EU court declines to change course in Chameleon TM case
The EU General Court has dismissed an appeal by a German company in a dispute over a trademark application portraying a chameleon.
In its ruling today, September 27, the court affirmed the European Union Intellectual Property Office’s (EUIPO) decision to dismiss the company’s opposition against a figurative sign depicting the word Camele’on next to an image of the reptile.
The disputed mark was applied for in 2014 by an entity called in-edit Sàrl, and cites various goods and services in classes 9 and 42. These include computer software packages and computer software for configuring technical and commercial data (class 9), and design, development, updating and maintenance of computer software and software packages (class 42).
German electronics maker Wilhelm Sihn Jr, which owns German and EU trademarks for the word ‘Chameleon’, filed the opposition in January 2015.
Wilhelm Sihn Jr’s earlier marks cover the following goods in class 9: “head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals; parts of the aforesaid goods; accessories or fittings for the aforesaid goods.”
In January 2016, the EUIPO’s Opposition Division upheld the opposition for “computer software, software packages; and computer software programs; magnetic, optical or digital data carriers” in class 9.
However, it rejected the opposition for “computer software packages and computer software for configuring technical and commercial data; software packages for computer-assisted production and/or sales” in class 9, and the services in class 42.
On appeal, filed by Wilhelm Sihn Jr, the Fourth Board of Appeal dismissed the case in May 2017.
The board agreed with the Opposition Division that the goods at issue in class 9, ie, those that were upheld, plus the services in class 42, were dissimilar to the goods covered by the earlier marks.
At the General Court, the German company claimed that the Board of Appeal had erred in its finding on dissimilarity.
Wilhelm Sihn Jr said that the decision was based on the “erroneous assumption that the earlier marks are registered only for ‘head ends for cable networks’ and not for software for the configuration of those ‘head ends for cable networks’”, the court today explained.
However, in dismissing the company’s case, the court said it had failed to prove that configuration and operating software is an integral part of “head ends for cable networks”.
“The applicant [Wilhelm Sihn Jr] itself emphasises that such software can be sold separately from ‘head ends for cable networks’,” the court said. “The Board of Appeal was therefore not required to consider that such software is a ‘part’ of those head ends for cable networks.”
The German company had also disputed the Board of Appeal’s finding that there was no link between the services covered by class 42 in the applied-for mark and the class 9 in the earlier marks, “since those services were related to the field of information technology in a broad sense”, the court noted.
But the court disagreed with the company on this point and said that this argument does not call into question the Board of Appeal’s finding.
Wilhelm Sihn Jr was ordered to pay costs.
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