CANCELLATION No 13 688 C (INVALIDITY)

Nfinity IP, LLC, 530 Permalume Place NW, Atlanta, Georgia 30318, United States of America (applicant), represented by HGF Limited, 4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative)

a g a i n s t

Marco Dominici, Via della Torre 2, 06073 Corciano (PG), Italy (EUTM proprietor), represented by De Simone & Partners S.p.A., Via Vincenzo Bellini 20, 00198 Rome, Italy (professional representative).

On 07/06/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 10 869 212 , namely against all the goods in Classes 18 and 25 and some of the services in Class 35.

The application is based on:

1. United Kingdom trade mark registration No 2 537 669 , registered for athletic shoes for cheerleading, volleyball and basketball in Class 25 and protective pads in Class 28;

2. United Kingdom trade mark registration No 2 545 181 , registered for bags, namely, athletic bags, duffel bags, tote bags and backpacks in Class 18, clothing, namely, shirts, sweatshirts, jackets, pants and shorts; hats and caps; shoes and footwear in Class 25 and protective pads in Class 28.

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs are visually, aurally and conceptually similar, given that they all contain the ‘infinity symbol’ and that this is the dominant elements in all of the marks. In addition, as the goods and services are similar or identical, the consumers might be confused as regards the commercial origin of the goods and services. The applicant refers to its observations made in relation to previous opposition proceedings (14/12/2016, B 2 650 425) to support its claims and the case-law referred to in those submissions.

The EUTM proprietor requested that proof of use be submitted for the earlier marks and, when such proof was submitted by the applicant, it argued that the documents submitted could not prove that the marks had indeed been on the market. The proprietor made no comments in relation to Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH 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.

1. The goods and services

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

United Kingdom trade mark registration No 2 537 669

Class 25: Athletic shoes for cheerleading, volleyball and basketball.

Class 28: Protective pads.

United Kingdom trade mark registration No 2 545 181

Class 18: Bags, namely athletic bags, duffel bags, tote bags and backpacks.

Class 25: Clothing, namely shirts, sweatshirts, jackets, pants and shorts; hats and caps; shoes and footwear.

Class 28: Protective pads.

The contested goods and services are the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 25: Clothing (excluding footwear, gowns and dresses except casual dresses especially for teenagers); headgear.

Class 35: Retailing of the following goods: clothing, bags and goods of leather, bags, goods of leather, handbags, aprons, games and playthings, sports equipment.

Some of the contested goods are identical to goods on which the application is based; for example, hats and caps covered by United Kingdom trade mark registration No 2 545 181 are included in the general category of the contested headgear. Some of the other goods are similar; for example, athletic shoes for cheerleading, volleyball and basketball, covered by United Kingdom trade mark registration No 2 537 669, and the contested clothing are similar, as they have the same purpose and they usually have the same producer, relevant public and distribution channels.

For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods and services listed above. The examination of the application will proceed as if all the contested goods and services were identical to those of the earlier marks.

2. 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.

3. In the present case, the goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is, in general, average.The signs

United Kingdom trade mark registration No 2 537 669

Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

As mentioned above, the applicant argues that these signs are similar in all three levels of comparison, as they both contain the ‘infinity symbol’ and this is the dominant element in both marks. The Cancellation Division finds, first, that, whereas this element might be slightly more dominant than the other elements in the contested mark, given the slightly smaller size of the verbal element ‘love’, the infinity symbol is definitely not dominant in the earlier trade mark, despite its position, because the two elements in this mark are almost the same size and therefore have the same degree of impact on the consumer.

As regards the issue of the consumers making a link between the marks through the ‘infinity symbol’, the Cancellation Division believes that, given the presence of the element ‘NFINITY’ in the earlier mark, a significant part of the public will perceive the figurative element of this mark as an infinity symbol. In the contested mark, however, part of the public will perceive an infinity symbol accompanied by the word ‘love’ and another part of the public will simply perceive it as a loop combined with the word ‘love’.

All of the elements of the marks are distinctive for the goods and services, as none refers to the goods and services or their characteristics.

The Cancellation Division will focus its comparison on the best-case scenario for the opponent, namely on the part of the public that will perceive an infinity symbol in both marks.

Visually, even when consumers perceive an infinity symbol in both marks, the signs differ in how this symbol is depicted. Whereas, in the earlier mark, the symbol is depicted with a thick line stroke in black and white and is slightly tilted to the left, in the contested mark it is depicted with a very simple line stroke in just one colour. Furthermore, whereas the verbal element in the earlier mark is separate from the figurative element, placed underneath it, in the contested mark the verbal element forms part of the loop, in the lower right-hand side. Furthermore, the verbal elements of the marks, and their depictions, are different: the verbal element of the earlier mark is ‘NFINITY’ and it appears in standard, bold upper case letters, whereas the verbal element of the contested sign is ‘love’ and it is depicted in italic lower case letters. Consequently, the marks are visually dissimilar.

Aurally, the public will pronounce the earlier mark as ‘infinity’, whereas the contested mark will be pronounced as either ‘infinity love’ or ‘love’. In the case of the first pronunciation of the contested mark, the marks are aurally similar to a low degree on account of the coincidence in the element ‘infinity’. In the second case, the marks are aurally dissimilar.

Conceptually, the marks will be perceived as ‘infinity’ (earlier mark) and ‘infinity love’ (contested sign). Although they both convey the concept of ‘infinity’, the contested mark is further qualified by the noun ‘love’ and therefore there is only a low degree of conceptual similarity between the marks.

United Kingdom trade mark registration No 2 545 181

Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

Although the applicant claims that the earlier mark will be perceived as the infinity symbol, it is difficult to see how this would be the case, given that it does not contain the word ‘NFINITY’ included in the earlier mark evaluated above and given the peculiarities of its depiction. In the present case, the Cancellation Division finds that, in connection with the goods in question in Classes 18 and 25, the earlier mark will be perceived as a bow tie. On the other hand, the contested trade mark will be seen, as mentioned above, either as a loop accompanied by the word ‘love’ or as the infinity symbol accompanied by the word ‘love’.

In the context of the goods in question in Classes 18 and 25, when perceived as a bow tie, the figurative element in the earlier mark is not fully distinctive. At any rate, the figurative element of the contested mark has less impact than the word ‘love’, as, 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 marks are dissimilar, as they differ both in terms of their figurative elements and how they are depicted and as regards the word ‘love’, which has no counterpart in the earlier trade mark.

Purely figurative marks are not subject to an aural assessment. As one of the marks is purely figurative, it is not possible to compare them aurally.

Conceptually, the marks are not similar, as the earlier mark will be perceived as a bow tie, whereas the contested mark will be perceived as conveying the concept of ‘infinity love’ or simply ‘love’.

Therefore, as regards United Kingdom trade mark No 2 545 181, there is no risk of consumers confusing the origin of the goods and services, even though they are identical or similar, taking into account the fact that the marks are visually dissimilar, cannot be compared aurally and are conceptually not similar.

United Kingdom trade mark registration No 2 537 669 has been found to have some similarities with the contested mark, and the assessment of the likelihood of confusion will therefore continue in relation to only this mark.

4. 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

The fact that the goods of United Kingdom trade mark registration No 2 537 669 are in Classes 18 and 25 plays an important role. Indeed, it must be taken into account that ‘(g)enerally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion’ (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Consequently, the fact that the marks are visually dissimilar is particularly relevant in the present case. Furthermore, the marks are conceptually similar to only a low degree and are, at best, aurally similar to a low degree. Given that the earlier mark has only an average degree of distinctiveness, the public will not confuse the origin of the goods and services or think that they originate from companies with economic ties.

As mentioned above, the applicant refers to the observations made in previous opposition proceedings (14/12/2016, B 2 650 425) to support its claims and the case-law referred to in those submissions. It is important to note that the contested sign in those proceedings was much more similar to the earlier trade mark evaluated in that decision than the contested sign in the present invalidity action is to the current earlier mark:

.

Furthermore, the case-law cited in that case is not analogous to the present proceedings either:

Earlier trade mark	Contested sign

The signs shown above were compared in 15/03/2012, T‑379/08, Mustang, EU:T:2012:125. These signs were found to be similar, as were the ones in 18/05/2011, T‑376/09, Polo Santa María, EU:T:2011:225:

Earlier trade mark	Contested sign

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. This is the case even though the goods and services are identical or similar. . Therefore, the cancellation application must be rejected.

Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Pierluigi M. VILLANI

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 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Article 109(8) EUTMR, such a request must be filed within one month of the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.