Power element has limited force

19th Aug 2021

Charlotte Wilding explains the basis of a partial success for Infineon.

Infineon Technologies AG (Infineon) has been partially successful in its opposition against Electronica Olfer’s (Olfer) INFINIUM POWER device in class 9.

The background to this decision is as follows. On 30th June 2020, Infineon filed an opposition against Olfer’s EU trade mark (EUTM) application for an INFINIUM POWER device in classes 9 and 11, filed on 27th February 2020 (the Opposed Application).

Infineon opposed on the basis of Article 8(1)(b) EUTMR, likelihood of confusion, relying upon its earlier EUTM registration for INFINEON in class 9.

EUIPO assessment

In reviewing the contested goods, the EUIPO held that the class 9 goods were either identical, highly similar or similar to a low degree. The highly similar goods were found to be produced and sold by the same undertaking that manufactures the end-product, and also to target the same purchasing public. Further, the goods were held to be complementary. The goods which were similar to a low degree, although different in nature and purpose, were found to have the same distribution channels, to be addressed to the same public and could be manufactured by the same kind of companies.

However, the class 11 goods were found to be dissimilar. In particular, these goods have different natures and methods of use, different producers and a different relevant public to the class 9 goods of Infineon’s earlier mark. Even if some of the goods in conflict occasionally coincide in distribution channels – for instance, in big commercial stores – in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels cannot be considered to be the same. A number of the goods were found to be neither complementary nor in competition.

Assessment of marks

Moving on to the assessment of the marks, taking Infineon versus Infinium Power, the EUIPO held that the marks were visually similar to a low degree, phonetically similar to an average degree and conceptually similar.

Although the marks both begin with “Infin” and have the same number of letters in the “Infineon” and “Infinium” elements, the addition of the word “Power” and the figurative element reduced the level of visual similarity. However, the “Infineon” and “Infinium” elements share a number of phonetically identical and similar elements and, given that “Power” is non-distinctive and will likely play a secondary role in the mark, this means that the beginning element of the Opposed Application is likely to be the element referred to aurally. Finally, although these elements do not have a specific conceptual meaning, the EUIPO found that they were likely to be linked with the ideas of “infinity” or “infinite”, an outcome that was made more likely by the inclusion of the infinity symbol in the Opposed Application.

On the issue of distinctiveness, although Infineon claimed an enhanced distinctiveness in the mark, it did not provide evidence to confirm this position. Accordingly, the earlier mark was considered to have a normal level of inherent distinctiveness.

Current decision

The EUIPO found that the marks had two highly similar and distinctive verbal and conceptual elements, such that the additional non-distinctive elements would have less impact on consumers, with the result that consumers may believe the marks are from the same or economically linked undertakings.

The EUIPO noted: “The contested sign has as its first element the word ‘Infinium’ which coincides with the earlier mark ‘Infineon’ in their beginnings ‘INFIN-’, in their number of letters, syllables and in the fact that they convey a very similar overall impression. In spite of the fact that the contested sign introduces other elements such as the verbal element ‘power’ and a figurative element consisting of the infinity symbol, these elements are less distinctive or will have in any case less impact than the initial words, on which consumers usually focus their attention. Consequently, the signs were visually lowly similar, but aurally and conceptually similar. The goods were found to be partially identical and partially similar, whereas the attention of the general public will mostly be average but can be higher in certain cases.”

Accordingly, the EUIPO rejected the Opposed Application in class 9. However, the Opposed Application was allowed to proceed in respect of the dissimilar class 11 goods, “as similarity of goods is a necessary condition for the application of Article 8(1)(b) EUTMR, [and so] the opposition based on this article and directed at these goods cannot be successful”.

Given that the opposition was only partially successful, the parties were instructed to bear their own costs. They were given an early August deadline to appeal should they wish to do so.

This case is a reminder that goods/services must be considered similar, even to a low degree, in order for a likelihood of confusion test to succeed. Also, when assessing marks, non-distinctive and figurative elements (even large figurative elements) may not be sufficient to overcome a finding of similarity – particularly if such an element serves only to increase the conceptual similarity. 

Key points

  • Even if a mark is considered to be similar, the goods/services also need to be similar to satisfy a likelihood of confusion test        
  • Figurative elements of a mark may assist in the conceptual assessment

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