OPPOSITION No B 3 022 756

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

a g a i n s t

Shenzhen Dami Zhilian Network Co., Ltd., 2/F, Bldg 1, Xintianxia Huasai Ind Dist, 466 Jihua Rd, Bantian, Longgang, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 05/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 022 756 is partially upheld, namely for the following contested goods:

Class 9: Computer peripheral devices; mobile telephones; network communication apparatus; wearable activity trackers; covers for smartphones; earphones; wireless speakers; microphones; electronic book readers; materials for electricity mains (wires, cables); smartwatches; humanoid robots with artificial intelligence; chargers for electric batteries; tablet computers; portable media players; power banks; wireless routers; earbuds; virtual reality headsets.

2. European Union trade mark application No 17 170 705 is rejected for all the above goods. 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 17 170 705 for the word mark ‘Hifinity’, namely against all the goods in Class 9. The opposition is based on inter alia, European Union trade mark registration No 1 742 840 for the word mark ‘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 registration No 1 742 840.

a) The goods

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; audio equipment; loudspeakers; telephones; navigation systems; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 9: Computer peripheral devices; mobile telephones; network communication apparatus; wearable activity trackers; covers for smartphones; earphones; wireless speakers; microphones; plugs, sockets and other contacts (electric connections); electronic book readers; materials for electricity mains (wires, cables); smartwatches; humanoid robots with artificial intelligence; chargers for electric batteries; tablet computers; portable media players; power banks; wireless routers; earbuds; virtual reality headsets.

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 mobile telephones are included in the broad category of the opponent’s telephones. Therefore, they are identical.

The contested network communication apparatus includes, as a broader category, the opponent’s telephones. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested earphones; wireless speakers; microphones; tablet computers; portable media players; earbuds are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

Likewise, the contested virtual reality headsets are head-mounted devices that provide a virtual reality experience for the wearer. They are worn over the eyes like a pair of goggles, blocking out all external light, and show an image on high-definition screens in front of the wearer’s eyes and also include the reproduction of sound. They are included in the broad category of, or at least overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested smartwatches are similar to a high degree to the opponent’s telephones. Smartwatches are electronic wristwatches that are able to perform many of the functions of a smartphone or tablet computer. Consequently, they possess more functions than simply telling the time like more traditional watches. Therefore, smartwatches have certain points in common with the opponent’s telephones. They are often offered by the same companies that produce synchronised devices, and thus they are also complementary to each other. Furthermore, they are sold through the same distribution channels and target the same public. They also have the same methods of use.

The contested wireless routers are at least similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images. A router is a computer networking device that directs traffic on the internet. These goods are offered by the same producers, are sold through the same distribution channels, have the same relevant public and may be complementary.

The contested computer peripheral devices are devices attached to a host computer, the primary function of which is dependent upon the host, and therefore they can be considered to expand the host’s capabilities. They are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images, as these goods have the same producers and distribution channels. Furthermore, they are complementary and target the same public.

The contested covers for smartphones are similar to the opponent’s telephones, as they are complementary and have the same distribution channels and producers. Furthermore, they target the same relevant public.

The contested electronic book readers are mobile electronic devices that are designed primarily for the purpose of reading e-books and digital editions of periodicals. They take a form similar to that of the opponent’s apparatus for recording, transmission or reproduction of sound or images, which includes smartphones. Electronic book readers can connect to the internet through Wi-Fi, and the built-in software can link to a digital library or an e-book retailer. Therefore, the contested electronic book readers and the opponent’s telephones have similar natures. They target the same relevant public, are usually distributed through the same channels and can have the same producers. Furthermore, they may be in competition. Therefore, they are at least similar.

The contested materials for electricity mains (wires, cables) are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images. The quality of cables is one of the parameters that determine the quality of the recording of sound and/or images. Therefore, they are complementary. In addition, they target the same public and have the same distribution channels.

The contested chargers for electric batteries and power banks are considered similar to the opponent’s apparatus for recording, transmission and reproduction of sound and images. This is because the contested goods are used to accumulate electricity, so they are crucial components for the efficient functioning of the opponent’s apparatus, which may include cameras, mobiles phones and computers. Furthermore, the goods may have the same producers, relevant public and distribution channels

The contested wearable activity trackers are devices for monitoring and tracking fitness-related metrics (e.g. distance walked/run, heart rate monitoring), often in the form of wristbands or other wearable devices. They are similar to a low degree to the opponent’s telephones, because they are produced by the same manufacturers and sold through the same distribution channels. In addition, they target the same public.

The contested humanoid robots with artificial intelligence are similar to a low degree to the opponent’s apparatus for recording, transmission or reproduction of sound or images. The contested goods are robots that are built to resemble the human body. The goods under comparison have similar producers and target the same public.

The contested plugs, sockets and other contacts (electric connections) are physical connectors used to link together all varieties of electronic devices. They are dissimilar to the opponent’s goods. Their nature, purpose and method of use are different from those of the opponent’s goods, considering that the latter fall into the electronics field. They are neither complementary nor in competition. Furthermore, they do not have the same producers or distribution 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 found to be identical or similar to various degrees are directed at the public at large.

The degree of attention may vary from average (e.g. earphones, covers for smartphones) to high (e.g. humanoid robots with artificial intelligence), depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

INFINITY	Hifinity
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 marks at issue are word marks, the earlier mark being ‘INFINITY’ and the contested sign ‘Hifinity’.

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.

As pointed out by the opponent, the words constituting the signs are meaningful for part of the public, for instance for the English- and French-speaking parts of the public. ‘INFINITY’ is a point that is further away than any other point and can never be reached (information extracted from Collins English Dictionary on 15/01/2019 at https://www.collinsdictionary.com/es/diccionario/ingles/infinity). In addition, the contested sign may be perceived as a play on words, as a ‘Hi-fi’ is a set of equipment on which you play CDs and tapes and which produces stereo sound of very good quality (information extracted from Collins English Dictionary on 15/01/2019 at https://www.collinsdictionary.com/es/diccionario/ingles/hi-fi). However, the marks are meaningless for another part of the public, for example for the Bulgarian- or Hungarian-speaking part of the public.

Considering that conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (18/12/2008, C‑16/06 P, Mobilix, EU:C:2008:739, § 98; 11/11/2009, T‑277/08, CITRACAL, EU:T:2009:433, § 53), the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian and Hungarian-speaking part of the public, for which neither of the signs has a meaning.

Visually, the signs coincide in the sequence of letters ‘**FINITY’. They differ in their beginnings, namely ‘IN’ in the earlier mark versus ‘Hi’ in the contested sign.

First, it has to be recalled that the fact that the earlier mark is in upper case letters, whereas the contested mark is in title case letters, is irrelevant, as the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 42).

Then, the fact that the marks are of the same length, namely eight letters, of which seven are identical (including six in the same order), leads to the conclusion that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘fi/ni/ty’ and in the initial sound ‘(h)I’. The aural impact of the letter ‘H’, although it is not silent, is not particularly significant.

Given the foregoing, the main (and almost sole) difference between the signs comes from the additional sound of the letter ‘n’ in the earlier mark.

Therefore, the signs are aurally similar to a high 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 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

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 visually similar to an average degree and aurally similar to a high degree, whereas the conceptual aspect has no impact on the comparison.

The goods are partly identical, partly similar to various degrees and partly dissimilar.

The earlier mark has an average degree of distinctiveness. The targeted public is the general public. The degree of attention will vary from average to high.

Overall, the signs are similar, especially on account of their visual and aural commonalities. The beginnings of the signs differ in their first two letters. Nevertheless, the difference involves only two out of the eight letters of the signs. Moreover, bearing in mind that the first letter of the contested sign is not particularly aurally significant, and the first letter of the earlier mark is the same as the second letter of the contested sign, these differences are not decisive.

Moreover, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian- and Hungarian-speaking parts 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark. Indeed, the Opposition Division considers that the degree of similarity between the signs is sufficient to offset the lower degree of similarity between some of the goods.

The rest of the contested goods are dissimilar. As the 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 European Union trade mark registration No 11 388 055 for the figurative mark and on the following goods in Class 9: audio apparatus and devices; woofers, subwoofers, tweeters, mid-range loudspeakers, high fidelity speakers, preamplifiers, speakers, speaker elements, crossover circuits, amplifiers, video recorders, video monitors and power amplifiers; apparatus for recording, transmission or reproduction of sound and/or images; headphones; audio and video receivers; TV receivers; CD players; receivers for home theater systems; speakers for home theatre systems; amplifiers for home theater systems; optical disc players for home theater systems; DVD players for home theater systems; CD players for home theater systems; televisions for home theater systems; televisions, liquid crystal display televisions, plasma televisions, television monitors, remote control units for televisions.

This earlier mark is less similar to the contested mark than the other earlier mark examined above, since it contains an additional figurative element. Regardless, it covers more or less the same scope of goods. This mark is also protected for only electronic goods. These goods and the remaining contested goods (plugs, sockets and other contacts (electric connections) have different natures, purposes and methods of use. They are neither complementary nor in competition. In addition, their producers and distribution channels are also dissimilar. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Consequently, no likelihood of confusion exists with respect to these 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

Nicole CLARKE

Birgit FILTENBORG

Marine DARTEYRE

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.