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>55 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 fin ding, 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.