JUDGMENT OF THE COURT (Second Chamber)

26 March 2009 ([\*](#Footnote*))

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Word and figurative mark ‘SUNPLUS’ – Opposition by the proprietor of the national word marks ‘SUN’ – Refusal of registration)

In Case C‐21/08 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 21 January 2008,

**Sunplus Technology Co. Ltd,** established in Hsinchu (Taïwan), represented by K. Lochner and H. Gauß, Rechtsanwälte,

applicant,

the other parties to the proceedings being:

**Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),** represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

**Sun Microsystems, Inc.,** established in Palo Alto (United States), represented by M. Graf, Rechtsanwalt,

intervener at first instance,

THE COURT (Second Chamber),

composed of C.W.A. Timmermans, President of the Chamber, K. Schiemann, J. Makarczyk, P. Kūris (Rapporteur) and C. Toader,
Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: L. Hewlett, Administrator,

having regard to the written procedure and further to the hearing on 5 February 2009,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

**Judgment**

1        By its appeal, Sunplus Technology Co. Ltd (‘Sunplus Technology’) seeks to have set aside the judgment of 15 November 2007
of the Court of First Instance of the European Communities in Case T‐38/04 *Sunplus Technology* v *OHIM**– Sun Microsystems (SUNPLUS)* (‘the judgment under appeal’), by which it dismissed Sunplus Technology’s action for annulment of the decision of 7 October
2003 of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’)
in Case R 642/2000-4 (‘the contested decision’).

**Legal context**

2        Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) reads
as follows:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b)      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.’

3        Article 8(2) of that regulation is worded as follows:

‘For the purposes of paragraph 1, “Earlier trade marks” means:

(a)      trade marks of the following kinds with a date of application for registration which is earlier than the date of application
for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those
trade marks:

...

(ii)      trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade
Mark Office;

...’.

4        Article 8(5) of the same regulation provides:

‘... [U]pon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied
for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods
or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier
Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied
for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

**Background to the dispute**

5        On 1 April 1996, Sunplus Technology filed a Community trade mark application with OHIM for registration of the following figurative
mark:

![Image not found](http://publications.europa.eu/resource/celex/62008CJ0021.ENG.html.jur2008_J0021en01_img1.png)

for the following goods in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services
for the purposes of the Registration of Marks of 15 June 1957:

‘Chips; semi-conductors; integrated circuits; electronic circuits; semiconductor chips; semi-conductor elements; micro-processing
chips; floating-point computing chips; super-large-scale integrated circuits; program cards; disks having computer program;
magnetic disks.’

6        On 18 August 1998, Sun Microsystems Inc. (‘Sun Microsystems’) filed a notice of opposition to the application for registration
of the Community trade mark. The opposition was based on four earlier trade marks, including the word mark ‘SUN’ registered
on 21 September 1993 at the Benelux Trade Mark Office for, among others, the goods in Class 9 of the Nice Agreement corresponding
to the following description:

‘Information 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.’

7        The opposition, based on Article 8(1)(b) of Regulation No 40/94, was directed against all of the goods covered by the mark,
registration of which is sought.

8        By decision No 625/2000 of 31 March 2000, OHIM’s Opposition Division upheld the opposition in its entirety.

9        An appeal was brought before OHIM’s Fourth Board of Appeal. By the contested decision, the Board dismissed the appeal. It
confirmed that there was a likelihood of confusion in the Benelux countries in relation to all the goods covered by the Community
trade mark application.

**The judgment under appeal**

10      By application lodged at the Registry of the Court of First Instance on 4 February 2004, Sun Technology brought an action
for annulment of the contested decision, based on a single plea in law alleging infringement of Article 8(1)(b) of Regulation
No 40/94.

11      The Court of First Instance first of all noted, in paragraphs 29 and 30 of the judgment under appeal, the case-law in respect
of likelihood of confusion with an earlier trade mark.

12      Next, the Court of First Instance undertook a global assessment of the factors taking account, in particular, of the distinctive
and dominant components of the opposing marks, following which it decided that the high degree of similarity between those
marks on the phonetic and conceptual levels was not cancelled out by the visual differences existing between them.

13      The Court of First Instance expressed itself in the following terms:

‘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.’

14      Consequently, the Court of First Instance dismissed Sunplus Technology’s action.

**The appeal**

15      Sunplus Technology claims that the Court of Justice should set aside the judgment under appeal, annul the contested decision
and order OHIM to pay the costs.

16      In support of its appeal, it puts forward three grounds alleging, respectively, infringement of Article 8(1)(b) of Regulation
No 40/94, a distortion of facts and evidence and contradictory reasoning by the Court of First Instance.

*Arguments of the parties*

17      As regards the first ground of appeal, Sunplus Technology submits that the Court of First Instance made several errors of
law in concluding that there was a high degree of similarity, within the meaning of Article 8(1)(b) of Regulation No 40/94,
between the opposing marks on the phonetic and conceptual levels which was not cancelled out by the existing visual differences.

18      By the first part of the first ground of appeal, as regards the phonetic level, Sunplus Technology submits, first, that the
comparison of the overall phonetic impression of the opposing marks which the Court of First Instance made in paragraph 40
of the judgment under appeal is inadequate because it is contrary to the Court’s judgment in Case C‐251/95 *SABEL* [1997] ECR I‐6191. The Court of First Instance simply analysed a single part of the opposing marks, the component ‘SUN’,
without assessing them globally and without considering the components ‘S’ and ‘PLUS’. Further, the Court of First Instance
gave no reason for not considering them even though the letter ‘S’ can, by itself, be significant.

19      Secondly, it submits that the Court of First Instance also failed to take account of consumers’ lower level of attention in
phonetic perception since they have little time to analyse a word and subsequently split off from it a syllable such as the
term ‘Sun’.

20      By the first ground of appeal’s second part, as regards the conceptual level, Sunplus Technology claims that the Court of
First Instance made an error of law by restricting, in paragraphs 41 and 42 of the judgment under appeal, the overall comparison
solely to the component ‘SUN’, which is not in a dominant position, without taking into account the stylised ‘S’ combined
with a picture of a star and the term ‘SUNPLUS’.

21      By the first ground of appeal’s third part, as regards the assessment of the likelihood of confusion, Sunplus Technology submits
that the Court of First Instance made an error in law, in paragraph 44 of the judgment under appeal, in not taking account
of the relative importance to be given to each of the factors in the perception of the opposing marks by reference to the
category of goods they cover and to the circumstances in which they are marketed. In this case, the Court of First Instance
should have placed more importance on visual perception.

22      As regards the second ground of appeal, Sunplus Technology claims that the Court of First Instance misinterpreted the facts
and evidence before it, first, by finding, in paragraph 40 of the judgment under appeal, that ‘the differences noted at the
visual level are not be found at the phonetic level, inasmuch as the figurative component cannot, in the present case, be
taken into account’ and, second, by accepting, in paragraphs 41 and 42 of that judgment, that the figurative component of
the trade mark, registration of which is sought, is a stylised sun and not a star.

23      As regards the third ground of appeal, Sunplus Technology submits that the Court of First Instance contradicted itself in
comparing, in paragraph 39 of the judgment under appeal, the opposing marks in the overall impression which they create, taking
into account the word ‘plus’ and the device in the mark, the registration of which is sought, whereas, in paragraph 40 of
that judgment, it finds that those components have no impact on the phonetic comparison or have only a marginal impact on
it and, in paragraph 42 of that judgment, it compares only the syllable ‘SUN’ with the earlier trade mark.

24      OHIM contends that the three grounds of appeal raised by Sunplus Technology are closely connected and can be dealt with together,
and pleads that the first ground of appeal, so far as concerns its first two parts, which are effectively challenging the
findings of fact made by the Court of First Instance, is inadmissible, and that the other grounds of appeal are unfounded.
It contends also that Sunplus Technology should be ordered to pay the costs.

25      Sun Microsystems contends that the appeal should be dismissed and Sunplus Technology ordered to pay the costs, including those
of Sun Microsystems.

*Findings of the Court*

26      Since the three grounds of appeal raised by Sunplus Technology are closely connected, it is appropriate to consider them together.

27      As a preliminary point, it must be noted, as did the Court of First Instance in paragraphs 29 to 35 of the judgment under
appeal, that the likelihood of confusion on the part of the public must be assessed globally, taking into account all the
relevant factors of the case in hand. In addition, as regards the visual, aural or conceptual similarity of the trade marks
in question, the global assessment of the likelihood of confusion must be based on the overall impression given by those trade
marks, taking into account, in particular, their distinctive and dominant elements (see Case C‐206/04 P *Mülhens* v *OHIM* [2006] ECR I‐2717, paragraphs 18 and 19, and the order of 29 June 2006 in Case C‐314/05 P *Creative Technology* v *OHIM*, paragraph 32 and the case-law cited).

28      First, by ruling, in paragraph 43 of the judgment under appeal, that OHIM’s Fourth Board of Appeal correctly held that there
was a high degree of similarity between the opposing marks on the phonetic and conceptual levels which was not cancelled out
by the existing visual differences, the Court of First Instance undertook an assessment of a factual nature (see *Creative Technology* v *OHIM*, paragraph 33 and the case-law cited).

29      In that respect, the arguments developed by Sunplus Technology in connection with the two first parts of its first ground
of appeal seek to put in issue the Court of First Instance’s findings of fact, since the arguments relate to the difference
between the marks in question on the visual, phonetic and conceptual levels, and the assessment made by the Court of First
Instance in that regard.

30      Contrary to Sunplus Technology’s submission, the Court of First Instance examined, as part of both its phonetic and conceptual
analysis, the differences which it had noted in paragraph 39 of the judgment under appeal as regards the visual analysis,
when it stated that the figurative component of the trade mark, registration of which is sought, is composed of the letter
‘S’ and the drawing of a star. Thus, by deciding, in essence, in paragraphs 40 to 43 of that judgment, that the visual differences
between the opposing marks were not to be found on the phonetic and conceptual levels, the Court of First Instance undertook
an assessment of a factual nature.

31      However, under Article 225(1) EC and the first subparagraph of Article 58 of the Statute of the Court of Justice, an appeal
lies on a point of law only. The Court of First Instance has exclusive jurisdiction to find and appraise the relevant facts
and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus does not, save where they
distort the evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see,
among others, Case C‐104/00 P *DKV* v *OHIM* [2002] ECR I‐7561, paragraph 22; Case C‐173/04 P *Deutsche SiSi-Werke* v *OHIM* [2006] ECR I‐551, paragraph 35; and the order of 13 February 2008 in Case C‐212/07 P *Indorata-Serviços e Gestão* v *OHIM*, paragraph 38).

32      As regards the alleged distortion of the facts and of the evidence submitted to the Court of First Instance, Sunplus Technology
has not adduced, in support of its allegation, any material which could lead to the conclusion that the Court of First Instance
distorted the facts by ruling, in paragraph 40 of the judgment under appeal, that the differences noted on the visual level
are not to be found on the phonetic level since the figurative component cannot, in the present case, be taken into account.

33      As regards failure to state reasons for the judgment under appeal, it is clear from Articles 42(2) and 118 of the Rules of
Procedure that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of
fact which come to light in the course of the procedure. Since it was not until the hearing that Sunplus Technology relied
on failure to state reasons and that plea is not based on matters which have come to light since the bringing of the appeal,
the plea must be rejected as being too late.

34      As regards paragraphs 41 and 42 of the judgment under appeal, Sunplus Technology submits that, by finding that the figurative
component of the mark, registration of which is sought, is a stylised sun and not a star and by not taking the ‘S’ into consideration,
the Court of First Instance distorted the facts.

35      Such an assertion, which arises from misinterpretation of the judgment under appeal, must be rejected. In fact, after accepting
the position of OHIM’s Fourth Board of Appeal, which considered that both the opposing marks referred to the idea of ‘sun’,
the Court of First Instance ruled on the informed consumer’s perception of the figurative component of the trade mark, registration
of which is sought, so that it cannot, therefore, be accused of having distorted the facts.

36      The first ground of appeal’s first two parts must, therefore, be dismissed as inadmissible and the second ground of appeal
must be dismissed as unfounded.

37      Next, as regards the third part of the first ground of appeal, it must be held that, by deciding, in paragraph 44 of the judgment
under appeal, that, in view of the very high degree of similarity, or even identity, of the goods covered by the earlier trade
mark and by the trade mark, registration of which is sought, as well as the phonetic and conceptual similarities between the
two marks, OHIM’s Fourth Board of Appeal was fully entitled to find that there was, in the present case, a genuine risk that
the relevant public, notwithstanding the fact that it may be particularly attentive, might believe that the goods covered
by those two marks have the same commercial origin, the Court of First Instance made no error of law in the application of
Article 8(1)(b) of Regulation No 40/94.

38      In fact, as is noted in paragraph 27 of the present judgment, the likelihood of confusion on the part of the public must be
assessed globally, taking into account all the relevant factors of the case in hand and that assessment entails a certain
interdependence between the factors taken into account.

39      In the present case, it must be noted that, in order to reach the conclusion in paragraph 44 of the judgment under appeal,
the Court of First Instance carried out an analysis fully within the process intended to determine the overall impression
produced by the opposing marks and to apply a global assessment to the likelihood of confusion between them, by taking into
consideration all the relevant factors of the case. In that regard, contrary to Sunplus Technology’s submission, the Court
of First Instance, after analysing successively the visual, phonetic and conceptual comparisons of the opposing marks, took
into account both the type of goods concerned and of the public likely to buy them.

40      Accordingly, the third part of the first ground of appeal is unfounded and must be rejected.

41      Finally, as regards the third ground of appeal, alleging contradictory reasoning between the findings in paragraph 39 of the
judgment under appeal and those in paragraphs 40 and 42 of that judgment, it is sufficient to point out that paragraph 39
concerns the assessment of the various visual components of the opposing marks which enabled the Court of First Instance to
conclude that the two marks at issue were visually different, whereas, in paragraphs 40 and 42, the Court of First Instance
examined those marks from the phonetic and conceptual point of view. While the likelihood of confusion must be assessed globally,
each visual, phonetic and conceptual component is to be analysed individually.

42      It follows that the third ground of appeal must be rejected as unfounded.

43      It follows from all the foregoing considerations that the appeal must be dismissed in its entirety.

**Costs**

44      Under Article 69(2) of the Rules of Procedure, which applies to appeals pursuant to Article 118 thereof, the unsuccessful
party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and
Sun Microsystems have applied for costs and Sunplus Technology has been unsuccessful, it must be ordered to pay the costs
relating to the appeal.

On those grounds, the Court (Second Chamber) hereby:

1.      **Dismisses the appeal;**

2.      **Orders Sunplus Technology Co. Ltd to pay the costs.**

[Signatures]

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[\*](#Footref*) Language of the case: English.