OPPOSITION No B 2 731 621

Intercede Limited, Lutterworth Hall, St. Mary's Road, Lutterworth, Leicestershire LE17 4PS, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Rodolphe Compparot-Belin, 12 Rue Vauban, 21000 Dijon, France and My Verified ID Holdings Pty Ltd, Level 5 - 8 Thomas Street, Chatswood 2067, Australia (applicants).

On 07/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 731 621 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services, namely those in Classes 42 and 45, of European Union trade mark application No 15 023 724. The opposition is based on UK trade mark registration No 2 609 017 (series of 2), for goods and services in Classes 9, 35, 37, 38, 41, 42, 45, and European Union trade mark registration No 9 801 424, for goods and services in Classes 9, 37 and 42, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR and on the earlier sign used in the course of trade for ‘myID’ and ‘MyID’ in relation to which the opponent invoked Article 8(4) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The signs

MyID and myID (series of 2, UK No 2 609 017) (EU No 9 801 424)
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom for earlier mark 1) and the European Union for earlier mark 2).

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 distinctiveness of the marks’ elements will be assessed in relation to the following goods and services:

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

UK registration No 2 609 017

Class 9: Computer software; Computer software and hardware; integrated circuits; interfaces for computers; electronic publications; computer hardware and computer software for database management; computer programs; apparatus for searching electronic information from a global computer network or the Internet; data carriers including magnetic, encoded and/or electronic data carriers; data processing equipment; data processing apparatus; apparatus, equipment, software and hardware regarding the maintenance of the security and integrity of computer systems, local computer networks, intra-nets, global computer networks and the Internet; Computer software to enable a service provider to issue, manage and verify the identity of users on a global or local computer network; Computer software to manage access to property, facilities, equipment and devices, documents, information and data; computer apparatus and software for processing data; apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting and retrieving publications, text, signals, software, information, data, code, sounds and images; instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, signals, software, information, data and code; computer software for accessing information directories that may be downloaded from the global computer network; computer software for recording, recognising and interpreting facial characteristics, irises, fingerprints, palm prints or other biometric data; computer software for biometric systems for the identification and authentication of persons; authentication software; magnetically encoded cards; computer software designed to enable smart cards to interact with terminals and readers; computer hardware and computer software relating to the production and use of smart cards; computer software and hardware for the secured storage and management of information; computer software relating to encryption of data, signals, images and sound; computer hardware and computer software for use in voice identification, recognition and verification; photographic identification cards; contact and contactless smart cards; USB devices; one time password ("OTP") tokens; document scanning apparatus, equipment and computer software; password generators; apparatus and instruments for security monitoring and control; security apparatus, devices and alarms; electronic protection equipment; radio, telephonic, television and signalling apparatus and instruments, cameras, sound and video monitoring and recording and sound and video reproducing apparatus and instruments, all for control and telemetry purposes for security; monitors; cameras; system controlling software; video monitoring apparatus; detectors; access control apparatus; readers; magnetic or encoded access control cards; monitoring apparatus; electronic panels for alarm management and monitoring; alarm panels; digital audio recorders; digital video recorders; digital audio servers; digital video servers; electrical communication equipment; message programming equipment; radio paging equipment; electronic locking systems; electronic devices for opening doors; electronic devices for protection; electronic control apparatus; electronic apparatus for controlling operation of machines; remote apparatus for controlling operation of machines; computer apparatus for controlling operation of machines; electronic network equipment; electronic communication equipment; message programming devices; electronic locking apparatus; parts and fittings for all the aforesaid goods; computer software, operating system software, devices, and hardware for transmitting, receiving, synchronizing, displaying, backing-up, monitoring, controlling, sharing, coding, decoding, encrypting, accessing, remotely accessing, creating, collecting, storing, securing, removing, transferring, disseminating, locating, organizing or otherwise utilizing data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data, including over a global communications network; computer software, operating system software, devices, and hardware for synchronizing data, files, e-mails, contacts, calendars, task lists, text messages, photos, music, audio, visual, audio visual, video, text, graphics, programs and other information between computers and hand-held or other devices, and vice versa; communications platforms for enabling instantaneous, continuous, scheduled and perpetual synchronization of data between computers and hand-held or other devices, and vice versa; online and downloadable authentication software; computer software relating to online protection and online security; Electrical and electronic telecommunications and communications apparatus and instruments; data communication apparatus and instruments; apparatus and instruments for the processing, transmission, storage, logging, reception and/or retrieval of data being in the form of encoded data, text, audio, graphic images or video or a combination of these formats; image processing apparatus and instruments; photographic apparatus and instruments; mobile telephones, PDAs and other handheld devices; multimedia apparatus and instruments portable or hand-held computers; Portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code; multimedia cards, memory cards, flash memory cards, memory chips, data storage media devices, plugs, plug-in cards, magnetic cards, SIM cards, portable and/or hand held electronic devices for receiving, storing, playing and transmitting data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data; secure elements and modules, including SIMs, Near-field communications ("NFC") modules, secure application modules, secure access modules, embedded chips, hardware security modules and trusted platform modules; data, text, audio, graphic images or video (downloadable) provided from computer databases, the Internet or other electronic networks; apparatus for downloading data, text, audio, graphic images or video from computer databases, the Internet or other electronic networks; parts and fittings for the aforesaid.

Class 35: Business services; Business services, providing advisory services to others in the field of digital authentication and identification; consulting and referral services in the field of identity management and authentication; offering administration and marketing platforms for identification, verification and security services; cross-marketing of products related to identity cards and other equipment and devices; automated identity verification for business; business investigations, verifications and information, including identity, address, e-mail and telephone number verification; tracking, analyzing, forecasting and reporting the aforesaid; Information, advice and consultancy services relating to the aforementioned services, including those provided online from a computer database, via a helpline or the internet.

Class 37: Repair; maintenance; installation services; installation, maintenance and repair of computers and hardware; repair, maintenance and installation services relating to computers, communications/access control apparatus and equipment, and computer hardware; provision of information, advice, consultancy and information regarding the aforesaid.

Class 38: Telecommunication services to enable a service provider to issue, manage and verify the identity of users on a global or local computer network; telecommunication services to enable a service provider to issue, manage and verify the identity and/or security clearance of individuals, via access to online databases on a global or local computer network; Information, advice and consultancy services relating to the aforementioned services, including those provide online from a computer database, via a helpline or the internet.

Class 41: Education and training; education and training relating to the implementation and operation of identity management systems; education and training relating to the implementation and operation of smart card systems; education and training relating to the authentication of identities; Information, advice and consultancy services relating to the aforementioned services, including those provide online from a computer database, via a helpline or the internet.

Class 42: Computer services; Computer software services; Computer programming services; computer software consultancy; computer software design; computer programming services; repair, maintenance and installation services relating to computer software and programs; installation of computer software; maintenance of computer software; updating of computer software; provision of advice and consultancy regarding the maintenance of the security of computers and integrity of computer systems, local computer networks, intranets, global computer networks and the Internet; computer services to provide a means of authenticating identities; automated identity verification; issuance and management of digital certificates for authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication over the Internet and other computer network; computer services, providing digital identity certification and the development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, managed computer network and Internet security services, public key infrastructure ("PKI") verification, authentication, distribution and management, digital certificate issuance, verification, and management, and enterprise software integration; computer services, providing online information, news, and assistance in the field of digital identity certification; computer services, providing customised reports, search tools and online help; computer consultation regarding computer networks and internal computer networks, security services for computer networks and internal computer networks; consulting services for the development of software applications; designing and programming computer controlled communications systems; consulting relating to the issuance and management of digital certificates; technical and customer support for entities using digital certificates; Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; including online technical storage facilities, online technical back-up services and online technical back-up facilities, software as a service [saas] services, and electronic hosting of files, data, photographs, graphics, documents, videos, images, audio files, audio-visual files, visual files, computer files, computer applications, information for others; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; computer services relating to education and the retrieval of information and data via telephone line, cable, wire or fibre, database or computer network; computer services for retrieving information, messages, text sound, images and data via a computer network, computer services for relating to radio and television programmes, computer services; computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; advice relating to the development of computer systems; advisory services relating to computer based information systems; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; design services; designing electrical or electronic systems; monitoring and analysis of information; computer programming services; internet walled garden services; operation of search engines; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing; computer services relating to the processing of orders and payments; provision of non-downloadable computer software for transmitting, receiving, synchronizing, displaying, backing-up, monitoring, controlling, sharing, coding, decoding, encrypting, accessing, remotely accessing, creating, collecting, storing, securing, removing, transferring, disseminating, locating, organizing or otherwise utilizing data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data, including over a global communications network; application service provider services; technical advisory services including these services provided by a helpline; provision of software updates electronically; provision of online mapping; provision of customised webpages containing user defined information, search engines and links to other websites; online hosting services allowing users to publicise and share data online; provision of interactive calendars from a computer database or over the internet; online provision of information and general encyclopaedic knowledge relating to computer security and online security; provision of remote back-up services for computer data including services provided over a global communications network; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line.

Class 45: Security services; Security services namely, providing on-line information in the field of digital identification and authentication; Security services, providing means to identify users on a global or local computer network; Security services, providing means to authenticate users on a global or local computer network; Security services, providing information and consultancy relating to the issuance and management of digital identities or certificates; advisory services relating to security; security clearance for preparation of identification cards, passwords or other means of identification; security services for preparation of identification cards, passwords or other means of identification; issuing of Public Key Infrastructure ("PKI") certificates and security certificates; issuing of passwords, access keys and identification cards; Management of security credentials; updating, changing, renewing unlocking, suspending cancelling and revoking security credentials; auditing of security credentials; technical consultation services in the fields of computer programming, security networks, data processing, secure communications, data encryption and decryption and local area network security; preparation of reports in relation to the aforesaid; Information, advice and consultancy services relating to the aforementioned services, including those provide online from a computer database, via a helpline or the internet.

European Union registration No 9 801 424

Class 9: Scientific apparatus and instruments; computers; computer hardware and computer software; computer peripherals; integrated circuits; interfaces for computers; electronic publications; computer hardware and computer software for database management, computer programs; apparatus for searching electronic information from a global computer network or the Internet; data carriers including magnetic and electronic data carriers; data processing equipment; data processing apparatus; apparatus, equipment, software and hardware for regarding the maintenance of the security and integrity of computer systems, local computer networks, intra-nets, global computer networks and the Internet.

Class 37: Repair; maintenance; installation services; installation, maintenance and repair of computers and hardware; computer hardware (installation, maintenance and repair of -); repair, maintenance and installation services relating to computers, communications/access control apparatus and equipment, and computer hardware; provision of advice, consultancy and information regarding the aforesaid.

Class 42: Computer services; computer software services; computer software consultancy; computer software design; computer programming services; repair, maintenance and installation services relating to computer software and programs; installation of computer software; maintenance of computer software; updating of computer software; provision advice and consultancy regarding the maintenance of the security computer and integrity of computer systems, local computer networks, intranets, global computer networks and the Internet; provision of advice, consultancy and information regarding the aforesaid; on-line information services regarding the aforesaid in class 42.

The contested services are the following:

Class 42: Testing, authentication and quality control.

Class 45: Identity verification; providing background check services; security marking of documents.

The earlier mark 1) is a word mark consisting of the word ‘MyID’ and ‘myID’ and the earlier mark 2) is a figurative mark consisting of the verbal element ‘MyiD’, written in orange and dark blue in a slightly stylised typeface with the letters ‘y’ and ‘i’ in lower case letters, and placed inside a light and dark blue circle. Earlier mark 1) is a word mark, which means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.

The contested sign is a figurative mark consisting of the verbal element ‘MYVERIFIEDID’, written in capitals, with the letters ‘MY’ and ‘ID’ in white and the letters ‘VERIFIED’ in green. On the left side appears a figurative element in the form of a white square with two faces, one in black and one in white, seen from one side, with superimposed a check mark in green. All these elements are placed inside of a black rectangular frame.

The earlier marks and the contested sign have no element which could be considered clearly more dominant (visually eye-catching). In particular regarding the contested sign, it is considered that all the elements have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or weak elements.

Regarding the earlier marks and the contested sign, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With respect to earlier mark 2) and the contested sign, the letters ‘ID’ are visually separated from the remaining elements, because of their different colours when compared to the letters preceding them. Furthermore, in the case of the earlier mark 1), even though the letters ‘ID’ are not visually separated from the remaining letters, consumers naturally look for a meaning when reading a word. Indeed, the element ‘ID’, even though it is an English abbreviation, is often used in the relevant specialised fields and will be understood by the whole relevant public throughout the relevant territories, since the goods and services are directed at a more specialised professional public that is acquainted with the English language in this field. This abbreviation refers to ‘Identification Document’ (see Collins English Dictionary online). The element ‘MY’, contained in the earlier marks is also an English word belonging to the basic English vocabulary and means ‘of, belonging to, or associated with the speaker or writer (me)’ (see Collins English Dictionary online). The elements ‘MY’ and ‘ID’ in the contested sign have the same meanings as in the earlier marks.

These elements are non-distinctive in the earlier EUTM in relation to the goods and services at stake and its distinctiveness only derives from the stylised and figurative elements. Furthermore, in the particular circumstances of the present case, it must be concluded that the elements ‘MyID’/’myID’ of which the earlier UK registered mark consists, enjoys only a very low degree of distinctiveness, if any, in relation to the goods and services at stake as well. Furthermore, as far as the contested sign is concerned, the elements ‘MY’ and ‘ID’ are considered to be non-distinctive in the context of the sign and its services, and in the particular circumstances of the present case.

Furthermore, the element ‘VERIFIED’, in the contested sign, which is also visually separated from the remaining letters/elements, due to its different colour, is understood by a part of the public, in particular that part that understands English or because the word is very similar to equivalent words in other languages, such as ‘verificado’ (in Spanish and Portuguese), ‘geverifieerd’ (in Dutch), ‘verificeres’ (in Danish), ‘verifiziert’ (in German), ‘vérifié’ (in French), ‘verificato’ (in Italian), ‘verificate’ (in Romanian) and ‘verifierade’ (in Swedish), as: the past of the verb to verify that means: ‘to prove to be true, confirm, substantiate, to check or determine the correctness or truth of by investigation, reference, etc.’ (see Collins English Dictionary online). However, for another part of the public the word ‘VERIFIED’ has no meaning. In this regard the Opposition Division does not concur with the opponent’s observations in which it points out that the term ‘VERIFIED’ does not have a particularly high distinctive character in relation to the contested services, as it merely indicates that something has been checked or authenticated, and that the emphasis lies on the elements ‘MYID’ as being the more distinctive aspects of the sign. The Opposition Division is of the opinion that, indeed, when these verbal elements are understood as a whole, they form a combination of three non-distinctive elements. However, for that part of the relevant public that does not understand the word ‘VERIFIED’, this word is the most distinctive verbal element. The remaining figurative elements, such as the two faces are perceived as such and are normally distinctive for the relevant services. The figurative element in the form of the check mark in the contested sign is also weak in relation to the services at stake, as it refers to ‘approval’ or, as the opponent has pointed out, it indicates that something has been checked or authenticated. Furthermore, the figurative element in the form of a black rectangular frame is more of a decorative nature and will also have less impact on the overall impression of the marks.

Visually, the signs coincide in the elements ‘MY’ and ‘ID’. However, these elements are either, as pointed out above, non-distinctive or of a very low distinctiveness. The marks differ, regarding the earlier mark 2) in the slightly stylised typeface in which the verbal element is written, the figurative element in the form of a circle and the colours and, as far as the contested sign is concerned, in the word ‘VERIFIED’, the colours and in the figurative elements. Even though regarding the earlier mark 1), it is entirely contained in the contested sign, in the earlier mark it is written as one word, while in the contested sign the element ‘MY’ is the beginning of the verbal element and the element ‘ID’ falls at the end of the verbal element in the contested sign. The earlier mark 1) is a word mark, whereas the contested sign is a figurative one. Furthermore, the contested sign has some elements, such as a distinctive figurative element in the form of two faces seen from one side, the check mark, a weak element, a rectangular black frame, also a weak element, and the word ‘VERIFIED’. Even though some of these elements are not that distinctive, they are all elements which are not shared by the earlier mark(s). Furthermore, the contested sign is more than twice as long as the earlier marks and is quite a complex mark.

The length of the signs may influence the perception of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The verbal element of the earlier marks consists only of four letters and these are, therefore, relatively short marks, whereas the contested sign is a much more complex mark of which the verbal element alone consists already of twelve letters, let alone the additional figurative elements.

A complex mark and another mark which is identical or similar to one of the components of the complex mark can be considered to be similar only if that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see also, inter alia, 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 33; 13/04/2005, T-286/03, Right Guard Xtreme Sport, EU:T:2005:126, § 60, 70-73; 07/07/2005, T-385/03, Biker Miles, EU:T:2005:276, § 39). This applies also to the case at hand. As explained above, the verbal elements ‘MY’ and ‘ID’ in the contested sign are not the most dominant elements, since all the elements of which it is composed are equally dominant, and these elements alone do not significantly influence the overall impression of the sign. Furthermore, and most importantly, the coinciding elements are either non-distinctive or of a very low degree of distinctiveness.

Therefore, as the signs coincide in elements which are non-distinctive in the earlier EUTM and contested sign, and of a very low degree of distinctiveness, if any, in the earlier UK mark, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier marks are pronounced as /MY/ /I/ /D/ and the contested sign as, depending on the language, /MY/ /VE-RI-FIED/ /I/ /D/ or /MY/ /VE-RI-FI-ED/ /I/ /D/. While in the earlier marks the pronunciation of the element /MY/ is followed by the sound of the letters /I/ and /D/, in the contested sign the element /MY/ is followed by the sound of the element /VERIFIED/, which has no counterpart at all in the earlier marks and ends with the sound of the letters /I/ /D/. The contested sign is pronounced in at least three more syllables and the marks have a different rhythm and intonation. Furthermore, as pointed out already in the previous paragraph, the coinciding elements are either non-distinctive or of a very low degree of distinctiveness. Consequently, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding elements ‘MY’ and ‘ID’ will evoke a concept/concepts, it is not sufficient to establish any conceptual similarity, as these elements are non-distinctive or of an extremely low degree of distinctiveness and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional distinctive elements, such as the figurative elements in the contested sign and the circle in the earlier mark 2), which all refer to different concepts. Therefore, the signs are not similar conceptually.

Regarding the fact that the verbal element of earlier mark 2) is non-distinctive and that the earlier mark 1) is of a very low distinctiveness, the Opposition Division points out the following: in order to avoid infringing Article 8(1)(b) of EUTMR, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of a European Union trade mark is based (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 47). This circumstance is however not sufficient, to award the earlier mark with a distinctive character of such significance which would give it an unconditional right to oppose the registration of any later mark in which it is reproduced (13/05/2015, T‑102/14, TPG POST / DP et al., EU:T:2015:279, § 43). As a general rule, the public will not consider a descriptive or non-distinctive element forming part of a mark as the distinctive and dominant element of the overall impression conveyed by that mark (16/05/2007, T-491/04, Focus, EU:T:2007:141, § 50-51).

Consequently, for all the above mentioned reasons, as the signs merely coincide in elements which lack any distinctiveness or have an extremely low degree of distinctiveness, they are overall dissimilar.

2. Conclusion

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

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The opponent refers, in its observations of 31/01/2017, to a decision taken by the Court of Justice in Case C-120/4, Thomson Life/Life, in support of its argument that the inclusion of ‘MYID’ of the opposing marks in the trade mark application implies the existence of a similarity. However, this decision is not comparable to the case at hand, because the marks are much more similar, are both word marks, and the earlier mark is only composed of two elements, whereas in the case at hand the contested sign is a much more complex one with more verbal and figurative elements. Therefore, the opponent’s argument must be set aside.

Given that the opposition is not successful under Article 8(1)(b) EUTMR, it is necessary to examine the other ground on which the opposition is based, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims reputation for earlier UK trade mark registration No 2 609 017 for goods and services in Classes 9, 35, 37, 38, 41, 42, 45, and European Union trade mark registration No 9 801 424 for goods and services in Classes 9, 37 and 42.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist/Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

As the signs coincide in elements which are non-distinctive in the earlier EUTM and contested sign, and of a very low degree of distinctiveness, if any, in the earlier UK mark, it is concluded that the signs are not visually, aurally or conceptually similar and they give as well a different overall impression.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

Given that the opposition is not successful under Articles 8(1)(b) and 8(5) EUTMR, it is necessary to examine the other ground on which the opposition is based, namely Article 8(4) EUTMR.

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

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

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

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

The grounds of refusal of Article 8(4) EUTMR

• The earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• Pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark.

• The conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the laws of passing off

In the notice of opposition, the opponent also claimed that it owns the earlier non-registered trade mark ‘myID’ and ‘MyID’, as protected by Article 8(4) EUTMR, for goods and services in Classes 9, 35, 37, 38, 41, 42 and 45. Furthermore, it mentions that it is used in the territory of the United Kingdom and that the nature of the right is ‘the law of passing off’.

In the United Kingdom, non-registered trademarks are protected by Common Law and in particular by the ‘passing off action’. Under the United Kingdom’s law on passing off, the conditions to be met are the following:

- that the plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

- that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

- that the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.

In view of what has already been stated in the section under THE SIGNS - ARTICLE 8(1)(b) EUTMR, it was concluded that the marks have been considered to be dissimilar. The non-registered trade mark is identical to the earlier UK registered mark compared in that section.

Since the earlier mark ‘myID’ is clearly dissimilar from the contested sign , there can be no risk of confusion between the earlier mark and the contested sign, irrespective of the identity or similarity between the goods and services. As a consequence, one of the criteria of UK national law of passing off is not fulfilled (namely, there is no risk of confusion in the mind of the public).

Since one of the cumulative conditions set out above, namely ‘the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark’, is not satisfied, the opposition is not well founded under Article 8(4) EUTMR.

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 applicants 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 applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicants did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Klaudia MISZTAL

Chantal VAN RIEL

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.