Wilhelm Sihn jr. v EUIPO - Golden Frog (CHAMELEON) (EU trade mark - Judgment) [2020] EUECJ T-312/19 (26 March 2020)

Judgment Background to the dispute On 5 February 2014, Golden Frog Inc., the predecessor in title to the intervener, Golden Frog GmbH, 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)). Registration as a mark was sought for the word sign CHAMELEON. The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9 and 38 of 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 correspond, for each of those classes, to the following description: – Class 9: ‘Computer software in the field of computer network security for VPNs (virtual private networks); VPN (virtual private network) operating software; computer application software for mobile phones, namely, VPN software; computer programs for enabling access and entrance control to, and to protect the security of, computer networks; none of the aforesaid being for the purpose of cable television transmitters, receivers for receiving cable television, head ends for cable networks, television receivers, television decoders, television signal amplifiers, cable television transmitters, analogue to digital converters, or analogue converters’; – Class 38: ‘Virtual private network services; providing private and secure real time electronic transmission communication over a computer network; information transmission services via digital networks; electronic transmission of encrypted data, information and communications; none of the aforesaid relating to cable television or satellite television broadcasting or transmission services’. The trade mark application was published in Community Trade Marks Bulletin No 2014/054 of 21 March 2014. On 5 June 2014, 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) to registration of the mark applied for in respect of the goods and services at issue. The opposition was based on the earlier German word mark CHAMELEON, registered on 6 October 2010 under No 302010044937, and on the earlier international registration No 1088117 designating the European Union for the word mark CHAMELEON, registered on 14 June 2011. The 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 for the aforesaid goods, as far as included in this class’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). By decision of 21 June 2018, the Opposition Division rejected the opposition on the ground that the goods and services were dissimilar. In that decision, the Opposition Division stated inter alia that the relevant public for the purposes of assessing the likelihood of confusion was composed of professionals, namely content or telecommunication service providers. On 9 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division, disputing the Opposition Division’s assessment of the comparison of the goods and services. By decision of 7 March 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In essence, the Board of Appeal found that there was no similarity between the goods or services at issue and, therefore, there could be no likelihood of confusion. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of the action, the applicant relies on two pleas in law. The first alleges infringement of Article 95(2) of Regulation 2017/1001 and Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). The second alleges infringement of Article 8(1)(b) of Regulation 2017/1001. Under those pleas, the applicant’s arguments concern, principally, the Board of Appeal’s comparison of the goods and services and, incidentally, the taking into account of certain documents produced for the first time before the Board of Appeal or the General Court (see paragraphs 27, 40 and 45 below). EUIPO and the intervener dispute those arguments. It must be noted at the outset that Article 8(1)(b) of Regulation 2017/1001 provides that, 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, an 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 2017/1001, ‘earlier trade marks’ means 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. 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). For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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). The relevant public and the statement of reasons for the contested decision Although the Board of Appeal did not explicitly address the definition of the relevant public in the contested decision, which was not disputed by the applicant before it (see paragraph 10 above), account should be taken of the more detailed reasoning in that regard in the Opposition Division’s decision. Given that the Board of Appeal confirmed that decision in its entirety, and in view of the continuity in terms of functions between the Opposition Divisions and Boards of Appeal as demonstrated by Article 71(1) of Regulation 2017/1001, that decision, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and enables the Court to carry out fully its judicial review as to whether the assessment of the likelihood of confusion was well founded (see judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT) , T‑111/06, not published, EU:T:2007:352, paragraph 64 and the case-law cited). In those circumstances, given the nature of the goods and services at issue and having regard to the reasoning in the Opposition Division’s decision, it must be noted that the relevant public for the purposes of assessing the likelihood of confusion is composed of professionals, that is, for the goods covered by the earlier marks, manufacturers of specialised equipment used for receiving, processing and distributing signals over cable network systems and, for the contested goods and services, software companies specialised in securing networks, on the one hand, and network providers, on the other. Asked at the hearing about the definition of the relevant public, the applicant stated that it did not call that assessment into question. The comparison of the goods and services 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, 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). In particular, as regards the assessment of complementarity, it must be noted that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14 , paragraphs 57 and 58 and the case-law cited). In the present case, the Board of Appeal found in the contested decision that there was no similarity between the goods and services at issue and that, therefore, there was no likelihood of confusion. In particular, in paragraph 16 of the contested decision, the Board of Appeal referred to the judgment of 27 September 2018, Wilhelm Sihn jr. v EUIPO — in-edit (Camele’on) (T‑472/17, not published, EU:T:2018:613 ), stating that it could not see a reason why it should divert from that judgment. That assessment is criticised by the applicant. In essence, the applicant argues that software is needed to use head ends for cable networks and that that software therefore constitutes a ‘part’ or ‘accessory’. The Board of Appeal could not therefore rely on the solution adopted in the judgment of 27 September 2018, Camele’on (T‑472/17, not published, EU:T:2018:613 ), in order to consider that the wording of the lists of goods covered by the earlier marks was ‘vague’ or referred to ‘numerous and complex’ goods. The Board of Appeal should have defined the scope of protection conferred by the earlier marks taking into account the practice of Deutsches Patent- und Markenamt (German Patent and Trade Mark Office), which had found that wording to be clear and precise. The applicant also claims that, since a head end for cable networks can be used to access the internet, it can also be used to establish a virtual private network (VPN). As a result, the goods and services at issue should have been found to be complementary to each other. In response to those arguments, it should be noted, as a preliminary point, that the goods covered by the earlier marks are ‘head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals’ in Class 9, and ‘parts of the aforesaid goods’ and ‘accessories for the aforesaid goods, as far as included in this class’. Therefore, in a similar way to what was previously held in the judgment of 27 September 2018, Camele’on (T‑472/17, not published, EU:T:2018:613 , paragraph 27), to which the Board of Appeal refers in the present case, the wording of the goods covered by the earlier marks does not refer to software developed and designed to use the ‘head ends for cable networks’ covered by the earlier marks. A fortiori, that wording does not cover software that relates to a VPN. Likewise, as stated in the judgment of 27 September 2018, Camele’on (T‑472/17, not published, EU:T:2018:613 , paragraph 29 and the case-law cited), having regard, in particular, to the complexity of ‘head ends for cable networks’, the terms ‘parts’ and ‘accessories’ used in the wording of the goods covered by the earlier marks 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. Nor can the applicant rely, in that regard, on the practice of the German Patent and Trade Mark Office. In addition, even on the assumption that, as noted by the Court in the judgment of 27 September 2018, Camele’on (T‑472/17, not published, EU:T:2018:613 , paragraph 31), software is included in the list of goods covered by the earlier marks as ‘parts’ or ‘accessories’ 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’. Even in those circumstances, such software cannot be regarded as interchangeable with the software and services covered by the mark applied for, which were, moreover, subject to a restriction made in the course of the proceedings before EUIPO in order to rule out the possibility of overlap between the goods and services at issue. It follows from the foregoing that the Board of Appeal was not required to find that the earlier marks were registered for the software needed to use head ends for cable networks. Lastly, as regards the claim made by the applicant that the goods and services at issue are complementary on the ground that a head end for cable networks can be used to access the internet and thus be used to establish a VPN, it must be held, as argued correctly by EUIPO and the intervener, that such a claim does not meet the necessary conditions for establishing a complementary relationship to the requisite legal standard (see paragraph 25 above). While a head end for cable networks can, by choice or convenience, be used to establish a VPN, it is not indispensable or important in the sense required by the case-law (see paragraph 25 above) in order to establish such a network. Head ends for cable networks do not, in themselves, supply or establish any services provided by a VPN. While they may facilitate connection to the internet, all of the services, including VPN services, based on that connection are provided by software and independent systems. Furthermore, it must also be considered that the relevant public is different depending on the goods and services in question. Whereas the primary public concerned by head ends for cable networks is mostly made up of companies that operate cable networks, the VPN software and services at issue are essentially intended for undertakings and organisations seeking to provide their employees or their members secure remote access to their private networks. In so far as companies that operate cable networks may also be interested in the contested goods and services, that specialised public will know that head ends for cable networks and VPN software and services come from different undertakings. When asked about those points at the hearing, the applicant did not provide any evidence that could call into question those analyses, provided by the intervener and EUIPO in response to the written questions put to the parties on the issue of complementarity. It follows from the foregoing that the Board of Appeal was entitled to conclude that the goods and services at issue were not similar or complementary, bearing in mind in particular the differences in their nature and intended purpose. The global assessment of the likelihood of confusion Since the goods and services at issue are dissimilar, as correctly found by the Board of Appeal, the requirement that the goods and services be similar has not been met and there is therefore no likelihood of confusion. Consequently, the applicant’s principal arguments against that assessment must be rejected. The other arguments put forward by the applicant Incidentally, the applicant criticises, first of all, what it considers to be the Board of Appeal’s refusal to take account in the contested decision of the content of two annexes produced for the first time before the Board of Appeal, namely a brochure for its goods, which, the applicant submits, shows that software is needed to use head ends for cable networks (see paragraph 27 above), and an extract from EUIPO’s Similarity database on the relationship that may exist between certain types of goods and services (data processing equipment, information technology and audiovisual equipment and telecommunication services). It is clear from Article 95(2) of Regulation 2017/1001 that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned. Likewise, pursuant to Article 27(4) of Regulation 2018/625, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence are, on the face of it, likely to be relevant for the outcome of the case and they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal. In that regard, it should be noted that there is nothing in the file to support the conclusion that the documents referred to by the applicant for the first time before the Board of Appeal were not accepted and taken into account by it. In any event, as argued by EUIPO and the intervener, it must be concluded that the content of those documents does not call into question the Board of Appeal’s assessments regarding the comparison of the goods and services at issue. The first document sets out various types of operating software that relate to the functioning of a head end for cable networks and the second document brings together certain types of equipment for the services which use that equipment. Neither of those documents, therefore, is at odds with the conclusions that can be drawn in the present case from the judgment of 27 September 2018, Camele’on (T‑472/17, not published, EU:T:2018:613 ), from which it is clear that the earlier marks do not protect software, whether it is software in the broader sense or simply software that relates to the functioning of a VPN. That first argument is thus, in any event, ineffective and must therefore be rejected. Next, the applicant claims that ‘data in the format of sequences of zeros and ones representing information’ are also signals. The applicant cites in that respect the definition of the term ‘signal’, taken from the Merriam-Webster dictionary, and two extracts from the Institute of Electrical and Electronics Engineers (IEEE) website on signal processing, which are relied on for the first time before the Court. In that regard, it must be held, as correctly observed by the intervener, that, even if the extracts from an online dictionary and the IEEE website were admissible, that evidence does not mention head ends for cable networks, but indicates merely that data may be transmitted in the form of signals. The analysis and the outcome of the comparison of the goods and services at issue would therefore not be affected by examining that argument. The second argument is thus, in any event, ineffective and must therefore also be rejected. It follows from the foregoing that all the arguments put forward by the applicant, both principally and incidentally, must be rejected and, consequently, the action must be dismissed in its entirety. Costs 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Wilhelm Sihn jr. GmbH & Co. KG to pay the costs. Marcoulli Frimodt Nielsen Iliopoulos Delivered in open court in Luxembourg on 26 March 2020. E. Coulon M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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