OPPOSITION No B 3 093 107

Comcast Corporation, 1701 John F. Kennedy Boulevard, 19103 Philadelphia, United States of America (opponent), represented by Elkington and Fife LLP, Prospect House, 8 Pembroke Road, Sevenoaks, Kent TN13 1XR, United Kingdom (professional representative)

a g a i n s t

Marken Holdings Limited, Argolidos 2, 1st Floor, Flat/Office 102, Aradippou,
7101 Larnaca, Cyprus (applicant), represented by Cristian Nastase, Diligens Intellectual Property SRL, Bulevardul Libertatii no.22, Bl.102, sc.3, et.6, ap.55, sector 5, 050707 Bucharest, Romania (professional representative).

On 12/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 107 is partly upheld, namely for all the contested goods in Classes 9 and 28.

2. European Union trade mark application No 18 061 400 is rejected for all the above goods. It may proceed for the remaining goods in Class 20.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods (in Classes 9, 20 and 28) of European Union trade mark application No 18 061 400 (figurative mark: ‘ ). The opposition is based on, inter alia, European Union trade mark registration No 18 010 170 (word mark: ‘XFINITY’). The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

The opposition was originally also based on Article 8(5) EUTMR. However, this legal basis was expressly withdrawn in the opponent’s letter of 06/01/2020, p. 12.

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 18 010 170.

a) The goods and services

The goods and services in Classes 9, 35, 36, 37, 38, 41, 42 and 45 on which the opposition is based are the following:

Class 9: Computer software and mobile applications; Computer programs; Telecommunications, television, computer networking and information technology equipment, components, and systems; telecommunications software; Telephones, tablet computers and wireless communication devices for voice, data, or image transmission, media players; television (TV) set-top boxes; digital video recorders (DVRs); remote controls for televisions, computers, and set-top boxes; digital media streaming devices; modems and routers; satellite navigational system, namely, a global positioning system (GPS); accessories for telephones, cellular telephones, tablet computers and wireless communication devices, namely, headsets and earphones, phone chargers, battery chargers, car mounts, mobile phone holders; charging and docking stations, cell phone and tablet computer protective cases, protective covers and cases for handheld electronic devices, cell phone holsters, fitted plastic films for anti-glare and anti-scratch protection adapted for use with mobile phone displays; wireless and mobile speakers; CD and DVD cases; computer bags; mouse pads; computer mice; decorative magnets; wireless telecommunications devices for the transmission of audio, voice, data, image, video, and messaging, internet access, access to navigation and directional service and the ability to download music, videos and applications over the air, and which may include a music player and a camera; wireless communications devices that establishes a local, wireless network; wearable personal electronic devices and sensors that process, store, and transmit biometric data of the user; electronic personal emergency response systems consisting of a wireless device worn on the body with a button that users push to notify others in the event of an emergency, and a remote unit that dials out on the telephone for help; wearable personal location devices equipped with software that enables a parent to monitor their child's location; Computer hardware and software for telecommunications, television, computer networking and information technology; software apps in the fields of entertainment, games and productivity; network management software, software for use in network access control, and creating and maintaining firewalls; computer programs for accessing a global computer network and interactive computer communications network; computer software for encryption; computer and network security software; software for machine to machine (m2m) services, connected devices and the internet of things (IoT); software development kits (SDKs) and application programming interface (API) for creating software and applications related to m2m and IoT devices, and IoT goods and services; software for IoT network and data connectivity, device management, configuration, provisioning, management, and control; software that collects and transmits data from m2m and IoT connected devices and integrates data with enterprise, web and mobile application software; software application that provides for messaging and sharing of voice, data, and photos; software for providing an internet-based television service; software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, playing, storing and organizing text, data, graphics, images, videos, electronic games, digital media and electronic publications; video and electronic game programs and software; software for streaming of content; video clipping software; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer application software for mobile phones, namely, software for processing data; computer application software for mobile phones, namely, software for facilitation of communication; electronic games software for wireless devices; gesture recognition software for the sharing of voice, images and data; software application for transmitting information relating to fitness, activity and health; software application for managing information regarding a health and fitness program; software application for biometric monitoring devices and data; software to enable the transmission of mapping, navigation, traffic, weather and point-of-interest information to telecommunications networks, internet websites and cellular telephones; computer hardware and software systems, namely, on-board diagnostic (OBD) reader, radio transceiver and speaker programmed for placing and responding to requests for roadside assistance, transmission of voice and data, vehicle location and recovery, real-time vehicle diagnostics, emergency incident detection and dispatching of emergency roadside assistance through the use of an internal global positioning systems (GPS) and cellular telecommunications; computer software for dispatching of emergency roadside assistance vehicles in response to requests for service; mobile application providing a parking meter timer; mobile application for locating vehicle on map; computer software that allows users to set reminders for vehicle maintenance notifications; software application for making payments and transferring and receiving money; software application for facilitating mobile payments; electronic financial platform that accommodates multiple types of payment and debt transactions via a mobile phone; digital media services software and hardware platform for the encoding, delivery and display of digital audio and video media content; Downloadable telecommunication software for connecting individuals or entities to communications or IP networks; software and software platforms for digital advertisers and publishers for purposes of brand advertising; downloadable software for use by digital advertisers and publishers for the purpose of placing digital advertising, managing digital advertising campaigns, optimizing advertising impressions, targeting advertising to customer populations, tracking, analyzing, and reporting on advertising campaigns, managing advertising inventory, matching digital advertisers with publishers, participating in advertising auctions and exchanges, and buying and selling advertising; DVD players; downloadable TV programs; downloadable electronic publications, namely, pamphlets, brochures and booklets on the subject of instructional topics; Downloadable mobile applications that enable subscribers to utilize and manage VoIP communication services, telephone calls, video phone calls, calling features, instant messaging, directories and contact lists, call logs, and voice mail; Downloadable mobile applications that enable participants in beta trials of software to provide feedback; Downloadable software in the nature of a mobile application for management, administration, monitoring, configuration, and protection of WiFi networks, managing users, applying software updates, setting bandwidth limits, billing, and maintaining branded splash pages.

Class 35: Retail and online retail store services featuring telecommunications goods, namely, tablet computers, telephones, wireless electronic communication devices and accessories, namely, headsets, batteries, and covers; Retail and online retail store services featuring wearable wireless technology, namely, smart watches and personal fitness monitoring devices, gaming controls and devices, audio and video media streaming devices; Retail and online retail store services featuring television goods, namely, set-top boxes for television, digital video recorders for televisions, network connected devices for the home, namely, thermostats, lighting and home security monitors; subscription television services; promoting telecommunications goods and services, subscription-based TV goods and services, digital technology and consumer electronics through discounts and online coupons; subscription based television services; subscription services for the streaming of television, movies, music, live events, video, games and multimedia content; pre-paid subscriptions providing electronic delivery of audio, video, data, gaming and multimedia content via televisions, computers, handheld computers and mobile telephones; promoting sports competitions and events of others; conducting incentive award programs to promote innovation and technology; marketing services; advertising on mobile electronic device for others; provision of data to wireless subscribers to promote the goods and services of others; administration of a discount program enabling participants to obtain discounts on goods and services through use of a discount membership card; advertising and promotional services; promoting the sale of telecommunications and television services through the administration of an incentive award program whereby customers receive a reward for referring new customers; arranging promotion of charitable fundraising events; charitable services, namely, organizing and conducting employee volunteer programs and community service projects; the bringing together, for the benefit of others, of telephone calling plans, text messaging and wireless data plans, Internet service plans, enabling customers to conveniently compare and purchase those services; the bringing together, for the benefit of others, of television transmission plans, enabling customers to conveniently compare and purchase those services.

Class 36: Issuance of insurance for mobile phones, tablet computers, computers, mobile computing and communication devices, internet-connected devices and other personal electronic devices against theft, loss and damage; providing extended warranties on mobile phones, tablet computers, computers, mobile computing and communication devices, internet-connected devices and other personal electronic devices; electronic transfers of money; financial transaction services, namely, providing secure commercial transactions and payment options; charitable foundation services, namely, providing financial assistance for programs and services of others.

Class 37: Repair services for telecommunications wiring, jacks and telephone equipment; installing and maintaining telecommunications hardware systems and equipment for others; telecommunications network support services, namely, repair and maintenance of telecommunications hardware and apparatus; maintenance of telecommunication network hardware and apparatus; installation of home security and automation systems; Installation, maintenance, and repair of telecommunication networks and equipment, computer hardware, computer systems and communication networks.

Class 38: Cable television services; Cable television broadcasting services; Cable television transmission services; Providing access to telecommunication networks; Provision of telecommunication access to video and audio content via video-on-demand, interactive television, pay per view, and pay television subscription services; Video-on-demand transmission services; Streaming of video and audio material via the Internet and other electronic communications networks; Electronic transmission and streaming of digital media content for others via cable television, Internet protocol television (IPTV), the Internet, mobile networks, wireless networks, fiber-optic networks, and other electronic communications networks; Transmission of interactive television program guides; Providing access to the Internet and other electronic communications networks; Providing electronic mail, instant messaging, web messaging and wireless digital messaging services; Providing wireless hot spots; Telecommunication access services; Personal communications services; Wireless broadband communication services; Wireless broadband telecommunications services; Telecommunications services, namely, voice, video, and data transmissions provided through the use of cable television distribution facilities; High-speed electronic data interchange services provided via modems, hybrid fiber coaxial cable networks, routers, and servers; Electronic, local and long distance transmission of voice, data, and graphics by means of cable, telephone, wireless, ISDN, and technologies; Telephone communication services; Providing voice communications services via cable, fiber optics, the Internet, wireless networks, and other electronic communications networks; Telecommunications services, namely, providing advanced calling features and leasing or rental of telecommunications equipment; Providing fiber optic network services; Voice over Internet Protocol (VoIP) services; Leasing or rental of telecommunications equipment; Video conferencing services; Providing telephone conference services; providing telecommunications services via prepaid telephone calling cards.

Class 41: Distribution of programming to cable television systems, cable multiple-system operators, and multichannel video programming distributors; Distribution of films, movies, and television programs for others; Production of cable television programs; Entertainment services, namely, the provision of continuing live and pre-recorded programs in the fields of comedy, drama, news, commentary, sports and sporting events, distributed via television, cable television, the Internet, wired and wireless networks, mobile networks, and other electronic communications networks; Provision of non-downloadable films, movies, television programs and other video and audio material via an online video-on-demand service; Entertainment services, namely, providing temporary use of non-downloadable video games; Providing online entertainment information, namely, providing information about real time and on-demand films, movies, videos, television programming, music and video, computer and electronic games; Providing entertainment information rendered via television, cable television, the Internet, wired and wireless networks, mobile networks and other electronic communications networks; Entertainment services, namely, providing information, reviews, and personalized recommendations relating to films, movies, videos, television programming, music, video, computer and electronic games and other activities and events in the field of entertainment; Providing audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos via an online video-on-demand service; Providing audio-visual media content in the fields of news, entertainment, sports, sporting events, comedy, drama, music, and music videos via television, cable television, the Internet, wired and wireless networks, mobile network and other electronic communications networks; Entertainment services, namely, providing digital media content via cable television, Internet protocol television (IPTV), the Internet, mobile networks, wireless networks, fiber-optic networks, and other electronic communications networks on a wide variety of topics and subjects; Entertainment services, namely, providing digital media content to electronic devices on a wide variety of topics and subjects; Providing non-downloadable interactive resource for searching, selecting, managing, and recording television programming; Providing non-downloadable programming guides on the subjects of films, movies, videos, television programming and music tailored to viewers' programming preferences; Digital video recording (DVR) services; Providing a website featuring information and news in the fields of entertainment, music, movies, television, celebrities, popular culture, sports and current events.

Class 42: Technical support services, namely, diagnosing telecommunications hardware and software problems, and providing technical advice related to repair and maintenance of telecommunications software; Hosting the web sites of others on a computer server for a global computer network; development and maintenance of web server software for others; Information technology consultation in the field of computers, data mining and computer network design for others; design and development of telecommunications networks; computer technology consulting, namely, providing strategic telecommunications networking information technology assessments, networking information technology strategy development, wide area network strategy development, network application strategy development, web enablement strategies, and IT disaster recovery for enabling business continuity, and development of strategic voice and multi-channel portals; telecommunications network design and network technology services, namely, virtual private network assessment, virtual private network token authentication; computer monitoring service which tracks web-based applications performance, internet performance and engages in website stress testing; design and development of computer hardware, communications hardware and software and computer networks for others, namely, the development and design of electronic messaging services and wireless local area networks, token ring to Ethernet design, internet protocol network design, addressing, routing and load balancing, the development and design of advanced internet protocol, voice over internet protocol (VOIP) and quantity of service networks; consulting the field of computer hardware, communications hardware and computer networks design and development for others, namely, consulting in the field of data center networking upgrades, server assessments, networking management center design, local area network assessments, IT infrastructure telework readiness assessments, and custom design and engineering of public key infrastructure in the nature of telephony systems, cable television systems and fiber optics; Telecommunications network deployment services, namely, computer project management services and token ring to Ethernet to Ethernet software migration; Remote and secure computer services, namely, implementation of computer hardware and software for others, implementation of computer technologies for others for video conferencing purposes; implementation of computer technologies for others featuring local area networks, and deployment of wireless computer networks for others; information technology security services, namely, firewall design analysis and implementation, internet security vulnerability assessments, enterprise network security assessment, and assessment of cloud storage used in conjunction with Health Insurance Portability and Accountability Act to assure compliance with industry standards; Integration of computer systems and networks, namely, basic computer telephony integration; design of interactive voice response systems and voice web browsers, customer profiling and routing systems; computer services, namely, providing a secure, web-based service featuring technology that enables customers to remotely manage, administer, modify and control home security and home automation devices; monitoring of computer systems for security purposes for protecting data and information from unauthorized access, namely, providing routine intrusion detection scans, rogue modem identification, and security policy assessments of software certificates; Operating software defined networks, namely, providing infrastructure as a service (IAAS), in the nature of providing temporary use of non-downloadable cloud-based software, in the field of computer and telecommunication networks featuring software for the design, development and controlling of software defined networks; Platform as a Service (PAAS) featuring computer software platforms for providing bandwidth, scalability, and flexibility needed to power cloud applications; Platform as a Service (PAAS) featuring computer software platforms for designing, building and managing computer networks by separating the networks control and forwarding functions for the purpose of optimizing operation, agility and flexibility of the computer network; Platform as a Service (PAAS) featuring computer leveraging software platforms for the coordination, management and policy administration of business rules and applications across multiple business locations; Software as a service (SAAS) services featuring computer software for software defined network (SDN) administration of controlled wide area networking; Software defined networking (SDN) technology solutions in the nature of providing temporary use of non-downloadable cloud-based software for computer networks to provide functional separation, network virtualization and automation through programmability, aimed at making computer networks agile and flexible; Software defined networking (SDN) in the nature of providing temporary use of non-downloadable cloud-based software for use with computer hardware, computer software and technology solutions aimed at enabling computer network engineers and administrators to respond quickly to changing business requirements; Providing temporary use of non-downloadable computer software for use in managing software defined networking; Providing Connectivity as a Service (CaaS) services featuring computer software platforms for the connection, operation and management of electronic devices and devices in the Internet of Things (IoT); computer and software services, namely, integration, management and development services for enterprise computing software; computer systems analysis in the field of enterprise computing, namely, providing analysis of data regarding the operation and performance of enterprise computing technology and software; systems development, namely, development and implementation of software, hardware and technology solutions for the purposes of connecting, operating and managing electronic devices and devices in the Internet of Things (IoT) and for generating, collecting and analyzing data regarding the operation and performance of enterprise computing technology and software; consulting in the fields of computer enterprise operation and performance; providing technical support services in the nature of technical advice concerning the installation, repair and maintenance of mobile telephones and the maintenance and repair of wireless telephone connections; providing technical support services in the nature of technical advice concerning the installation, repair and maintenance of mobile phones, tablet computers, computers, mobile computing and communication devices, internet-connected devices and other personal electronic devices.

Class 45: Security alarm system monitoring services; home security monitoring using wireless and wired sensors for glass breakage, motion detectors, cameras, alarms, shutoff valves, and gate, door and window contact sensors.

The contested goods in Classes 9, 20 and 28 are the following:

Class 9: Peripherals adapted for use with computers and other smart devices; anti-glare filters for computer monitors; arm rests for use with computers; capacitive styluses for touch screen devices; computer joysticks; computer keyboards; computer keypads; computer monitor frames; computer mouses; computer screens; computer stylus; computer swivelling stands; computer whiteboards; computing visual display units; covers (shaped -) for computers; display screen filters; display screen filters adapted for use with computer monitors; display screen filters adapted for use with tablet computers; dust covers for computers; electronic pens [visual display units]; electronic styluses; filter screens for computer screens; headsets for use with computers; input devices for computers; juke boxes for computers; keyboard terminals; keyboards for tablets; light pens; wrist rests for computer mouse users; wrist rests for use with computers; wireless computer peripherals; wireless computer mice; wearable computer peripherals; trackballs [computer peripherals]; trackballs; touchpads for computers; touch screen pens; stands adapted for tablet computers; stands adapted for laptops; speakers for computers; pens with conductive point for touch screen devices; protective films adapted for computer screens; multifunction computer keyboards; mouse pads; mouse [computer peripheral]; devices for the projection of virtual keyboards; webcams.

Class 20: Bean bag chairs; computer furniture; computer tables; computer cabinets [furniture]; desks; desks of adjustable height; modular desks [furniture]; rocking chairs.

Class 28: Gamepads; gaming keypads; interactive gaming chairs for video games.

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

The term ‘namely’, used in the opponent’s list of goods and services 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 and services specifically listed.

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

All the contested goods are computer-related: parts, devices, components and/or accessories. They are at least similar to the opponent’s computer networking and information technology equipment, components and systems, because they have the same purpose, distribution channels, public and producers.

Contested goods in Class 20

Class 20 mainly includes furniture. Even if it is computer-related, it has a different nature and purpose. Furthermore, these goods are neither complementary nor in competition. Their distribution channels, producers and methods of use are also different. Consumers would not assume that these goods and the opponent’s goods and services come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 28

All the contested gamepads; gaming keypads; interactive gaming chairs for video games have the same distribution channels, public and producers as the opponent´s video and electronic game programs and software in Class 9. Furthermore, they are complementary to each other. Therefore, they are similar.

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 found to be (at least) similar are directed at the public at large and at business customers with specific professional knowledge or expertise. 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.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

XFINITY
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 element ‘INFINITY’ of the contested sign will be understood by the English-speaking public with the meaning ‘time or space that has no end’, see https://dictionary.cambridge.org/de/worterbuch/englisch/infinity. To avoid conceptual differences between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, such as in Germany, that will not understand this meaning.

The earlier trade mark is a word mark, which is protected in all typefaces.

The contested sign is a figurative mark. The figurative element of the contested mark is a rectangular black background. The word ‘INFINITY’ is depicted in white in the middle of this figurative element. In front of this word is the mathematic symbol for infinity, which will be recognised by a part of the public. Another part of the public will perceive it as white brackets containing a red letter ‘X’. The word ‘INFINITY’ is followed by a white hyphen and a red letter ‘X’.

The Office will base its decision on that part of the public that perceives the symbol as white brackets containing a red letter ‘X’.

Both signs have no meaning for the relevant public and are therefore distinctive. The same applies to the figurative element of the contested sign, which has more than basic elements.

The contested sign has no element that could be considered clearly more dominant than other elements.

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).

Visually, the signs differ in the abovementioned figurative element of the contested sign. They also differ in the letter combination ‘IN’ and the final ‘X’ of the contested sign. The signs coincide in their initial letter ‘X’, although these are depicted differently. The letter sequence ‘FINITY’ is identical in both signs. Therefore, the signs are visually similar to an average degree.

Aurally, the figurative element of the contested sign will not be pronounced. The German public will pronounce the earlier trade mark ‘XFINITY’ and at least a part of the public will pronounce the contested sign as ‘XINFINITY’. The last letter ‘X’ will not be spoken. Since the additional letter combination ‘IN’ in the contested sign is the only aural difference, the signs are aurally similar to an above-average 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.

d) 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.

e) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly at least similar and partly dissimilar.

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

Taking into account the average degree of visual similarity, the above average degree of aural similarity, the neutral outcome of the conceptual comparison, the normal degree of distinctiveness of the earlier trade mark and the similarity of the goods, there is - although the degree of attention of a part of the public is high - a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so, when the degree of attention of the public is only average.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

There is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public

In contrast to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be taken into account as coming from the same or economically linked undertakings.

The applicant argues that the earlier trade mark has a low degree of distinctiveness given that many trade marks include ‘INFINITY’. In support of its argument, the applicant refers to several trade mark registrations in the European Union. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘INFINITY’. Under these circumstances, the applicant’s claims must be set aside. Furthermore, the earlier trade mark is ‘XFINITY’ and not ‘INFINITY’.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade marks:

 International trade mark registration No 1 285 115 (word mark: ‘XFINITY’) designating the European Union for goods and services in Classes 9, 38 and 41;

 European Union trade mark registration No 18 031 460 (word mark: ‘XFINITY’) for services in Classes 38 and 45.

These marks are identical to the one which has been examined. The international trade mark registration covers the same or a narrower scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The earlier European Union trade mark registration lists more services in relation to the services in Class 45. However, this does not lead to a change in the assessment of the dissimilar goods in Class 20, because the similarity criteria are not met.

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

Gonzalo BILBAO TEJADA

Peter QUAY

Astrid WÄBER

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.