OPPOSITION DIVISION

OPPOSITION No B 2 804 451

Wilhelm Sihn jr. GmbH & Co. KG, Wilhelm-Sihn-Str. 5-7, 75223 Niefern –

Öschelbronn, Germany (opponent), represented by Twelmeier Mommer & Partner,

Westliche Karl-Friedrich-Str. 56-68, 75172 Pforzheim, Germany (professional

representative)

a g a i n s t

Trilogy Italia S.r.l., Via A. Vespucci, 9, 80142 Napoli, Italy (applicant).

above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark

application No 15 443 518 for the figurative mark . The opposition is based on

international trade mark registration No 1 088 117 designating the European Union

for the word mark ‘CHAMELEON’ and German trade mark registration

No 30 2010 044 937 for the word mark ‘CHAMELEON’. The opponent invoked

Article 8(1)(b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

designating the European Union

According to Article 76 (1) EUTMR (in the version in force at the time of

commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings

Decision on Opposition No B 2 804 451 page: 2 of 7

before it the Office will examine the facts of its own motion; however, in proceedings

relating to relative grounds for refusal of registration, the Office is restricted in this

examination to the facts, evidence and arguments submitted by the parties and the

relief sought.

It follows that the Office cannot take into account any alleged rights for which the

According to Rule 19(2) EUTMIR (in the version in force at the time of

commencement of the adversarial part), within the period referred to above, the

opposing party must also file evidence of the existence, validity and scope of

protection of its earlier mark or earlier right, as well as evidence proving its

entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a

European Union trade mark, the opposing party must submit a copy of the relevant

registration certificate and, as the case may be, of the latest renewal certificate,

showing that the term of protection of the trade mark extends beyond the time limit

referred to in paragraph 1 and any extension thereof, or equivalent documents

On 29/11/2016 the opponent was given two months, commencing after the ending of

the cooling-off period, to submit the abovementioned material. This time limit expired

on 03/04/2017.

The opponent did not submit any evidence concerning the substantiation of the

earlier international trade mark designating the European Union.

According to Rule 20(1) EUTMIR (in the version in force at the time of

commencement of the adversarial part), if until expiry of the period referred to in

Rule 19(1) EUTMIR (in the version in force at the time of commencement of the

adversarial part), the opposing party has not proven the existence, validity and scope

of protection of its earlier mark or earlier right, as well as its entitlement to file the

Decision on Opposition No B 2 804 451 page: 3 of 7

question, come from the same undertaking or, as the case may be, from

economically linked undertakings. Whether a likelihood of confusion exists depends

on the appreciation in a global assessment of several factors, which are

interdependent. These factors include the similarity of the signs, the similarity of the

goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs, and the relevant public.

processing, converting, amplifying and transmitting signals; parts of

the aforesaid goods; accessories for the aforesaid goods.

The contested goods are the following:

Class 9: Information technology and audiovisual equipment; recorded content;

safety, security, protection and signalling devices; measuring,

detecting and monitoring instruments, indicators and controllers.

Class 14: Time instruments.

An interpretation of the wording of the list of goods is required to determine the scope

individual goods and services to a broader category, is exclusive and restricts the

goods or services are not regarded as being similar to or dissimilar from each other

on the ground that they appear in the same or different classes under the Nice

Classification.

The relevant factors relating to the comparison of the goods or services include, inter

alia, the nature and purpose of the goods or services, the distribution channels, the

sales outlets, the producers, the method of use and whether they are in competition

with each other or complementary to each other.

Contested goods in Class 9

The contested information technology and audiovisual equipment includes, as a

broader category, the opponent’s head ends for cable networks, namely apparatus

Opposition Division cannot dissect ex officio the broad category of the contested

The contested recorded content include recorded tapes or recorded data in magnetic

Decision on Opposition No B 2 804 451 page: 4 of 7

The contested measuring, detecting and monitoring instruments, indicators and

controllers include monitoring instruments, sensors, testing and quality control

devices.

The opponent’s goods are highly specialised devices in the area of head end for

cable networks. The nature and purpose of these goods is different from the

be connected to a network, however, as seen above, in this specific case the

opponent’s goods are very specific items and there is no similarity. Therefore the

contested recorded content; safety, security, protection and signalling devices;

measuring, detecting and monitoring instruments, indicators and controllers are

dissimilar to the opponent’s goods.

Contested goods in Class 14

The contested time instruments include a wide variety of clocks, watches and

chronometric instruments. The opponent’s goods in Class 9 have no relevant

commonalities with the contested goods. There is a fundamental difference in the

nature and purpose and indeed reference is made to the previous assertions on the

either. Therefore the contested time instruments are dissimilar to the opponent’s

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be

reasonably well informed and reasonably observant and circumspect. It should also

be borne in mind that the average consumer’s degree of attention is likely to vary

according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large

and at business customers with specific professional knowledge or expertise.

The public’s degree of attention varies from average to high, depending on the price,

specialised nature, or terms and conditions of the purchased goods.

Decision on Opposition No B 2 804 451 page: 5 of 7

c) The signs

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in

question must be based on the overall impression given by the marks, bearing in

mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,

Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word ‘CHAMELEON’. Due to the similarity of the word in

German, ‘CHAMÄLEON’, it will be perceived in the relevant territory as a kind of

lizard whose skin changes colour to match the colour of its surroundings (information

extracted from Collins English Dictionary at www.collinsdictionary.com on

‘Chamaeleo’ will be read. As for the earlier mark, it is highly similar to the German

word ‘CHAMÄLEON’ and will, therefore, be perceived by the relevant public with the

above meaning. This perception is reinforced through the concept relayed by the

figurative elements. All the elements of the contested sign are distinctive for the

relevant goods.

As regards the dominance of the elements of the contested sign, the figurative

chameleon at the top is the more dominant one due to its size and position.

Visually, the signs coincide in the sequence of letters ‘*HAM*ELEO*’. However, they

differ in the letter ‘C’ in first place of the earlier mark, the letter ‘A’ in fifth place of the

verbal element of the contested sign, the letter ‘N’ at the end of the earlier mark and

Decision on Opposition No B 2 804 451 page: 6 of 7

the ‘A’ letter in fifth place of the contested sign and the sound of the letter ‘N’ at the

end of the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account

in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue

of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its

distinctiveness per se. In the present case, the earlier trade mark as a whole has no

meaning for any of the goods in question from the perspective of the public in the

relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as

e) Global assessment, other arguments and conclusion

appreciation depends on numerous elements and, in particular, on the degree of

recognition of the mark on the market, the association that the public might make

between the two marks and the degree of similarity between the signs and the goods

and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partially identical and partially dissimilar.

The signs are visually similar to a low degree and aurally highly similar, on account of

the sequence of letters ‘CHAM*ELEO*’ that they have in common. Moreover,

conceptually both signs convey the same meaning, namely that of a chameleon. The

differences between the signs, confined to the fifth letter of the verbal element of the

contested sign and the end letter of the earlier mark, and the figurative elements of

the contested sign, which still convey the same perceived meaning, are not sufficient

likelihood of confusion can safely be excluded.

their trade marks, for example by altering the typeface or colours, or adding verbal or

Decision on Opposition No B 2 804 451 page: 7 of 7

Bearing in mind the foregoing, the Opposition Division considers that even

consumers paying a higher than average degree of attention are likely to believe that

the identical goods originate from the same undertaking or related undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of

confusion on the part of the public and therefore the opposition is partly well founded

on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

bear the fees and costs incurred by the other party. According to Article 109(3)

EUTMR, where each party succeeds on some heads and fails on others, or if

reasons of equity so dictate, the Opposition Division will decide a different

apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties

According to Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 EUTMR, notice of appeal

must be filed in writing at the Office within two months of the date of notification of

this decision. It must be filed in the language of the proceedings in which the decision

subject to appeal was taken. Furthermore, a written statement of the grounds for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been filed only when the appeal fee of EUR 720 has been paid.