JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
15 November 2007 (*)
(Community trade mark – Opposition proceedings – Application for figurative mark SUNPLUS – Earlier national word mark SUN – Likelihood of confusion – Similarity between goods – Similarity between marks)
In Case T‑38/04,
Sunplus Technology Co. Ltd, established in Hsinchu (Taiwan), represented by H. Eichmann, G. Barth, U. Blumenröder, C. Niklas-Falter, M. Kinkeldey, K. Brandt, A. Franke, U. Stephani, B. Allekotte, E. Pfrang, K. Lochner, B. Ertle, C. Neuhierl and S. Prückner, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Sun Microsystems, Inc., established in Palo Alto, California (United States of America), represented by M. Graf, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 October 2003 (Case R 642/2000-4) relating to opposition proceedings between Sun Microsystems, Inc. and Sunplus Technology Co. Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, E. Martins Ribeiro and K. Jürimäe, Judges,
Registrar: C. Kantza, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 4 February 2004,
having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 17 May 2007,
having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 11 May 2004,
having regard to the Orders of the President of the Fifth Chamber of the Court of First Instance of 22 November 2004, 28 February, 1 June, 6 September, 23 November 2005 and 20 March 2006 ordering the proceedings to be stayed,
having regard to the decision of the President of the Fifth Chamber of the Court of First Instance of 12 May 2006 rejecting the request for a stay of proceedings,
further to the hearing on 15 May 2007,
gives the following
Judgment
Background to the dispute
1 On 1 April 1996, Sunplus Technology Co. Ltd filed a Community trade mark application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The trade mark for which registration was sought is the following figurative mark:
3 The goods in respect of which registration was sought are in Class 9 under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and have the following description: ‘chips; semi-conductors; integrated circuits; electronic circuits; semi-conductor chips; semi-conductor elements; micro-processing chips; floating-point computing chips; super-large-scale integrated circuits; program cards; disks having computer program; magnetic disks’.
4 On 18 May 1998, the application was published in Community Trade Marks Bulletin No 36/1998.
5 On 18 August 1998, Sun Microsystems, Inc. filed a notice of opposition under Article 42 of Regulation No 40/94 against registration of the trade mark in respect of all of the goods specified in the application for registration.
6 The ground relied on in support of the opposition was the likelihood of confusion, as referred to in Article 8(1)(b) of Regulation No 40/94, between the trade mark applied for and the following earlier trade marks:
– German trade mark registration No 395 42 323 for the word and figurative mark SUN;
– German trade mark registration No 2 068 483 for the word mark SUN;
– UK trade mark registration No 1 502 653 for the word mark SUN;
– Benelux trade mark registration No 537 382 for the word mark SUN.
7 By decision of 31 March 2000, the Opposition Division of OHIM upheld the opposition and refused the application for the trade mark in its entirety. The Opposition Division based its decision solely on the Benelux registration No 537 382 of 21 September 1993, covering ‘Information and processing installations and apparatus, computers, personal computers, computer terminals, computer input and output devices, computer accessories, computer parts and computer memories, text processing apparatus, computer software, magnetic and electronic data carriers, apparatus and instruments for recording and reproducing data’ in Class 9 under the Nice Agreement.
8 On 5 June 2000, the applicant lodged an appeal with OHIM, in accordance with Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division.
9 By decision of 7 October 2003 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the applicant’s appeal and confirmed the decision of the Opposition Division. The Board of Appeal essentially considered that, although the marks at issue are visually dissimilar overall, the identical nature of the goods concerned and the high degree of phonetic and conceptual similarity between the marks were sufficient to entail a likelihood of confusion on the part of the Benelux public.
Forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those of the intervener.
Law
13 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
14 With reference, first, to the comparison of the goods, the applicant claims that they differ by virtue of their nature, end user and origin.
15 As regards the nature of the goods, the applicant submits that the goods referred to in the Community trade mark application are technical components – in this instance, electronic components – while those protected by the earlier trade marks are electric, electronic and technical apparatus and instruments, in other words, finished products.
16 As regards the end user of the goods, the applicant argues that the goods referred to in the Community trade mark application are intended for highly specialised companies which produce technical devices, while the goods protected by the earlier trade marks are intended for end users. Accordingly, the goods are neither in competition nor complementary.
17 As regards the origin of the goods, the applicant maintains that the average consumer is well aware that finished data processing apparatus and finished technical instruments and devices are not offered by the same company as that which offers the single component parts on the market.
18 With reference, secondly, to the comparison of the marks at issue, the applicant claims that the marks differ at the visual, the phonetic and the conceptual level.
19 At the visual level, the applicant points out, in particular, that the trade mark for which registration is sought contains an eye-catching figurative element, whereas the earlier word marks do not. The fact that the latter consist of a short word, composed of three letters, while the word element of the trade mark for which registration is sought consists of seven letters, is also a difference which cannot be overlooked, given that the words ‘sun’ and ‘plus’ are fused together in a single new term which consumers will not subdivide.
20 At the phonetic level, the applicant submits that the trade mark applied for contains two syllables as against only one in the case of the earlier trade marks so that, when the marks are pronounced, the difference in length will be clearly perceived. Moreover, there is no risk that consumers will abbreviate the term ‘sunplus’, and use only the first part. This is because, first, when ‘sunplus’ is pronounced, the stress will be on the second part of the word – ‘plus’ – and, secondly, because the consumers in the field of technical components will be inclined to identify goods precisely, so as not to run the risk of endangering the functioning of a complete technical system.
21 At the conceptual level, the applicant submits that the earlier trade marks each consist of one word, which is universally known and will be immediately understood by the average consumer, in particular in the Benelux territory, while the mark SUNPLUS is an invented term, fanciful and original, which is not to be found in the dictionary and forms no part of everyday language, and will attract the attention of the consumer when heard, or when seen together with the striking emblem of the trade mark applied for, in advertising or on products.
22 The applicant also argues that the earlier trade marks enjoy greater protection because they are more distinctive. The applicant relies on extracts from the CATAMARAN database to support the submission that numerous trade marks using the word ‘sun’, and referring to goods in Class 9, exist in the Benelux countries.
23 In addition, according to the applicant, there is no likelihood of confusion in the present case on the part of the average consumer, who is deemed to be reasonably well-informed and reasonably observant and circumspect. The absence of any likelihood of confusion is all the more certain because the goods in question, which belong to the electronic components category, are intended for highly specialised businesses. According to the applicant, the consumers concerned therefore select those goods with particular care and attention, so as to ensure that they fit together and that the end product will function properly.
24 The applicant adds that the public targeted will constantly observe the market in order to keep up to date as regards developments and new products. According to the applicant, that means that the trade marks will be committed to memory when they are seen in a magazine or newsletter or on the internet, radio or television advertising being very seldom used for this type of goods. Since it is this first visual contact with the trade mark that the consumer will commit to memory and later recall, the visual differences between the two trade marks at issue are enough to rule out any likelihood of confusion.
25 Finally, the applicant relies upon a decision of OHIM in which the Board of Appeal took the view that there was no likelihood of confusion between the trade mark SUN and the trade mark SUNBREEZE.
26 OHIM and the intervener dispute the grounds relied on by the applicant.
Findings of the Court
27 In the words of Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered ‘if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.
28 In addition, under Article 8(2)(a) of Regulation No 40/94, ‘earlier trade marks’ means Community trade marks, or trade marks registered in a Member State or registered under international arrangements, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
29 The likelihood of confusion on the part of the public, which is defined as the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, must be assessed globally, account being taken of all factors relevant to the circumstances of the case (Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 25 and 26; see also, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraphs 16 and 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraphs 17 and 18).
30 That global assessment implies a certain interdependence between the factors taken into account and, in particular, the similarity of the marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa (Fifties, paragraph 27; see also, by analogy, Canon, paragraph 17, and Lloyd Schuhfabrik Meyer, paragraph 19).
31 In the present case, the opposition was initially founded on a number of earlier trade marks. The contested decision was based solely on the earlier trade mark, registered in the Benelux countries on 21 September 1993. The assessment must therefore be restricted to the territory of the Benelux countries. Given that the relevant goods are computer products, the relevant public is made up of producers in the information technology field or computer users, including those who assemble the component parts of their computer hardware themselves. As the parties accept, such a public must be considered likely to have an above average span of attention and level of understanding of English.
32 As regards the goods covered by the marks at issue, the arguments of the applicant, seeking to show that differences exist between the goods, must be rejected. First, the relevant goods cannot easily be assigned to two distinct categories – components and finished products – even though it is true that the products covered by the trade mark applied for can be described as computer components or, more generally, as components for information and processing installations and apparatus. On the one hand, such components are included in some of the product categories covered by the earlier trade mark and, on the other hand, certain products covered by the earlier trade mark must also be regarded as computer components. Accordingly, the applicant’s argument based on the perception of the different commercial origins of the finished products and of the component parts must also be rejected.
33 It is also necessary to point out that the relevant goods cannot be distinguished by virtue of their end-user. The goods covered by the trade mark application, as well as those protected by the earlier trade mark, are aimed both at specialist producers and at end users, in particular those who assemble the component parts of their computer hardware themselves.
34 None the less, the Board of Appeal’s finding that the relevant goods are identical can only be partially upheld. Although some of the goods covered by the marks at issue are in fact identical, that cannot be said of all the goods at issue, and in particular of integrated circuits and electronic circuits. However, it is necessary to point out, first, that all the goods in dispute, including the integrated circuits and the electronic circuits covered by the trade mark application, belong to the information technology field. Secondly, all the goods covered by the trade mark application can be regarded either as ‘computer components’ or as ‘…electronic data carriers’, or as ‘computer accessories’ covered by the earlier trade mark. Consequently, it is possible, without calling in question the global assessment of the likelihood of confusion, to regard all of them as having, at the very least, a very high degree of similarity.
35 As regards the visual, phonetic or conceptual similarity of the marks in question, it is settled case-law that the global assessment of the likelihood of confusion must be based on the overall impression given by the marks, bearing in mind, inter alia , their distinctive and dominant components (Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47; see also, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25).
36 Concerning, first, the visual comparison of the marks at issue, it should be recalled that there is no reason why the existence of a visual similarity should not be found as between a figurative mark and a word mark since the two types of mark have graphic forms capable of creating a visual impression (Case T-110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II-5275, paragraph 51, and Case T-359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II-1515, paragraph 43).
37 In that regard, it must be held that a complex trade mark (word and figurative) cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant component within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 33, and STAR TV, paragraph 44).
38 The Court has specified that that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole (MATRATZEN, paragraph 34). That does not mean, however, that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components (Case T-31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II-1667, paragraph 49).
39 In the present case, it is necessary to note, first, that the earlier mark is entirely reproduced in the word component of the trade mark applied for, which shows that there is a certain degree of similarity between them at the visual level. Secondly, it should be noted, as the Board of Appeal did, that ‘sun’ undeniably constitutes the dominant component within the overall impression produced by the complex mark at issue, due to the absence of any distinctive characteristic of the word ‘plus’ which, in relation to the word ‘sun’, is only a laudatory addition. However, despite that degree of similarity at the visual level, it must be stated that the presence of the additional word component ‘plus’, and of the figurative component based on the letter ‘s’ and the drawing of a star, in the trade mark applied for introduce significant visual differences between the two marks. It should therefore be held that the Board of Appeal was fully entitled to hold that the two marks at issue were visually different.
40 As regards, secondly, the phonetic comparison, it must be pointed out that there is partial similarity between the trade mark applied for and the earlier trade mark, in so far as the ‘sun’ component, common to both marks, is pronounced in the same way. Moreover, it is the dominant component placed at the start of the word. In that regard, it should be pointed out that, in general, the attention of the consumer is focused on the beginning of the word (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 83). It must be held, in those circumstances, that the phonetic difference between the two marks at issue, resulting from the additional component ‘plus’, is not sufficient to outweigh the phonetic similarity arising from the fact that the dominant component of the trade mark applied for is, as has been established, identical to the dominant component of the earlier trade mark. In addition, the differences noted at the visual level are not to be found at the phonetic level, inasmuch as the figurative component cannot, in the present case, be taken into account.
41 As regards, thirdly, the conceptual comparison, the Board of Appeal was fully entitled to hold that the marks at issue both refer to the idea of ‘sun’.
42 The English word ‘sun’, which is both the only word component of the earlier trade mark and the dominant component of the trade mark applied for, will be easily understood by the public targeted, all the more so as the concept of ‘sun’ is unexpected when used for computer products and it will therefore have a greater impact on the consumer, as the Board of Appeal correctly held. The visual differences noted cannot, in that regard, cancel out the immediate conceptual association between the two marks: on the contrary, they are likely by their very nature, to reinforce it. The enhancing term ‘plus’ is not distinctive in any way and could be viewed as a way of emphasising the word ‘sun’, which it characterises in this context. The same is true of the figurative component of the mark applied for, which could be perceived as a stylised sun. Furthermore, the fact that the term ‘sunplus’ does not appear in the dictionary and forms no part of everyday language does not in any way alter that finding (see, to that effect, Case T-19/99 DKV v OHIM (COMPANYLINE) [2000] ECR II-1, paragraph 26; Case T-360/99 Community Concepts v OHIM (Investorworld) [2000] ECR II-3545, paragraph 23; and Case T-316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II-1951, paragraph 36).
43 In light of the foregoing, the Board of Appeal was fully entitled to hold that there is a high degree of similarity between the marks at issue at the phonetic and conceptual levels, and that that similarity is not cancelled out by the existing visual differences.
44 In view of the fact that there is a very high degree of similarity between the goods covered by the earlier trade mark and by the trade mark applied for (sometimes to the extent that they are identical), and given the phonetic and conceptual similarities between the two marks, the Board of Appeal was fully entitled to find that, in the present case, there is a genuine risk that the relevant public, notwithstanding the fact that it may be particularly attentive, might believe that the goods covered by those marks have the same commercial origin.
45 That finding is not called into question by the applicant’s other arguments.
46 First, as regards the applicant’s argument relating to OHIM’s allegedly inconsistent decisional practice, it suffices to point out that the legality of decisions of the Boards of Appeal must be assessed solely by reference to Regulation No 40/94, as interpreted by the Community judicature, and not by reference to OHIM’s practice in its earlier decisions (Case T-117/02 Grupo El Prado Cervera v OHIM – Héritiers Debuschewitz (CHUFAFIT) [2004] ECR II-2073, paragraph 57, and Case T-202/04 Madaus v OHIM – Optima Healthcare (ECHINAID) ECR II-1115, paragraph 24).
47 Secondly, the applicant’s argument that the distinctive character of the earlier trade mark is weak because of the registration, in the Benelux countries, of several other trade marks containing the word component ‘sun’, and concerning goods in Class 9, must be rejected. As OHIM points out, the extracts from the CATAMARAN database, relied on by the applicant in that regard, were not produced before the Board of Appeal and must, therefore, be excluded by the Court. In any case, those registrations are not sufficient to exclude, in the circumstances, all likelihood of confusion between the marks at issue. On the one hand, those other registrations do not show, of themselves, that the relevant marks have been genuinely used on the market of the relevant territory. On the other hand, and most importantly, it is impossible to deny that the earlier trade mark has, at the very least, a normal distinctive character, for the goods it covers, given the absence of any conceptual link between those goods and the notion of ‘sun’, to which the word component refers.
48 It follows from the foregoing that the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected as unfounded, as must the action in its entirety.
Costs
49 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and by the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Dismisses the action.
2. Orders Sunplus Technology Co. Ltd to pay the costs.
Vilaras | Martins Ribeiro | Jürimäe |
Delivered in open court in Luxembourg on 15 November 2007.