Chamaeleo | Decision 2804451

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).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 804 451 is partially upheld, namely for the following
contested goods:
Class 9: Information technology and audiovisual equipment
2. European Union trade mark application No 15 443 518 is rejected for all the
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
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Substantiation of international trade mark registration No 1 088 117
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

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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
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
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
emanating from the administration by which the trade mark was registered Rule
19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
In the present case, the notice of opposition was not accompanied by any evidence
as regards the earlier international trade mark registration No 1 088 117 on which the
opposition is based.
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
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this
earlier mark.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in

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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.
a) The goods
The goods on which the opposition is based are the following:
Class 9: 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.
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
of protection of these goods.
The term ‘namely’ used in the opponent’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
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
for receiving, processing, converting, amplifying and transmitting signals. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the opponent’s goods.
The contested recorded content include recorded tapes or recorded data in magnetic
devices, and media content, such as recorded films or games.
The contested safety, security, protection and signalling devices include alarms and
warning equipment, access control devices and protective and safety equipment.

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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
applicant’s goods. They have no relevant commonalities as they originate from
different undertakings. They do not target the same relevant public and do not use
the same distribution channels. Furthermore, they are neither complementary nor in
competition.
The Opposition Division notes that the opponent has not adduced any specific
arguments or evidence as to why these contested goods would be similar other than
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
goods protected by the earlier mark. Moreover, they originate from different
undertakings. They neither target the same public nor move through the same
distribution channels. Furthermore, there is no complementarity or interchangeability
either. Therefore the contested time instruments are dissimilar to the opponent’s
goods.
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.

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c) The signs
CHAMELEON
Earlier trade mark Contested sign
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
03/10/2017) and is, therefore, distinctive for the relevant goods.
The contested sign is composed by a figurative black chameleon and below this a
smaller representation of the same figurative element followed by the sequence of
letters ‘hamaeleo’ also depicted in black.
The representation at the bottom of the sign of the chameleon will be perceived as a
highly stylized letter C’ by the relevant public, and consequently the word
‘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
the figurative elements of the contested sign.
Due to the dominant character of the figurative element on top of the contested sign,
the signs are visually similar to a low degree.
Aurally, considering what has been stated above as regards the aural perception of
the small chameleon before the letters hamaeleo’, the pronunciation of the signs
coincides in the sound of the letters ‘CHAM*ELEO*’. The pronunciation differs only in

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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
content conveyed by the marks. As both signs will be perceived as a chameleon, the
signs are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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
normal.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this
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
to outweigh the visual, aural and conceptual similarities to the extent where a
likelihood of confusion can safely be excluded.
It is common practice in the relevant market for manufacturers to make variations of
their trade marks, for example by altering the typeface or colours, or adding verbal or
figurative elements to them, in order to denote a new product line or to endow a trade
mark with a new, fashionable image.

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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 the basis of the opponent’s German trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
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
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Ric WASLEY Jorge ZARAGOZA
GOMEZ
Richard BIANCHI
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.

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