PAY PER KAY | Decision 2705450 - Evva Sicherheitstechnologie GmbH v. MASSAR SOLUTIONS P.J.S.C.
Date Published: Oct 1, 2017
OPPOSITION No B 2 705 450
Evva Sicherheitstechnologie GmbH, Wienerbergstr. 59-65, 1120 Wien, Austria (opponent), represented by Puchberger & Partner Patentanwälte, Reichsratsstr. 13, 1010 Wien, Austria (professional representative)
a g a i n s t
Massar Solutions P.J.S.C., P.O. Box 33500, Abu Dhabi, United Arab Emirates (applicant), represented by Inlex IP Expertise, Rambla de Mendez Núñez 21-23 / 5ºAB, 03002 Alicante, Spain (professional representative).
On 11/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 705 450 is partially upheld, namely for the following goods:
Class 9: Computer programmes [programs], recorded; computer peripheral devices; computer software, recorded; computer software applications, downloadable; computer programs [downloadable software]
2. European Union trade mark application No 15 182 231 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 182 231, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 12 112 314. 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: Electric and electronic locks, mobile telephones, smartphones, mobile telephones and smartphones equipped for close-range communications, lock cylinders equipped for close-range communications, locking systems and systems for access control, signalling and alarm systems and parts therefor; readers for data carriers, readers for biometric data, interfaces for computers, keyboards; data media, chipcards, encoded cards, magnetically encoded cards, RFID tags; software for the aforesaid goods and installations; computer software for operation and management of access control systems, computer software for authorisation requests.
Class 38: Transmitting messages via close-range communications, procuring access to and information retrieval from databases.
Class 42: Technical consultancy for the planning, manufacture and assembly of locking systems and alarm systems; Design and development of computer hardware and software relating to electronic, electromechanical and mechanical locking systems, locks, warning systems and alarms; Development of graphical user interfaces and web interfaces for the operation and management of access control systems.
The contested goods are the following:
Class 9: Distance measuring apparatus; distance recording apparatus; computer programmes [programs], recorded; computer peripheral devices; computer software, recorded; computer software applications, downloadable; computer programs [downloadable software].
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.
The contested computer programmes [programs], recorded; computer software, recorded; computer software applications, downloadable; computer programs [downloadable software] include, as broader categories, the opponent’s computer software for operation and management of access control systems. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested computer peripheral devices are auxiliary devices that are connected to a host computer but not part of it, such as mouses, keyboards or printers. An interface having a specific architecture is used to interconnect these devices with the computer. To that extent, these goods are similar to the opponent’s interfaces for computers since they are complementary and since manufacturers coincide. Furthermore, interfaces are normally incorporated to the device in question or are provided together with it. Consequently, distribution channels and end consumers normally also coincide.
However, the contested distance measuring apparatus; distance recording apparatus are specific devices that have nothing in common with any of the opponent’s goods and services that are safety, security, protection and signalling devices; consultancy and information technology services for the aforementioned devices; electrical components, software and telecommunication services. To that extent, these contested goods are considered dissimilar to any of the opponent’s goods and services since they have different nature and purpose. They are not complementary or in competition. Furthermore, manufacturers and distribution channels do not coincide.
- 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 found to be identical or similar are directed at the public at large. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
PAY PER KEY | |
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.
The verbal elements composing the signs are meaningless and distinctive in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.
The contested sign is also composed of a graphic element that represents a meter and that is considered distinctive in relation to the goods found identical and similar to the opponent’s goods.
Account is also taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Furthermore, the signs have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘PAY PER K*Y’, which almost constitute the earlier mark in its entirety. They differ in the letters ‘E’ of the earlier mark and ‘A’ of the contested sign, both placed in the eighth position of their respective verbal elements. Although the verbal element in the contested sign is represented as a single word, it can easily be inferred that it actually refers to three different words, ‘Pay’, ‘Per’ and ‘Kay’, since they are clearly represented in three different shades of grey and capitalized. The signs also differ in the meter coloured in different shade of grey together with a black hand in the middle that have no counterpart in the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PAY PER K*Y, present identically in both signs. Despite the fact that the pronunciation differs in the sound of the letters ‘E’ and ‘A’ placed in the eighth position of the verbal elements, the signs still have the same structure and rhythm since they will both be pronounced in three syllables, ‘PAY/PER/KEY’ vs ‘PAY/PER/KAY’. Furthermore, the fact that the verbal element of the contested sign is represented with no space will not add further aural difference.
Therefore, the signs are aurally highly similar, almost identical.
Conceptually, although the public in the relevant territory will perceive the meaning of the meter of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).
The likelihood of confusion includes a likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).
In the present case, the goods are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally highly similar. They coincide in eight out of nine letters/sounds and the differences are confined to a vowel placed at the very end and a figurative element that will in any case, not cause as high an impact on consumers as the distinctive verbal element.
Therefore, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the mind of consumers.
Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods 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 goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Martina GALLE | Sandra IBAÑEZ | Boyana NAYDENOVA |
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.