OPPOSITION No B 2 699 711

Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co., Ltd.), No. 2, Takara-cho, Kanagawa-ku, Yokohama-shi, Kanagawa-ken, Japan (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Energy Control Limited, Portcullis Trustnet Chambers, P.O. Box 3444, Road Town, Tortola, Virgin Islands of Great Britain (applicant), represented by Cabinet Chaillot, 16-20, Avenue de L’Agent Sarre, 92703 Colombes Cedex, France (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 711 is upheld for all the contested goods.

2.        European Union trade mark application No 14 966 097 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 966 097. The opposition is based on, inter alia, European Union trade mark registration No 10 401 891. The opponent invoked Article 8(1)(b) EUTMR. The opponent initially also invoked Article 8(5) EUTMR in relation to European Union trade mark registration No 11 642 931. However, in its letter of 21/11/2016, the opponent informed the Office that it would not substantiate the opposition insofar as Article 8(5) EUTMR was concerned.

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 application No 10 401 891.

1. The goods

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

Class 9:        Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images, among all the aforementioned goods, multimedia players and multimedia systems, earbuds, earphones, headphones, docking stations, optical disc players, telematics apparatus and navigation apparatus are all for use in connection with vehicles and motorsport; power distribution or control machines and apparatus; electricity distribution boxes; rotary converters; phase modifiers; chargers for batteries; electric dischargers for discharging electricity from batteries; transformers (electricity); remote control systems for recharging for motor vehicles; batteries and cells; fuel cells; electric wires and cables; electrical communication apparatus and instruments for motor vehicles; telephone apparatus; smartphones; vehicular radios communication machines and apparatus; vehicular telematics apparatus; data transmitters and receivers used in association and/or connection with motor vehicles; navigation apparatus for vehicles; charge completion automatic notification apparatus for motor vehicles; not-yet-inserted charge plug notification apparatus for motor vehicles; data processing equipment, computers, computer software, computer programs, all before mentioned goods only relating to automobiles; compact discs [read-only memory]; downloadable sound; electronic documents; electronic service manual; inverters (electricity) for motor vehicles; anti-theft warning apparatus for motor vehicles; spectacles; cases for computers made of leather; CD (compact disc) storage wallets made of leather; cell phone accessories, namely cases; computer software games; earplugs for noise protection; eyewear; flash drives; racing car parts replica, namely driver helmets; memory cards; memory stick; mouse pads; sunglasses; video game software; consumer games (apparatus for-) adopted for use with an external display screen or monitor for domestic use; arcade games (apparatus for-) adapted for use with an external display screen or monitor; straps for holding mobile phones; straps for holding flash drives; straps for holding flash memories; straps for holding eyeglasses; cases for encoded keys.

The contested goods, after a limitation, are the following:

Class 9:        Electric cables for battery packs connection only; wire connectors [electricity] for battery packs connection only; materials for electricity mains [wires, cables] for battery packs connection only; electric wires for battery packs connection only; sockets, plugs and other contacts [electric connections] for battery packs connection only; electric switches for battery packs connection only.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘among all’, 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 with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested electric cables for battery packs connection only; wire connectors [electricity] for battery packs connection only; materials for electricity mains [wires, cables] for battery packs connection only; electric wires for battery packs connection only are included in the broad category of the opponent’s electric wires and cables. Therefore, they are identical.

The contested electric switches for battery packs connection only are electrical components that can break an electrical circuit, interrupting the current or diverting it from one conductor to another. They are included in the broad category of the opponent’s apparatus and instruments for switching electricity. Therefore, they are identical.

The contested sockets, plugs and other contacts [electric connections] for battery packs connection only are electro-mechanical devices used to join electrical terminations and create an electrical circuit. They are included in the broad category of the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

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.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the relevant field. The degree of attention is considered average.

3. The signs

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

The earlier mark is a figurative mark consisting of the word ‘INFINITI’ in slightly stylised black upper case letters. It will be perceived by the English-speaking part of the relevant public as a misspelling of the English word ‘infinity’, meaning ‘the quality or attribute of being infinite or having no limit; boundlessness, illimitableness’ (information extracted from Oxford English Dictionary on 18/05/2017 at http://www.oed.com/). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘INFINITILINKS’ in slightly stylised black upper case letters with a black wave-like line and dot on each side of the a verbal element. Although ‘INFINITILINKS’ is depicted as one word, the relevant consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant English-speaking consumers will perceive the contested sign as consisting of two words: ‘INFINITI’, having the meaning indicated above and ‘LINKS’, being the plural of ‘link’, meaning ‘a connecting part; a thing (occas. a person) serving to establish or maintain a connection; a means of connexion or communication’ (information extracted from Oxford English Dictionary on 18/05/2017 at http://www.oed.com/). The word ‘LINKS’ is considered weak in relation to the relevant goods, since it will be seen as alluding to their intended purpose (connecting parts for electrical circuits). The same applies to the figurative elements, which are likely to be perceived by consumers as mere decorative elements. Consequently, the word ‘INFINITI’ will be attributed more trade mark significance than the remaining elements and, therefore, is the most distinctive element of the contested sign.

Despite some differences in the sizes of the word and figurative elements of the contested sign, neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘INFINITI’, which forms the entire earlier mark and constitutes the most distinctive element of the contested sign. The signs differ in the last five letters, ‘LINKS’, and the figurative elements of the contested sign.

Although the addition of ‘LINKS’ makes the contested sign significantly longer than the earlier mark and creates some visual differences, the first verbal element ‘INFINITI’ fully coincides with the earlier mark. Having regard to the fact that ‘INFINITI’ is the most distinctive element of the contested sign and that consumers generally tend to focus on the beginning of a sign, the difference in the additional weak element ‘LINKS’ and the decorative figurative elements will be paid less attention by the relevant consumers. Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘INFINITI’, present identically in both signs. The figurative elements of the contested sign will not be referred to orally by the relevant public and do not have any impact on the aural comparison. The pronunciation differs in the sound of the letters ‘LINKS’ of the contested sign. Bearing in mind that the coincidence is in the most distinctive element, ‘INFINITI’, of the contested sign and that the element ‘LINKS’ is weak, the signs are considered aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the concept of ‘INFINITI’ will be identically perceived in both signs and the figurative elements of the contested sign will not convey any concept, the only conceptual difference between the signs will arise from the concept conveyed by the word ‘LINKS’ of the contested sign. Bearing in mind that the conceptual coincidence is in the most distinctive element, ‘INFINITI’, and that the element ‘LINKS’ is weak, the signs are considered conceptually similar to at least an average degree.

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

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 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.

5. 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).

As concluded above, the contested goods are identical to the opponent’s goods. They target the public at large and professional consumers with an average degree of attention.

As explained in section c), the signs are considered visually, aurally and conceptually similar to at least an average degree on account of the coinciding distinctive element ‘INFINITI’. The degree of distinctiveness of the earlier mark is average.

Taking into account that the differences between the signs arise from secondary or weaker elements of the contested sign, it must be concluded that they are not capable of counteracting the similarities. Therefore, and applying the abovementioned principle of interdependence, the relevant public with an average degree of attention is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 404 891. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier right No 10 404 891 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lena FRANKENBERG GLANTZ

Rasa BARAKAUSKIENE

Janja FELC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.