Sun, wind and CTMs

This morning the Court of First Instance of the European Communities, in Case T‑38/04, Sunplus Technology Co. Ltd v Office for Harmonisation in the Internal Market, Sun Microsystems Inc., dismissed the Taiwanese applicant's appeal against OHIM's refusal to grant registration of this rather attractive sign (right) for various computer-ish things in Class 9. The fly in the ointment was Sun Microsystems' earlier registrations of word andd figurative marks that included the word SUN, there being a likelihood of confusion on account of the similarity of the parties' respective goods and marks. Basing its decision solely on an earlier Benelux registration of the word mark SUN the Board of Appeal concluded that the visual impact of the respective marks was quite different, their phonetic and conceptual similarities were fatal.

On appeal the CFI, after reviewing the law, had this to say:

"36 Concerning, first, the visual comparison of the marks at issue, it should be recalled that there is no reason why the existence of a visual similarity should not be found as between a figurative mark and a word mark since the two types of mark have graphic forms capable of creating a visual impression ...

37 ... a complex trade mark (word and figurative) cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant component within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it ...

38 The Court has specified that that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole ...

39 In the present case ... 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, ... ‘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 ... the phonetic comparison, ... 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 ... general, the attention of the consumer is focused on the beginning of the word ... in those circumstances, ... 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, ...

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 .... 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 ..."

No shocks there. But the thing that caught the IPKat's eye was the sheer number of attorneys representing Sunplus in this application: H. Eichmann, G. Barth, U. Blumenröder, C. Niklas-Falter, M. Kinkeldey, K. Brandt, A. Franke, U. Stephani, B. Allekotte, E. Pfrang, K. Lochner, B. Ertle, C. Neuhierl and S. Prückner. This reads more like a football squad than a legal team.

Right: a new take on solar power -- the Sun gets all its energy from the cat ...

Eclipse of the Sun here
Looking at the Sun can harm your health here


Available so far only in German and French is Rechtssache T‑71/06 Enercon GmbH v Harmonisierungsamt für den Binnenmarkt. Following his triumph in tackling the Spanish language yesterday, the IPKat's having a go at the German this time round. So far as he can tell, Enercon applied to register as a Community trade mark a shape (left) consisting of an American football-shaped wind turbine. The application was for registration in respect of "Windenergiekonverter und deren Teile, insbesondere Gondelverkleidungen" in Class 7 (per Babel Fish, "Wind energy converter and their parts, in particular car linings").

The application was rejected, as were Enercon's appeals to the Board of Appeal and now the CFI. This looks like a problem concerning lack of distinctive character, with Enercon arguing that the shape was inherently distinctive and that, in any event, it had acquired distinctive character. As usual, the IPKat seeks help and guidance from any kind reader who can post, below, or email him anything interesting or useful that arises from this ruling and which may not immediately be apparent to the relevant non-German reader ...