No final chance for SUNPLUS

European Union
In Sunplus Technology v Office for Harmonization in the Internal Market (OHIM) (C-21/08 P, March 26 2009), the European Court of Justice (ECJ) confirmed previous decisions and finally rejected a Community trademark application for SUNPLUS and device.
When OHIM opened its doors on April 1 1996, Sunplus Technology Co Ltd filed a Community trademark application for SUNPLUS and device in respect of electronic components and computer-related goods in Class 9 of the Nice Classification. Sun Microsystems Inc opposed the application based on four national registrations of the word mark SUN in Class 9. The OHIM Opposition Division, concentrating on the Benelux registration of SUN, confirmed a likelihood of confusion between the marks SUN and SUNPLUS and device, and upheld the opposition. This decision was confirmed by OHIM's Fourth Board of Appeal and the Court of First Instance (CFI) in a decision of November 15 2007.
The OHIM appeal board and the CFI were of the opinion that the goods in Class 9 were identical or very similar and that the marks SUN and SUNPLUS and device were sufficiently different from a visual point of view because of the additional word 'plus' and the device element. However, phonetically the marks SUN and SUNPLUS were considered to be very similar, as the device element would not play any role in the phonetic comparison, and SUNPLUS is dominated by the word 'sun'. Moreover, it was held that conceptually both marks refer to the term 'sun', which is universally known, although it has no specific meaning in Class 9. The appeal board and the CFI held that the visual differences did not outweigh the phonetic and conceptual similarities and affirmed a likelihood of confusion. Sunplus appealed to the ECJ.

Sunplus argued that the CFI had erred in affirming a high degree of similarity between the marks. It questioned that the device element would be considered as a stylized sun supporting the word element 'sun'. Sunplus furthermore believed that the CFI had misinterpreted the facts and evidence and had contradicted itself when it on the one hand stated that the marks were visually different, but on the other hand confirmed a high phonetic and conceptual similarity.
The ECJ rejected the appeal of Sunplus. It observed that most of the CFI's statements were assessments of a factual nature. As the ECJ can review only points of law, it could not review these assessments of a factual nature, save to ensure that they did not distort the evidence. The ECJ then concentrated on the other arguments, stating that the CFI's assumption that the device element of the mark SUNPLUS and device could be considered, as a stylized sun does not distort the facts. Moreover, the ECJ stated that the CFI's holding that both marks referred to the idea of a sun could not be said to have distorted the facts. The ECJ confirmed that the CFI had carried out an analysis fully within the process intended to determine the overall impression of the two marks so that it took all relevant factors into account. Finally, the ECJ also pointed out that the CFI's statements were not contradictory, as one part dealt with the visual appearance of the marks, whereas the other dealt with the phonetic and conceptual appearance, and that these points had to be analyzed individually.
Hence, the ECJ stated that the CFI did not err in finding that SUN and SUNPLUS and device were confusingly similar.
Therefore, after almost 13 years the application for SUNPLUS and device has finally failed. The decision confirms general principles, such as that the initial letters of marks are more important and that the term 'sun', which is generally known from other areas, is not specifically weak in respect of electronic components and computer parts. Furthermore, all instances affirmed a likelihood of confusion between SUN and SUNPLUS and device without considering the argument that the mark SUN of Sun Microsystems has been used frequently and might enjoy a broader scope of protection.
Carsten Albrecht, FPS Rechtsanwälte & Notare Fritze Wicke Seelig, Hamburg

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