Judgments nº T-312/19 of Tribunal General de la Unión Europea, March 26, 2020

• Resolution Date: March 26, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-312/19

(EU trade mark - Opposition proceedings - Application for the EU word mark CHAMELEON - Earlier international and national word marks CHAMELEON - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-312/19,

Wilhelm Sihn jr. GmbH & Co. KG, established in Niefern-Öschelbronn (Germany), represented by H. Twelmeier, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Golden Frog GmbH, established in Meggen (Switzerland), represented by G. Messenger, Barrister,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 7 March 2019 (Case R 1551/2018-4), relating to opposition proceedings between Wilhelm Sihn jr. and Golden Frog,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and C. Iliopoulos, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 21 May 2019,

having regard to the response of EUIPO lodged at the Court Registry on 8 August 2019,

having regard to the response of the intervener lodged at the Court Registry on 12 August 2019,

further to the hearing on 15 January 2020,

gives the following

Judgment

Background to the dispute

1 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)).

2 Registration as a mark was sought for the word sign CHAMELEON.

3 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’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2014/054 of 21 March 2014.

5 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.

6 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.

7 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’.

8 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).

9 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.

10 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...