JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
27 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark Camele’on — Earlier international and national word marks CHAMELEON — Relative ground for refusal — No similarity — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑472/17,
Wilhelm Sihn jr. GmbH & Co. KG, established in Niefern-Öschelbronn (Germany), represented by H. Twelmeier, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
in-edit Sàrl, established in Mondorf-les-Bains (Luxembourg),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 25 May 2017 (Case R 570/2016-4), relating to opposition proceedings between Wilhelm Sihn jr. and in-edit,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 31 July 2017,
having regard to the response lodged at the Court Registry on 11 October 2017,
further to the hearing on 18 May 2018,
gives the following
Judgment
Background to the dispute
1        On 2 October 2014, in-edit Sàrl filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 9 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond for each of those classes, following the modification of the wording of the services in Class 42 made during the proceedings before EUIPO, to the following description:
–        Class 9: ‘Computer software packages and computer software for configuring technical and commercial data; software packages for computer-assisted production and/or sales; computer software, software packages; computer software programs; magnetic, optical or digital data carriers’;
–        Class 42: ‘Design, development, updating and maintenance of computer software and software packages; rental of computer software and software packages; research, technical studies, consultancy and advice relating to the installation of computer software and computer software packages; research and technical studies relating to the installation of computers and computer systems; research, technical studies, consultancy and technical advice relating to the setting up of computers and computer systems, computer software and computer software packages’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 216/2014 of 17 November 2014.
5        On 21 January 2015, the applicant, Wilhelm Sihn jr GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier German word mark CHAMELEON, registered on 6 October 2010 under No 302010044937, and on international registration No 1088117 designating the European Union for the word mark CHAMELEON, registered on 14 June 2011 (‘the earlier marks’).
7        Those earlier marks were registered for goods in Class 9 corresponding to the following description: ‘head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals; parts of the aforesaid goods; accessories or fittings for the aforesaid goods, as far as included in this class’.
8        The ground relied on in support of the opposition was that set out in Article 8(1) of Regulation No 207/2009 (now Article 8(1) of Regulation 2017/1001).
9        By decision of 25 January 2016, the Opposition Division upheld the opposition for ‘computer software, software packages; and computer software programs; magnetic, optical or digital data carriers’ in Class 9. By contrast, it rejected the opposition for ‘computer software packages and computer software for configuring technical and commercial data; software packages for computer-assisted production and/or sales’ in Class 9 (‘the goods at issue in Class 9’) and the services in Class 42, covered by the mark applied for.
10      On 24 March 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      By decision of 25 May 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It found that the goods at issue in Class 9 and the services in Class 42 covered by the mark applied for were dissimilar to the goods covered by the earlier marks and, consequently, took the view that the opposition based on Article 8(1)(b) of Regulation No 207/2009 had to be rejected.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO claims that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
14      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It submits that the Board of Appeal erred in finding that the goods at issue in Class 9 and the services in Class 42, covered by the mark applied for, were dissimilar to the goods in Class 9 covered by the earlier marks and, consequently, the Board of Appeal was wrong to conclude that there was no likelihood of confusion.
15      In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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. Furthermore, under Article 8(2)(a)(ii) and (iv) of Regulation No 207/2009 (now Article 8(2)(a)(ii) and (iv) of Regulation 2017/1001), ‘earlier trade marks’ is to be understood as meaning trade marks registered in a Member State and trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
16      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
18      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
19      In the first place, it is necessary to consider the Board of Appeal’s comparison of the ‘computer software packages and computer software for configuring technical and commercial data; software packages for computer-assisted production and/or sales’ in Class 9 covered by the mark at issue and the ‘head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals; parts of the aforesaid goods; accessories or fittingsfor the aforesaid goods, as far as included in this class’ in Class 9 covered by the earlier marks.
20      In the contested decision, the Board of Appeal found that the fact that goods in Class 9 covered by the earlier marks may be fine-tuned by software is not sufficient to conclude that those goods were similar to the Class 9 goods at issue covered by the mark applied for.
21      First, it observed that the nature and distribution channels of those goods were different. In that regard, it explained that software and software packages were in essence intangible goods that were often sold online, whereas the head ends for cables networks and apparatus covered by the earlier marks were tangible goods which, even when they are sold in the same stores as software, are not presented in the same section. Second, it held that they had different purposes and different methods of use, the earlier marks being registered for head ends for cable networks only and not for specific software, developed and designed to configure head ends for cable networks. Third, the Board of Appeal found that the goods were not interchangeable and therefore not in competition and that they were not complementary. In that regard, it considered that whereas, where appropriate, the head ends for cable networks covered by the earlier marks could be sold with software used to allow those head ends to be recognised by apparatus or a network, on the other hand, software and software packages were autonomous applications that could be uploaded to perform a specific task and deliver an outcome. The Board of Appeal found that the software and software packages covered by the mark at issue were dissimilar to the head ends for cable networks covered by the earlier marks.
22      The applicant claims that the contested decision is based on the erroneous assumption that the earlier marks are registered only for ‘head ends for cable networks’ and not for software for the configuration of those ‘head ends for cable networks’.
23      In that regard, it submits that, contrary to what is stated in the contested decision, the goods covered by the earlier marks do not only include ‘head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals’ and ‘parts of the aforesaid goods’, but also ‘accessories or fittings for the aforesaid goods, as far as included in this class’. The terms ‘accessories or fittings’ are translations of the German word ‘Zubehör’ which means ‘an item that belongs to something else or an item that completes something else’. That item can be tangible or intangible. Head ends for cable networks are sold with the corresponding software, which is necessary for configuring and operating the apparatus in question. That software, which is also sold separately, belongs to the head ends for cable networks and completes them. Thus, software is an ‘accessor[y]’ for head ends for cable networks. Furthermore, in general, software completes hardware and, even if it is intangible, it clearly is a product in Class 9. In addition, according to the applicant, the terms ‘parts of the aforesaid goods’ cover at least the operating software for head ends for cable networks. The word ‘parts’ designates an essential or integral element of something else. Having regard to that definition, operating software must be considered a part of head ends for cable networks because it is indispensable for their functioning.
24      The applicant also claims that, given that software is a part or an accessory of head ends for cable networks and that it is used to configure and operate that apparatus by means of technical data, the goods which are ‘parts of the aforesaid goods’ or ‘accessories or fittings of the aforesaid goods’ are identical to the ‘computer software packages and computer software for configuring technical data’ covered by the mark applied for. Moreover, the goods which are ‘parts of the aforesaid goods’ or ‘accessories or fittings for the aforesaid goods’ are similar to the other goods covered by the mark applied for, since they are of the same nature and have the same commercial origin. It is indeed a well-known fact that software companies produce and distribute software of different kinds and intended for different fields of application.
25      It should be noted, as a preliminary point, that the applicant does not dispute that the goods in Class 9 covered by the mark applied for are different from ‘head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals’ in Class 9 covered by the earlier marks. By contrast, it submits that the goods at issue in Class 9 covered by the mark applied for and the ‘parts of the aforesaid goods’ or ‘accessories or fittings for the aforesaid goods’ in Class 9 covered by the earlier marks are identical or similar.
26      The ‘head ends for cable networks’ covered by the earlier marks are, as the Opposition Division had stated without being challenged on that point by the applicant, apparatus used in telecommunications, such as master facilities (apparatus for receiving television signals for processing and distribution via a cable television system); telecommunications gateways (such as protocol translators, impedance matching devices, rate converters, fault isolators or signal translators as necessary to provide system interoperability) or single master antenna televisions (devices for supplying and controlling the number and type of channels transmitted to multiple televisions).
27      As pointed out by the Board of Appeal in paragraph 17 of the contested decision, the wording of the goods covered by the earlier marks does not refer to specific software developed and designed to configure the ‘head ends for cable networks’ covered by the earlier marks. That wording refers only to ‘parts’ and ‘accessories or fittings’ for those head ends for cable networks in Class 9.
28      The applicant has failed to prove that configuration and operating software is an integral part of ‘head ends for cable networks’. The applicant itself emphasises that such software can be sold separately from ‘head ends for cable networks’. The Board of Appeal was therefore not required to consider that such software is a ‘part’ of those head ends for cable networks.
29      In addition, the terms ‘parts’ and ‘accessories or fittings’, when they relate, as in the present case, to numerous and complex goods, are vaguely defined terms. If the applicant wanted to ensure that the earlier marks were also registered for configuration and operating software for head ends for cable networks, it should have made it clear when it applied to register its trade marks. It should not gain from the vague wording of the goods covered by its marks (see, to that effect, judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 48).
30      Contrary to the applicant’s submission, the Board of Appeal was therefore not required to consider that the earlier marks were registered for configuration and operating software for the ‘head ends for cable networks’ covered by the earlier marks.
31      Moreover, it should be added that, even on the assumption that that software is included in the list of goods covered by the earlier marks as ‘parts’ or ‘accessories or fittings’ of those ‘head ends for cable networks’, that software has a very specific purpose. It is intended merely to operate those ‘head ends for cable networks’. By contrast, the software covered by the mark applied for is not software necessary for the operation of specific apparatus. It amounts to ‘computer software packages and computer software for configuring technical and commercial data; software packages for computer-assisted production and/or sales’, namely software and software packages which are intended to perform management activities and thus specific tasks and tasks which are very different to those performed by the configuration software covered by the earlier marks. In addition, configuration and operating software for the‘head ends for cable networks’ covered by the earlier marks cannot be regarded as interchangeable with or complementary to the software covered by the mark applied for. Moreover, the applicant has not shown that consumers will think that those two very specific types of software are produced by the same producers.
32      The applicant’s argument cannot therefore call into question the Board of Appeal’s finding that the goods at issue in Class 9 covered by the mark applied for and the goods covered by the earlier marks are dissimilar.
33      In the second place, it is necessary to consider the Board of Appeal’s comparison of ‘design, development, updating and maintenance of computer software and software packages; rental of computer software and software packages; research, technical studies, consultancy and advice relating to the installation of computer software and computer software packages; research and technical studies relating to the installation of computers and computer systems; research, technical studies, consultancy and technical advice relating to the setting up of computers and computer systems, computer software and computer software packages’ in Class 42 covered by the mark applied for and ‘head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals; parts of the aforesaid goods; accessories or fittings for the aforesaid goods, as far as included in this class’ in Class 9 covered by the earlier marks.
34      In the contested decision, the Board of Appeal found that there was no link between the services in Class 42 covered by the mark applied for and the goods in Class 9 covered by the earlier marks since those services were related to the field of information technology in a broad sense. It added that the purpose and use of those services and that of the goods covered by the earlier marks were different: on the one hand, the goods covered by the earlier marks were apparatus and their respective components, the purpose of which was to perform a concrete technical operation, principally of connectors in a defined network context. On the other hand, the services in Class 42 related to research, development and contribution of production, dissemination and application of scientific and technical knowledge which have to be adapted to a specific product. The Board of Appeal added that the services in Class 42 covered by the mark applied for and the goods covered by the earlier marks were usually supplied by different distribution channels and stores. It concluded that those services and goods were dissimilar.
35      The applicant relies on two arguments to challenge the Board of Appeal’s assessment.
36      First, the applicant notes that the ‘parts of the aforesaid goods’ and ‘accessories or fittingsfor the aforesaid goods, as far as included in this class’, covered by the earlier marks, include software as a part of or an accessory for head ends for cable networks. According to the applicant, the services of ‘design, development, updating and maintenance of computer software and software packages; rental of computer software and software packages; research, technical studies, consultancy and advice relating to the installation of computer software and computer software packages’ in Class 42, covered by the mark applied for, are complementary to software.
37      In this respect, it should be noted that the Board of Appeal was not required to take the view that the earlier marks were registered for configuration and operating software for ‘head ends for cable networks’.
38      In addition, it should be noted that the goods covered by the earlier marks and the services covered by the marks applied for differ as regards their nature and intended purpose. The goods covered by the earlier marks are intended to perform a specific technical operation whereas the services in Class 42 covered by the mark applied for relate, as the Board of Appeal noted, to research, development and contribution of production, dissemination and application of scientific and technical knowledge. Moreover, the ‘head ends for cable networks’ and their ‘parts’ or ‘fittings or accessories’, covered by the earlier marks_belong to the field of telecommunications, whereas the services in Class 42 covered by the mark applied for belong to the field of information technology, as was also pointed out by the Board of Appeal. Furthermore, the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s finding that the services in Class 42 covered by the mark applied for and the goods covered by the earlier marks were usually supplied by different distribution channels and stores.
39      Second, the applicant claims that head ends for cable networks are intended for receiving, processing, converting, amplifying and transmitting signals over network systems. Those signals are used for digital communication and merely contain data. Accordingly, head ends for cable networks are themselves computers and computer systems. Thus, given that the services of ‘research and technical studies relating to the installation of computers and computer systems; research, technical studies, consultancy and technical advice relating to the setting up of computers and computer systems’ in Class 42, covered by the mark applied for, are directly linked to computers and computer systems, those services are complementary to head ends for cable networks which are themselvescomputers and computer systems.
40      That argument must also be rejected. Indeed, it should be recalled that the apparatus covered by the earlier marks is intended to receive, process and transmit signals whereas a computer is, in essence, apparatus which calculates, performs mathematical or logical operations at high speed or even which assembles, maintains, correlates or processes information. The fact that the apparatus covered by the earlier marks performs certain functions also carried out by computers is not sufficient to treat such apparatus like computers, the latter having much more complex and varied uses than the apparatus covered by the earlier marks. In addition, it should be noted that the ‘head ends for cable networks’, covered by the earlier marks, weredescribed exhaustively by means of the term ‘namely’ as being ‘apparatus’. They are therefore not ‘systems’. The applicant cannot, therefore, maintain that the ‘head ends for cable networks’ covered by the earlier mark are comparable to computer systems.
41      Thus, the applicant’s argument also does not call into question the Board of Appeal’s finding that the services in Class 42 covered by the mark applied for and the goods covered by the earlier marks are dissimilar.
42      It follows that the applicant’s single plea in law must be rejected and the action must accordingly be dismissed in its entirety.
Costs
43      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
44      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Wilhelm Sihn jr. GmbH & Co. KG to pay the costs.
Gratsias
Dittrich
Xuereb
Delivered in open court in Luxembourg on 27 September 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.