SUNPLUS held to be highly similar to SUN

In Sunplus Technology Co Ltd v Office for Harmonization in the Internal Market (OHIM) (Case T-38/04), the Court of First Instance has dismissed an appeal against the refusal to register SUNPLUS (and design) as a Community trademark on the grounds that there was a likelihood of confusion with earlier registrations for the mark SUN. The case demonstrates the alleged attentiveness of the relevant public in relation to IT products.

Sunplus Technology Co Ltd applied to register a figurative mark containing the word SUNPLUS in respect of various goods in Class 9 of the Nice Classification, including computer chips and circuits. Sun Microsystems Inc opposed the registration on the basis of a likelihood of confusion with the following earlier marks:

• German registrations for the word and figurative marks SUN; and
  
  
• registrations in the United Kingdom and in Benelux for the word mark SUN.

The Opposition Division of OHIM upheld the opposition. It based its decision solely on the Benelux registration, which covered various computer parts under Class 9. The Board of Appeal of OHIM upheld the decision, finding that the identical nature of the goods and the high degree of phonetic and conceptual similarity between the marks were sufficient to entail a likelihood of confusion on the part of the Benelux public.

Sunplus appealed on the basis of Article 8(1)(b) of the Community Trademark Regulation (40/94), contending that there was no likelihood of confusion. The CFI defined the relevant public as producers in the IT field or computer users, including those who assemble the component parts of their computer hardware themselves, within Benelux. The parties accepted that such a public should be considered to have an above average span of attention and level of understanding of English.

Sunplus attempted to argue - unsuccessfully - that none of the relevant goods were identical. First, its attempted distinction between components and finished products failed. Components were included in some of the product categories covered by the earlier mark. Second, the goods could not be distinguished by virtue of their end users. The goods covered by the opposing marks were both aimed at specialist producers and end users, particularly those who assemble the component parts of their computer hardware themselves.

However, the Board of Appeal's finding that the relevant goods were identical could be upheld only in part. Not all of the goods were identical, in particular integrated circuits and electronic circuits. Nevertheless, all of the goods in dispute belonged to the field of information technology. Furthermore, all of the goods covered by Sunplus's application could be regarded as either "computer components" or "electronic data carriers", or as "computer accessories" covered by the earlier trademark. Consequently, it was possible to regard all of them as having, at the very least, a very high degree of similarity.

The CFI considered that the Board of Appeal was fully entitled to hold that the competing marks were visually different. It noted that the additional word 'plus' and the figurative component based on the letter 'S' and a star in the mark applied for introduced significant visual differences between the two marks. However, the earlier mark was entirely reproduced in the word component of the trademark applied for. Moreover, SUN constituted the dominant component in the overall impression of the complex mark due to the absence of any distinctive characteristic of the word 'plus', which, in relation to the word 'sun', was only a laudatory addition.

The CFI found that there was a partial phonetic similarity between the two marks, because the common element SUN was pronounced in the same way and was the dominant component on which the attention of the consumer would be focused. The phonetic difference, resulting from the word 'plus' in the mark applied for, was not sufficient to outweigh the similarity. Moreover, the differences noted at the visual level could not be taken into account.

The CFI also held that the Board of Appeal was fully entitled to hold that the marks both referred to the idea of 'sun'. The English word 'sun' would be easily understood by the target public, especially because the concept is unexpected when used for computer products and would therefore have a greater impact. The visual differences, rather than cancelling out the conceptual association, reinforced it. The term 'plus' was not distinctive in any way and could be viewed as a way of emphasizing the word 'sun'. The same was true of the figurative component of the mark applied for, which could be perceived as a stylized sun. Further, the fact that SUNPLUS formed no part of everyday language did not alter that finding.

Therefore, the CFI found that the Board of Appeal was entitled to hold that:

• there was a high degree of similarity between the marks; and
  
  
• there was a genuine risk that the relevant public, notwithstanding its attentiveness, might believe that the goods covered by the two marks had the same commercial origin.

Sunplus made two further arguments, but neither was successful in calling this conclusion into question. Firstly, any inconsistency with previous decisions of OHIM (as alleged by Sunplus) was irrelevant as Regulation 40/94 is the only standard by which each decision must be assessed. Secondly, the CFI rejected Sunplus's argument that the distinctive character of the earlier mark SUN was weak on account of the registration in the Benelux countries of several other trademarks containing the word component 'sun' and concerning goods in Class 9. The material relied on by Sunplus was not before the Board of Appeal and therefore had to be excluded. In any event, those registrations were not sufficient to exclude all likelihood of confusion. For a start, the registrations did not equate to genuine use of the marks. Furthermore, it was impossible to deny that the earlier mark had, at the very least, a normal distinctive character for the goods it covered, given the absence of any conceptual link between computer goods and the notion of 'sun'.

The CFI thus dismissed the appeal.

Chris McLeod, Hammonds, London