Crypted | Decision 2713330 - THALES NORWAY AS v. Crypted
Date Published: Oct 1, 2017
OPPOSITION No B 2 713 330
Thales Norway AS, Nedre Vollgate 11, 0158 Oslo, Norway (opponent), represented by Marks & Clerk France, Immeuble ‘Visium’, 22, avenue Aristide Briand, 94117 Arcueil Cedex, France (professional representative)
a g a i n s t
Crypted, Herengracht 12A, 1015 BK Amsterdam, Netherlands (applicant).
On 24/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 713 330 is partially upheld, namely for the following contested goods and services:
Class 9: VOIP phones; communications servers [computer hardware].
Class 38: Transmission of encrypted communications.
Class 42: Encryption, decryption and authentication of information, messages and data.
2. European Union trade mark application No 15 060 271 is rejected for all the above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 060 271. The opposition is based on European Union trade mark registration No 2 942 415. 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 and services
The goods on which the opposition is based are the following:
Class 9: Crypto generators, encryption devices, crypto management units.
The contested goods and services are the following:
Class 9: VOIP phones; communications servers [computer hardware].
Class 38: Transmission of encrypted communications.
Class 42: Design and development of operating software for computer networks and servers; Programming of operating software for computer networks and servers; Encryption, decryption and authentication of information, messages and data.
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
Encryption is the conversion of electronic data into another form, called cipher text, that cannot be easily understood by anyone except authorised parties (definition extracted from http://searchsecurity.techtarget.com). The opponent’s crypto generators, encryption devices, crypto management units are devices and software used to encrypt communications.
The contested VOIP phones use voice over IP technologies to place and transmit telephone calls over an IP network, such as the internet, instead of the traditional public switched telephone network (definition extracted from https://en.wikipedia.org). The contested communications servers are open, standards-based computing systems that operate as a common platform for a wide range of communications applications and that allow equipment providers to add value at many levels of the system architecture. The majority of VOIP phones and the contested communication servers [computer hardware] use encryption to transmit data. Therefore, they are closely linked to the opponent’s crypto generators, encryption devices, crypto management units.
Consequently, and in spite of the fact that the goods are not in competition, both the end users and the producers/providers of the goods may coincide. Furthermore, they are complementary. For these reasons, these goods are considered similar.
Contested services in Class 38
Encryption devices and software must be used to provide the contested transmission of encrypted communications.
Although the nature of this service and the opponent’s crypto generators, encryption devices, crypto management units is not the same, both the end users and the producers/providers of the goods and services coincide. The goods and services are complementary and they have the same purposes. Consequently, these goods and services are considered similar.
Contested services in Class 42
The contested encryption, decryption and authentication of information, messages and data are closely linked to the opponent’s crypto generators, encryption devices, crypto management units. This is because producers of the opponent’s goods will also commonly provide the contested services (e.g. as a means of keeping the system updated). Furthermore, the opponent’s goods are used to provide these services. They may have the same end users and distribution channels. They have the same purposes and they are complementary. Therefore, they are similar.
However, the contested design and development of operating software for computer networks and servers; programming of operating software for computer networks and servers are not directly related to the opponent’s goods. Contrary to the opponent’s argument, utilisation of the computer system by these goods and services does not necessarily demonstrate a link between them. They have different purposes, different usual origins and different distribution channels. They are neither complementary to nor in competition with each other. Therefore, they are dissimilar.
- 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 similar are directed at the public at large and at business consumers with specific professional knowledge and expertise.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
CRYPTEL | Crypted |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.
The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.
The earlier mark is the word mark ‘CRYPTEL’. The contested sign is the word mark ‘Crypted’.
The words in both signs will be perceived as meaningless by the relevant public and, therefore, have a normal degree of distinctiveness in relation to the relevant goods and services.
Visually and aurally, the signs coincide in ‘Crypte’, namely the first six letters of the signs. However, they differ in their last letters.
Therefore, the signs are similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The conflicting goods are partly similar and partly dissimilar. They target the public at large, as explained in section b). Furthermore, the earlier mark is considered to have a normal degree of distinctiveness in relation to the relevant goods.
A conceptual comparison is not possible between the signs, but they are visually and aurally similar to a high degree due to the commonality in the first six letters of the signs. In contrast, the signs differ in only the last letters of the signs. The Opposition Division is of the opinion that this sole difference is not sufficient to counteract the similarities, which together result in similar impressions being created by the signs when they are perceived by the public as a whole.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to the goods of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Erkki MÜNTER | Bekir GÜVEN | Judit NÉMETH
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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.