Legal Updates

Intellectual Property Law – Community Trade Mark – Distinctive Character – Notice of Opposition of CTM Application – Likelihood of Confusion – Signs that are Similar - The Existence of a Likelihood of Confusion on the Part of the Public had to be Appreciated Globally

The recent case of Gateway Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case C[#8209]57/08 P) [2009] involved a determination as to the distinctive character of a Community Trade Mark. The appellant in this case was the proprietor of the following Community and national word and figurative marks (“the Earlier Marks”):

• “GATEWAY”;
• “GATEWAY 2000”;
• “GATEWAY.NET”;
• “GATEWAY PROFILE”; and
• “GATEWAY ASTRO”.

The Earlier Marks were registered in respect of goods and services in Classes 9, 16 and 35 to 38.

FSC GmbH made an application with the respondent for the registration of the word sign “ACTIVY Media Gateway” as a Community Trade Mark on the 25th of April 2001. The classes of goods to be registered fell within Classes 9, 35, 38 and 42.

Subsequently on the 11th of April 2002, the appellant filed a notice of opposition to the registration of the mark in issue in respect of all the goods covered by that mark. The appellant claimed that there was a likelihood of confusion within the meaning of Article 8(1)(b) of EC Council Regulation No 40/94 (“the Regulation”).

Furthermore, the appellant claimed that Article 8(4) and Article 8(5) of the Regulation had been infringed. Even so, the defendant elected to reject the appellant’s opposition.

On the 19th of November 2004, the appellant unsuccessfully filed a notice of appeal. Then, on the 6th of December 2005, the appellant further lodged an application against the dismissal of the appeal at the Registry of the Court of First Instance.

The Court of First Instance came to the conclusion that the relevant public for the circumstances of this case was made up of consumers in the Community who purchased computer goods and services. It held that it was therefore appropriate to examine only the Earlier Marks made up of the single generic word “gateway”.

It then assessed the visual, phonetic and conceptual similarities between the signs in question. On this issue the Court of First Instance held that:

• The element “gateway” in the mark applied for was descriptive of the goods and services covered by that mark; and
• The element “activy” was the dominant element of the mark.

Furthermore, the Court of First Instance stated that even if it was accepted that the “gateway” element held the attention of the relevant public, despite it being the dominant element of the mark, it could not be concluded that the word “gateway” had an independent distinctive role. As a result, the Court of First Instance concluded that it could not be said that there was a likelihood of confusion between the signs. Therefore, it was held:

That it was not necessary to rule on the degree of similarity of the goods and services concerned; and

• That despite the Earlier Marks being well known for the purposes of that assessment, the defendant in this case had been correct to come to the decision that Article 8(1)(b) of the Regulation had not been infringed.

Furthermore, in respect of the argument alleging infringement of Article 8(5) of the Regulation, the Court of First Instance held that the signs at issue were neither identical nor similar. Therefore, it held that one of the conditions for the application of that provision had not been suitably satisfied.

The appellant duly appealed against the decision. On appeal, the appellant presented the argument that the Court of First Instance had been erroneous in reaching the conclusion that it had and should have held that:

• The signs in question were similar;
• There was a likelihood of confusion between them; and
• Accordingly the defendant had infringed Article 8(1)(b) of the Regulation.

The court held as follows:

Firstly, the Court of First Instance had exclusive jurisdiction to find and analyse all the relevant facts relating to the case and to assess the value of the evidence presented before it. The analysis of the facts and the corresponding assessment of the evidence did not constitute a point of law which was subject to review on appeal (unless the Court of First Instance had distorted the facts or evidence – They had not done so in this case).

The assessment made by the Court of First Instance relating to the definition of the relevant public, as well as the visual, phonetic and conceptual similarity between the signs at issue, was held on appeal to be an assessment of a factual nature and was inadmissible.

Secondly, the existence of a likelihood of confusion on the part of the public had to be appreciated globally. Any assessment as to whether there was a likelihood of confusion had to take into consideration all relevant factors applicable to the circumstances of the case. Any global assessment of a likelihood of confusion meant that the factors taken into account, the similarity of the trade marks in question, and the goods or services covered by those trade marks all related to one another.

Accordingly, it was held that a low degree of similarity between the goods or services might be offset by a high degree of similarity between the marks, and vice versa.

Furthermore, it was held that the overall impression given by the marks affected the appreciation of the likelihood of confusion in relation to the visual, aural or conceptual similarity of the marks in question. Additionally, the distinctive and dominant components of the marks had to be taken into consideration.

In this case, the Court of First Instance had correctly had regard to all the relevant guidance and, considering that that finding amounted to an assessment of a factual nature, it was held that the appellant’s appeal under the head of ‘confusion’ was unfounded.

Thirdly, it was held that in this case the signs in question had been suitably different, and therefore the Court of First Instance had been correctly entitled to reach the conclusion that the conditions to be adhered to in applying Article 8(5) of the Regulation had not been suitably satisfied.

Due to the fact that the appellant’s arguments were deemed to be unfounded, the appeal was dismissed.

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© RT COOPERS, 2009. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.