OPPOSITION No B 2 789 066

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

Harman International Industries Incorporated, 8500 Balboa Blvd., 91329 Northridge, United States of America (applicant), represented by Boult Wade Tennant LLP, Verulam Gardens, 70 Gray's Inn Road, WC1X 8BT London, United Kingdom (professional representative).

On 22/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 789 066 is partially upheld, namely for all the contested goods except the following:

Class 9: ED (light emitting diodes).

2. European Union trade mark application No 15 577 604 is rejected for all the goods except for those listed above. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 577 604 for the word mark ‘INFINITY’, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 12 325 361 for the word mark ‘INFINITY’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Although European Union trade mark registration No 12 325 361 for the word mark ‘INFINITY is not subject to the proof of use requirement, proof of use of the other earlier marks on which the opposition is based was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 registration No 12 325 361 for the word mark ‘INFINITY’.

a) The goods

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

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

The contested goods are the following:

Class 9: Embedded operating software; computer firmware; computer firmware for operating system programs for original equipment manufacturers; pre-recorded digital media featuring software for data processing; aforementioned goods not including receiver or transmitter modules or any such goods for use in receiver or transmitter modules; computers and computer peripheral devices; computer operating programs, recorded; apparatus and instruments for recording, transmission, reception, processing, retrieval, reproduction and manipulation of sound and audio signals and effects; signal processors; amplifiers; power amplifiers; optical media players; equalizers; microphones; sound effects pedals for musical instruments; computer networking hardware; networking devices; computer software for remote control of one or more audio products, namely, microphones, mixers, amplifiers, signal processors and speakers that is used for control and configuring said audio products; electronic audio effects apparatus; mixing consoles; master audio mixing desks for use in an audio recording studio; electronic musical recording apparatus; effects pedals for musical instruments; sound adaption apparatus for use with musical instruments for creating and reproducing a variety of sound; sound amplifiers for musical instruments and parts and fittings thereof; sound reinforcement and reproducing apparatus in the nature of bass processors; microphones; audio mixing consoles; signal processors; and cables for electrical and optical signal transmission; control apparatus for audio signals; signal, sound, surround, effects and/or voice processors; headphones, earbuds; loudspeakers; audio loudspeaker systems; transducers; studio monitors; transmitters; docking stations; remote controls; audio and video playing and recording equipment; computer software and hardware for operating and controlling audio sound systems and musical and sound reproducing instruments; Vehicle multimedia and audio systems and components, namely, audio speakers, amplifiers, multimedia connectors, mobile phone connectors, control units for amplifiers, multimedia connectors, mobile phone connectors, navigation systems, and audio speaker systems; portable navigation devices; Audio and video transmitting apparatus, namely, electronic microphone splitters; electronic signal distribution systems used for the distribution of audio and video signals, and audio time delay units; apparatus for altering the tonal characteristics of an audio signal, namely, audio compressors, expanders, dynamic characteristics modifiers, noise gates, limiters, electronic audio crossovers; audio test apparatus, namely, phase checkers, audio analyzers and cable testers; audio equalizers; sound amplifiers; computer hardware and software for controlling audio and video equipment, none of the aforesaid goods utilizing satellite transmissions; Signal compressors and expanders; signal compressor limiters; analog signal processors; digital signal processors; audio noise reducers; voltage controlled amplifiers; programmed audio signal route selectors; microprocessor controlled loudspeaker equalizers; audio signal range expanders and restorers; led (light emitting diode) displays; LED (light emitting diode) panels for displaying video or images; electronic regulating and control devices for the operation of LEDs (light emitting diodes); apparatus and instruments for controlling lighting, namely, apparatus and instruments for controlling stage lighting; apparatus and instruments for operation, controlling and supervision of lighting; apparatus and instruments for operation, controlling and supervision of apparatus for lighting and of lighting systems; apparatus and instruments for error detection, error diagnosing and error reporting of apparatus for lighting and of lighting systems; computer hardware and computer software for operation, controlling and supervision of lighting; apparatus and instruments for operation, controlling and supervision of apparatus for lighting and of lighting systems; computer hardware and computer software for error detection, error diagnosing and error reporting of apparatus for lighting and of lighting systems; computer controls for lighting apparatus and instruments; control consoles for lighting apparatus and instruments; programmable controls for lighting apparatus and instruments; remote control apparatus for lighting apparatus and instruments; audio sensitive controls for lighting apparatus and instruments; lighting control software, namely, lighting control software for use in commercial and industrial facilities, in theatres, in night clubs and at concerts; lighting control software for use in stage lighting apparatus and instruments and for controlling stage lighting apparatus and instruments cables, connectors and switches for stage lighting; image projectors for projection of patterns, images, logos, text or shapes; carrying cases and flight cases specially adapted for instruments for controlling lighting apparatus; Tablets; computers; mobile phones; smart phones; handheld computers; wearable digital electronic devices comprised of hardware, software and display screens for viewing, sending and receiving texts, emails, data, audio, image, video files and information; Wearable digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; Multifunctional electronic devices for displaying, measuring, and uploading to the Internet; wearable computers; computer programs and software for monitoring data for use on wearable technology devices; computer software for management, creation, compression and deployment of software updates over electronic channels; programmable central controllers, interface cards and card cages, namely, frames in which circuit cards are mounted and electrically connected to other circuit cards and circuits, sold separately and as an integral component of remote control systems for use with audio, video and lighting equipment; integrated computerized, electronic system comprised of circuit board, control panel and electrical controller and related software for use in accessing and controlling slide projectors, video projectors, compact disc players, projection screens, lighting systems and other related audio/video equipment; integrated computerized, electronic system comprised of cardframes, control cards, floppy disk drives, slide controller, television control manager, master-post expander, wireless receivers, wired control panels, software panels, data signal modulator, infared enmitted cable, power controller, dual power controller, relay controller, receiver module, extended range antenna, relay receiver, incandescent dimmer module, wireless single projector control, wireless dual projector control; software for use in accessing and controlling slide projectors, video projectors, compact disc players, projection screens, lighting systems and other related audio and video equipment; Remote control pads for multi-media systems for educational purposes and home entertainment theatre systems; remote controls featuring a user interface and a keypad for multi-media systems for educational purposes and home entertainment; remote controls; multifunctional remote controls; remote control pads for audiovisual equipment, namely, remote control pads for film and still image projectors, remote control pads for DVD players, remote control pads for VCRs, and remote control pads for satellite receivers; remote control pads for lighting; remote control pads for window shades; remote control pads for projector screens; video and audio conferencing equipment; electronic equipment for routing audio, video, and digital signals, namely, computer hardware, switchers, routers, control panels and key pads; computer software; software interfaces and interface programs for computers; calculating machines; electronic organizers; electronic notepads; digitizers; video digitizers; touch screens; all aforesaid goods also for use with audio systems and mobiles infotainment systems for automobiles; sound recording carriers; magnetic, electronic and optical data storage media; coded servicing and identification cards; integrated circuit cards (smart cards); magnetically encoded cards; memory boards; position sensing gauges; position detection sensors and accessories thereof; navigation apparatus for vehicles (board computers); hardware and software for electronic driving assistance systems; Electronic transmitters and receivers for Video over IP; Computer software and hardware for use in streaming live video and digital signage for video distribution, audio distribution, and video switching systems; Wearable monitors; wearable computers; wearable computer peripherals; wearable smart phones; wearable communications apparatus; wearable activity trackers; wearable portable media players; Wearable digital electronic devices comprising software and protective glass display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers and also featuring a wristwatch; Smartwatches; Wearable technology including watches, bracelet and detachable bands for uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing, remote controlling and providing digital media and information via smartphone, handheld PDAs, tablet, notebook, laptop, portable media player, computer, communication and cloud networks; Wireless Electronic transmitters and wearable receivers for transmitting and receiving streamed audio and video signals from computers, smartphones, handheld PDAs, tablets, notebooks, laptops and portable media players; Wearable Electronic Devices for Providing Physical, visual or Audio Feedback Based on the User's Motion, Orientation, Velocity, or Acceleration; Electronics, namely, wearable fitness accessories, namely, activity tracker, calorie usage measuring devices, namely, calorimeters, fitness progress tracking devices, wearable as gloves, headbands, wristbands, armbands, in the nature of activity tracker; wearable GPS based distance, speed and pace and GPS-compass trackers to be worn on the wrist or arm of a person during exercise; pedometers; Computer application software and downloadable mobile applications for use in connection with the above; Software and applications for mobile devices; downloadable applications for mobile devices; Downloadable mobile applications for multiple wireless connected accessories with fitness and sport data; Software to enable the user to monitor the User's data and progress of trend or achievement including personal information, location, sleep monitoring data, health data including heart rate and body weight for statistical analysis, Wireless data streaming between connected accessories and smartphone via wireless communication; Software enabling the user to record workouts and see exercises in calendar; software to enable connection with friends with social media interaction; software to enable user's friend list synchronization and start challenges between multiple users' goals and earn badges; Mobile tracking with smartphone built-in positioning system on dedicated models to get distance, pace, time during exercise; Computer application software, namely, software for use in connection with wearable computer peripherals or wearable computers which provide functionality for the device; Downloadable mobile applications for use in connection with wearable computer peripherals or wearable computers which provide functionality for the device; Noise cancellation enhancement software, for enhancing headphone, audio speakers, and earbud sound; Computer software that provides web-based access to applications and services through a web operating system or portal interface; Computer software for manipulating digital audio information for use in audio media applications; computer software for downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio data video files; Computer application software for mobile phones, portable media players, handheld computers, computers, tablets; Downloadable software application for downloading DVR-recorded content for viewing on smartphones [downloadable DVR sideloading software]; Application software for cloud computing services; Non-downloadable cloud software for the internet of things (IoT); computer hardware modules for use in Internet of Things (IoT); electronic devices enabling connection to the internet; sensors for the Internet of Things; Computer application software for smart phones, mobile phones, smart TV and handheld electric communication device, which is used for implementing internet of things; hardware and devices embedded with electronics, software, sensors and internet connectivity, which enables these objects to collect and exchange data; Wireless communication devices for voice, data or image transmission; Wireless communication device featuring voice, data and image transmission including voice, text and picture messaging, a video and still image camera, also functioning to allow the user to purchase music, games, video and software applications over the air for downloading to the device; computer software which provides over the air updates to other software; computer software that enables the wireless transmission and provision of real-time information regarding traffic, road conditions, points of interest, topics of general interest and online content via wireless transmissions to mobile communications devices, mobile phones, and electronic devices installed in automobiles and other vehicles; including all such software that enables automobile and vehicle drivers and passengers to aggregate such data, information, observations, commentary, opinions, and other content for transmission or broadcast by others via the internet, radio or television; computer software that enables the wireless transmission and provision of real-time information to enable automobile and vehicle drivers and passengers to communicate with each other and share real-time data, information, observations, commentary, opinions, and multimedia and online content via wireless communications devices; including all such computer software that enables automobile and vehicle drivers and passengers to aggregate such data, information, observations, commentary, opinions, and other content for transmission or broadcast by others via the internet, radio or television; computer software that enables the wireless transmission and provision of real-time information to enable automobile and vehicle drivers and passengers to communicate with each other and share real-time data, information, observations, commentary, opinions, and multimedia and online content via mobile phones, and electronic devices installed in automobiles and other vehicles.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the [opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 goods in Class 9 (except ED (light emitting diodes)) are all IT-related goods, namely computer hardware, software, peripherals and their parts or accessories. They are all identical or similar to at least a low degree to the opponent’s 19" rack mountable industrial computers. Some of the contested goods are identical to the opponent’s goods because they include, are included in, or overlap with the abovementioned opponent’s goods. As examples, the contested computers include the opponent’s 19" rack mountable industrial computers, while the contested apparatus and instruments for recording, transmission, reception, processing, retrieval, reproduction and manipulation of sound and audio signals and effects overlap with the opponent’s 19" rack mountable industrial computers. Other contested goods are similar to varying degrees to the opponent’s goods because they have in common several of the criteria used for the finding of similarity, such as the same commercial origin and channels of trade, and/or the fact that the goods are complementary, or are in competition with each other and have the same public. As examples, the contested magnetic, electronic and optical data storage media are similar to a high degree to the opponent’s 19" rack mountable industrial computers as they as they usually coincide in producer, relevant public and distribution channels, and they are complementary; the contested embedded operating software is similar to the opponent’s 19" rack mountable industrial computers as they as they usually coincide in producer, relevant public and distribution channels, and they are complementary; and the contested carrying cases and flight cases specially adapted for instruments for controlling lighting apparatus are similar to a low degree to the opponent’s 19" rack mountable industrial computers as they as they usually coincide in relevant public and distribution channels, and they are complementary.

The contested ED (light emitting diodes) are sufficiently removed from the opponent’s goods in Class 9. They are products of a different nature and with a different purpose to those of the opponent's goods in Class 9. Apart from serving different purposes, these goods have different distribution channels, they are neither complementary nor in competition and they are usually not produced by the same entities. The mere fact that some of the contested goods found to be similar, such as LED (light emitting diode) displays incorporate the contested light-emitting diodes, does not automatically establish similarity for these goods. Therefore, these goods are considered dissimilar to all the opponent's goods.

b) The signs

INFINITY	INFINITY
Earlier trade mark	Contested sign

The signs are identical.

c) 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).

In the present case, the signs are identical and the goods are either at least similar to a low degree, with some of them being identical, or they are dissimilar.

The applicant claims that a finding of similarity between the contested goods and the goods covered by the opponent´s European Union trade mark registration No 12 325 361 would be an incorrect and artificial expansion of the reasoning behind the judgement of 12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26. However, the case referred to by the applicant is not relevant to the present proceedings, since it compared goods in Class 9 to services in Classes 38 and 42, while the present case deals exclusively with goods in Class 9.

As stated above, the signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Furthermore, another part of the contested goods were found to be at least similar to a low degree to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 325 361. It follows that the contested trade mark must be rejected for all the contested goods found to be identical or at least similar to a low degree to the opponent´s goods.

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.

The opponent has also based its opposition on the earlier German trade mark registration No 2 028 282 and European Union trade mark registration No 1 133 545, both for the word mark ‘INFINITY’ and European Union trade mark registration No 1 134 139 for the word mark ‘INFINITY COMPUTER’.

The other earlier rights invoked by the opponent cover goods and services in Classes 9, 16, 38 and 42 which are clearly different to the remaining ED (light emitting diodes) of the contested trade mark, since they have no point in common with them. Although they might have a very loose relationship with some of the goods and services, in the sense that they may indirectly be related to IT, this is not sufficient to find any similarity between them. Finding similarity for these goods and services would, in fact, lead to a situation in which the registration of any kind of computer or IT services would in practice exclude subsequent registration of any type of digital, electronic and scientific apparatus or device (Decision of 5/12/2014 – R 401/2014-4 – NAVITAR). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Benoit VLEMINCQ

Helen Louise MOSBACK

Jorge ZARAGOZA GÓMEZ

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.