
However, the second verbal element ‘ID’ of the earlier sign will be associated by the relevant public with ‘identification (document)’ (Collins dictionary http://www.collinsdictionary.com/dictionary/english/id on 17/03/2016). Bearing in mind that the relevant goods are biometric verification and security apparatus, this element is non-distinctive for the goods in relation to biometric identification. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.
Visually, the signs coincide in their first letters ‘A’, ‘R’, ‘T’ and ‘E’. However, they differ in the last letters ‘C’, ‘I’, ‘D’ of the earlier sign and in the additional letters ‘T’ and ‘K’ of the contested sign. Furthermore, a space separates the letters ‘C’ and ‘I’ in the earlier sign. As the element ‘ID’ is considered non-distinctive, the signs are similar to an average degree.
Aurally, bearing in mind that the letter ‘C’ of ‘TEC’ in the earlier sign and the letter ‘K’ of ‘TEK’ in the contested sign will be pronounced in the same way, the pronunciation of the signs coincide in ‘ARTEC(k)’. Although the double ‘T’ in the contested sign is a longer sound this difference is almost undetectable, whereas the pronunciation of the most distinctive element of the earlier mark (ARTEC) and the contested sign are almost identical. However, the pronunciation also differs as the earlier mark has an additional verbal element ‘ID’ which has no counterpart in the contested sign and is a non-distinctive element. Therefore, the signs have a high degree of similarity.
Conceptually, even though signs cannot be artificially dissected, it must be taken into account that consumers tend to look for meaning in a sign. Therefore, when signs contain sequences of letters that constitute elements that are known to the public, it is likely that the consumers will mentally divide the mark into the recognised terms or familiar parts forming it.
The first verbal element of the earlier sign ‘ARTEC’ does not have any meaning for the public in the relevant territory and will be understood as a whole and interpreted as decorative. Therefore, it is a distinctive element. Furthermore, the second verbal element ‘ID’ of the earlier sign will be perceived as ‘identification (document)’ and is, therefore, non-distinctive, as explained above.
The element ‘Art’ of the contested sign will be associated with ‘the creation of works of beauty or other special significance’ or ‘the products of man's creative activities’. In relation to the goods at issue, ‘Art’ is a distinctive element. Moreover, the public in the relevant territory will perceive the element ‘TEK’ as ‘technology’, which is non-distinctive for the goods at issue. Therefore, the contested sign, as a whole, will be understood as ‘the art of technology’.
As the signs will be associated with a dissimilar meaning, they 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.
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, despite the presence of a non‑distinctive element (‘ID’ for ‘identification (document)’) in the mark as stated above in section c) of this decision.
Global assessment, other arguments and conclusion
In the present case, the goods are similar. The earlier mark is deemed to have a normal degree of distinctiveness.
The most distinctive element of the earlier mark ‘ARTEC’ (the element ‘ID’ is non-distinctive, see above) and the contested sign ‘ArtTEK’ have an average degree of visual similarity (differences remain in the letters ‘C’, ‘I’, ‘D’ of the earlier sign and in the letters ‘T’ and ‘K’ of the contested sign, and in the space separating the letters ‘C’ and ‘I’ of the earlier sign) and are aurally practically identical (the dissimilarities between ‘ARTEC’ and ‘ARTTEK’ are almost imperceptible, as explained above). Therefore, in addition with similar goods, the degree of similarity between the signs is sufficient to create a likelihood of confusion.
When regarded and compared as a whole, the differences between the signs are insufficient to completely counteract their similarities and so the signs are, therefore, similar overall. Furthermore, the conceptual difference between the signs may not be sufficient to neutralise their visual and phonetic similarities.
In addition, consumers generally tend to focus on the first letters of a sign when encountering a trade mark. This is justified by the fact that the public reads from left to right, which makes the letters placed at the left of the sign (the initial part) the ones that first catches the attention of the reader. Consequently, the fact that the signs coincide in the letters ‘ART’ is particularly relevant when assessing the likelihood of confusion between the marks.
Even a high level of attention for the goods would not eliminate the likelihood that the consumer will think that the contested mark is in some way economically-linked to the earlier mark, because of the abovementioned reasons. In this respect, account should be taken of the fact that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T- 443/12, ancotel, EU:T:2013:605, § 54), given that only rarely would they have the chance to make a direct comparison between the different marks, but will often have to trust their imperfect recollection of them.
Considering all of the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 832 234. It follows that the contested trade mark must be rejected for all the contested goods.
As stated above in section b) 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.
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 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 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
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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.