OPPOSITION No B 2 575 416

MSC Technologies Systems GmbH, Munzinger Straße 3, 79111, Freiburg im Breisgau, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538, München, Germany (professional representative)

a g a i n s t

Infiniteplay S.R.L., Via G.A. Longhin 131 35129, Padova, Italy (applicant), represented by Dragotti & Associati S.R.L., Via Paris Bordone 9, 31100, Treviso, Italy (professional representative).

On 23/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 575 416 is upheld for all the contested goods and services, namely:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; apparatus for decoding encoded audio and video signals; apparatus for the transmission of images; video telephones; videophones; decoding apparatus; computer software.

Class 37: Installation, maintenance and repair of apparatus for decoding encoded audio and video signals; installation, maintenance and repair of video transmission apparatus; installation, maintenance and repair of decoding apparatus; installation of computer software.

Class 42: Software maintenance and repair services.

2. European Union trade mark application No 13 886 023 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 886 023 , namely against some of the goods and services in Classes 9 and 37, and all the services in Class 42. The opposition is based on, inter alia, European Union trade mark registrations No 12 325 361 ‘INFINITY’ and No 8 992 951 ‘Infinity’. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 12 325 361 and No 8 992 951.

a) The goods and services

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

European Union trade mark registration No 12 325 361

Class 9: 19” rack mountable industrial computers; 19” industrial rack mounting systems.

European Union trade mark registration No 8 992 951

Class 37: Installation, maintenance and repair of data processing equipment, computers and computer peripheral devices.

Class 40: Custom-building of computers, computer hardware, computer peripheral devices, for others, for the industrial sector.

Class 42: Consultancy and providing of support services for users of industrial computers; design and development of computer hardware for the industrial sector.

The contested goods and services are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; apparatus for decoding encoded audio and video signals; apparatus for the transmission of images; video telephones; videophones; decoding apparatus; computer software.

Class 37: Installation, maintenance and repair of apparatus for decoding encoded audio and video signals; installation, maintenance and repair of video transmission apparatus; installation, maintenance and repair of decoding apparatus; installation of computer software.

Class 42: Software maintenance and repair services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contrary to the applicant’s arguments, the opponent’s goods in Class 9 are computers for use as servers and designed to be installed in a framework called a rack. The rack contains multiple mounting slots called bays, each designed to hold a hardware unit (e.g. a computer) secured in place with screwsracks.

The contested apparatus for recording, transmission or reproduction of sound or images; apparatus for decoding encoded audio and video signals; apparatus for the transmission of images; video telephones; videophones; decoding apparatus; computer software include as broader categories, or overlap with, the opponent’s 19” rack mountable industrial computers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 37

The contested installation, maintenance and repair of apparatus for decoding encoded audio and video signals; installation, maintenance and repair of video transmission apparatus; installation, maintenance and repair of decoding apparatus; installation of computer software are identical to the opponent’s installation, maintenance and repair of data processing equipment, computers and computer peripheral devices, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services, contrary to the opponent’s argument.

Contested services in Class 42

The opponent’s consultancy and providing of support services for users of industrial computers cover a wide range of services requiring technical expertise. Hardware and software are closely linked, as they are complementary goods, often provided by the same companies. Therefore, the contested software maintenance and repair services are highly similar to the opponent’s consultancy and providing of support services for users of industrial computers, since, despite their different specific purposes, they have the same nature and target the same users. Furthermore, they are provided by the same companies and distributed through the same channels.

b) 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 identical or similar to a high degree are mostly specialised goods and services directed at business customers with specific professional knowledge or expertise. However, some of them may also be directed at the public at large.

The degree of attention will be higher than average. It will be high, for example, for goods and services that have a sophisticated technological nature, that are expensive or the use of which can have a substantial impact on the running of the customer’s business.

c) The signs

INFINITY European Union trade mark registration No 12 325 361 Infinity European Union trade mark registration No 8 992 951
Earlier trade marks	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 earlier marks are the word marks ‘INFINITY’ and ‘Infinity’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The element ‘INFINITY’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier marks will be understood as referring to a number that is larger than any other number and can never be given an exact value; a point that is further away than any other point and can never be reached; endless time, space, or quantity; an infinitely or indefinitely great number or amount (information extracted from Collins English Dictionary on 09/01/2019 at https://www.collinsdictionary.com/dictionary/english/infinity). The applicant argues that this word is weak. However, the link between the meaning of ‘INFINITY’ and the relevant goods and services is vague; the word does not refer directly to any characteristics of the goods or services. Consequently, the word ‘INFINITY’ is not weak and it is, rather, considered to be of average distinctiveness.

The contested sign is a figurative sign comprising the verbal element ‘INFINITEPLAY’, depicted in upper case letters. Above this verbal element, and more specifically above the second letter ‘I’, are four vertical dots arranged vertically, three in grey and the one at the bottom in black. Moreover, also above the verbal element is a bold grey curved line. Although the verbal element is composed of one word, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the relevant public will, contrary to the applicant’s argument, perceive the elements ‘INFINITE’ and ‘PLAY’ in the verbal element of the contested sign.

The English word ‘INFINITE’ is defined as follows: ‘something that is infinite has no limit, end, or edge’. Alternatively, it may be used to indicate the extent to which something happens or is the case, or the degree to which something is felt (information extracted from Collins English Dictionary on 09/01/2019 at https://www.collinsdictionary.com/dictionary/english/infinite). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The English word ‘PLAY’ will be understood as referring to the action of producing sounds or recorded images (using a musical instrument, music player or other device), as it is commonly used on remote controls and electronic apparatus in relation to starting the device, programme or game. Bearing in mind that the relevant goods and services are IT-related, this element is weak for those goods and services.

The figurative device has at least a minimal degree of distinctive character and will not be overshadowed by the verbal elements, none of which is more dominant than the other.

The element ‘INFINITE’ is therefore the most distinctive element of the contested mark.

When signs consist of both verbal and figurative components, as in the case of the contested mark, 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).

Visually, the signs coincide in the letters ‘INFINIT’, which constitute all but one of the letters of the earlier marks and are at the beginning of the verbal element of the contested mark. However, they differ in the element ‘PLAY’ in the contested mark, which is less distinctive for the goods and services, and in the letter ‘Y’ of the earlier marks, the counterpart of which in the contested sign is the letter ‘E’. The signs further differ in the figurative elements of the contested mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘INFINIT’, present identically in both signs. The pronunciation differs in the sound of the letters ‘PLAY’ of the contested mark, which have no counterparts in the earlier sign, and in the letter ‘Y’ of the earlier marks, the counterpart of which in the contested sign is the letter ‘E’.

Therefore, the signs are aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the verbal element of the contested mark does not have a meaning as a whole for the relevant public, as the signs will be associated with similar meanings, they are conceptually similar at least to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same economically linked undertakings.

In the present case, the goods and services are partly identical and partly similar to a high degree. They target mainly a professional public but also the public at large. The degree of attention is higher than average.

The signs are visually, aurally and conceptually similar at least to an average degree, as they coincide in the letters ‘INFINIT’, which constitute almost the entire earlier marks and the beginning of the verbal element of the contested sign. The signs differ in the additional sequence of letters ‘PLAY’, which is weak for the goods and services and placed at the end of the contested sign, to which the public will pay less attention, as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Moreover, they also differ in the letters ‘Y’/‘E’, which are less noticeable, since they are at the end of the earlier marks and in the middle of the contested sign, and in the figurative elements of the contested sign. The degree of distinctiveness of the earlier sign is normal.

Furthermore, 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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Taking into account all the circumstances of the case, the differences between the signs, including the difference in the figurative device of the contested sign, which has at least a minimal degree of distinctive character, are not sufficient to counterbalance the high degree of similarity between them. The relevant public, even if they are professionals and/or have a high degree of attention, could be mistaken regarding the origin of the goods and services, and believe that they came from the same undertaking. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public in the European Union. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 12 325 361 ‘INFINITY’ and No 8 992 951 ‘Infinity’. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier rights compared above lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irina SOTIROVA

Cristina CRESPO MOLTO

Loreto URRACA LUQUE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.