EuG JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber) T328/05 dated 1 July 2008 - QUARTZ vs QUARTZ

(Community trade mark – Opposition proceedings – Application for Community word mark QUARTZ – Earlier Community figurative mark QUARTZ – Relative ground for refusal – Likelihood of confusion – Similarity between goods – Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T328/05,

Apple Computer, Inc., established in Cupertino, California (United-States), represented by P. Rawlinson, S. Jones, J. Rutter and T.M. D’Souza Culora, solicitors,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. García Murillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

TKS-Teknosoft SA, established in Trélex (Switzerland), represented by C. Moreau, T. van Innis and K. Manhaeve, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 27 April 2005 (Case R 416/2004-4) relating to opposition proceedings between TKS-Teknosoft SA and Apple Computer, Inc.,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),

composed of M. Jaeger (Rapporteur), President, J. Azizi and E. Cremona, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 26 August 2005,

having regard to the response of OHIM lodged at the Court Registry on 16 January 2006,

having regard to the response of the intervener lodged at the Court Registry on 5 January 2006,

further to the hearing on 21 November 2007 at which none of the parties was present,

gives the following

Judgment

 Facts

1        On 13 December 1999, the applicant, Apple Computer, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended. The mark for which registration was sought is the word sign QUARTZ.

2        The goods in respect of which registration was sought are in Class 9 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 (‘the Nice Agreement’), and correspond to the following description: ‘A computer operating system functionality specifically intended for use by IT developers with the aim of improving and accelerating the reproduction of digital images in application programs, except those products intended for the banking sector’.

3        The application was published in Community Trade Marks Bulletin No 49/2000 of 19 June 2000.

4        On 18 September 2000, the intervener, TKS-Teknosoft SA, gave notice of opposition to registration of the mark applied for, on the basis of Community registration No 368 324 of 31 August 1998 of the following figurative mark:

5        That mark was registered in respect of goods and services in Classes 9, 16 and 42 of the Nice Agreement.

6        The opposition was based on some of the goods and services covered by the registered mark in Classes 9 and 42 of the Nice Agreement, corresponding to the following description:

–        Class 9: ‘Packets of programs for banking’;

–        Class 42: ‘Computer programming, computer data processing, computer software development, assistance and consulting services in the computer field, electronic data processing, computer software design and development, licensing of computer software and computer applications; all these services being linked to banking’.

7        The opposition was based on the likelihood of confusion between the mark applied for and the earlier mark on account of the similarity of the signs at issue and the identity or similarity of the relevant goods and services, as referred to in Article 8(1)(b) of Regulation No 40/94.

8        On 22 March 2004, the Opposition Division held that there was a likelihood of confusion because, first, the goods and services were sufficiently similar and, second, the two signs were very similar overall. Furthermore, it added that the distinctive character of the word ‘quartz’ to designate the goods and services concerned warranted a higher degree of protection. It therefore upheld the opposition in its entirety.

9        On 24 May 2004, the applicant filed notice of appeal before OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the Opposition Division’s decision.

10      By decision of 27 April 2005 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal. In particular, it held that, on account specifically of the fact that the marks at issue were almost identical and in spite of the lesser degree of resemblance between the goods and services concerned, the origin of the goods and services covered by the earlier mark was likely to be confused with that of the product covered by the mark applied for.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision and the Opposition Division’s decision;

–        order the intervener to pay the costs incurred in these proceedings and the costs incurred before the Board of Appeal and the Opposition Division.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant puts forward two pleas, alleging infringement of Article 8(1)(b) of Regulation No 40/94 and infringement of the EC Treaty on the ground that the intervener has been granted an unjustified monopoly with respect to its mark.

 The first plea: infringement of Article 8(1)(b) of Regulation No 40/94

15      Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. Furthermore, the existence of a likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Case C334/05 P OHIM v Shaker [2007] ECR I4529, paragraphs 33 and 34 and the case-law cited). That global assessment implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and that of the goods or services covered (see judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v Devinlec and OHIM, not published in the ECR, paragraph 35 and the case-law cited).

 The relevant public

17      The applicant points out that, in this case, the Opposition Division and the Board of Appeal defined the relevant public as information technology specialists and held that such a public would manifest a high degree of attention when purchasing the relevant goods and services. It submits however that the Opposition Division and the Board of Appeal did not correctly assess whether there is a likelihood of confusion by reference to those specialists.

18      OHIM takes the view that, by clearly establishing that information technology specialists are the potential purchasers common to the two marks, the Board of Appeal correctly identified the relevant public.

19      The Court notes that the applicant does not challenge the definition of the relevant public adopted by the Board of Appeal, but criticises the Board for failing, in its assessment of the likelihood of confusion, to draw inferences from the fact that a specialist public has a high level of attention, which, the applicant submits, should have led to any likelihood of confusion in this case being ruled out.

20      Since that argument relates to the assessment of the likelihood of confusion, and not to the analysis of the relevant public, it is appropriate to examine it later, in the assessment of the likelihood of confusion.

21      In any event, the Court agrees with the definition of the relevant public adopted by the Board of Appeal according to which, although the earlier mark probably targets a wider public which also includes banking personnel, the public common to the two marks is composed of information technology specialists.

22      First, as the Board of Appeal rightly held, the fact that the intervener’s goods and services are intended for the banking sector, whereas the applicant’s product is expressly excluded from it, does not prevent, given their technical nature, the choice of the goods and services concerned from normally requiring the intervention of specialists in this technology, namely computer experts.

23      Second, although it is possible that both the earlier mark and the mark applied for also target categories of potential purchasers other than information technology specialists, the fact remains that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and the product covered by the mark applied for.

24      It follows that, as the Board of Appeal observed, the relevant public is composed of information technology specialists present on Community territory.

 Comparison of the signs at issue

25      As is clear from settled case-law, the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components (OHIM v Shaker, paragraph 16 above, paragraph 35, and Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47).

26      The Board of Appeal held that the signs at issue bear a strong resemblance to one another or are indeed almost identical.

27      OHIM and the intervener agree with that analysis, whereas the applicant acknowledges only the existence of some similarity between the signs at issue, without however putting forward any arguments in support of that submission.

28      As regards the visual comparison, it must be recalled, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II-1515, paragraph 43 and the case-law cited).

29      In the present case, since the earlier figurative mark is composed of the word element ‘quartz’ and a number of figurative elements such as the underlining and the triangle in the capital letter ‘A’, it is a complex mark.

30      It must be observed that the word ‘quartz’ constitutes both the only element in the mark applied for and a component of the earlier figurative mark. It is clear from the case-law that a complex trade mark can be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, if that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (OHIM v Shaker, paragraph 16 above, paragraphs 41 and 42, and Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 33).

31      The Court considers that, in the present case, the Board of Appeal rightly held that the word ‘quartz’ was the dominant element in the earlier mark. The figurative elements of the earlier mark, in particular the underlining and the triangle in the capital letter ‘A’, are inconspicuous and negligible as compared with the word ‘quartz’ written in bold block capitals. Therefore, the word ‘quartz’ dominates, by itself, the image that the relevant public keeps in mind within the overall impression created by the earlier mark.

32      It follows that the signs at issue show a high degree of visual similarity.

33      As regards the comparison of the phonetic and conceptual aspects, it must be observed that the applicant has never challenged, either before the Board of Appeal or the Court, the Opposition Division’s finding that the signs are identical from those two points of view on account of the fact that the words they consist of are identical. In any event the Court cannot but agree with that finding. Since the signs at issue are composed of the same letters, they are pronounced in the same way in all the official languages of the European Union. Furthermore, whatever may be the meaning of the word ‘quartz’ in each of those languages, there is no evidence in the file to cast doubt on the fact that that meaning is the same for both signs.

34      It follows that the Board of Appeal did not make an error of assessment in holding that the marks at issue were almost identical.

 Comparison of the relevant goods

35      According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see Case C416/04 P Sunrider v OHIM [2006] ECR I-4237, paragraph 85 and the case-law cited).

36      First of all, the applicant submits that the Opposition Division and the Board of Appeal failed to take account of the differences between the goods concerned, their markets, their method of use and their intended purpose. In particular, the applicant submits that the intervener’s goods and services are all intended for financial institutions and, more specifically, users of banking software, whereas its own goods are designed for information systems developers.

37      The applicant then criticises the Opposition Division and the Board of Appeal for finding that the goods concerned are similar, on account of an oversimplification which led them to classify all the goods as ‘software’ without further specifications. The word ‘software’ covers a vast range of goods in various sectors of industry, from stand-alone programs for banking, games and catering equipment, to the functionality for individual programs such as sound and image processing. In that connection, the applicant relies on some national decisions and also refers to Case C-418/02 Praktiker Bau- und Heimwerkermärkte [2005] ECR I5873, paragraph 50.

38      OHIM and the intervener dispute the merits of those arguments.

39      The Court recalls, first of all, that the Board of Appeal found, in paragraph 17 of the contested decision, that the goods and services covered by the earlier mark were relatively similar to the product covered by the mark applied for, although it recognised that the sectors where they are applied were different.

40      In that connection, it must be stated that the goods for which the earlier mark was registered are ‘packets of programs’, that is to say a complete and documented set of programs designed to be supplied to a number of users for one application or one function. By contrast, the product covered by the mark applied for is software intended for use by IT developers with the aim of improving and accelerating the reproduction of digital images in application programs.

41      As regards the nature of the goods concerned, it must be observed that, from the point of view of an information technology specialist, those goods are the result of programming work.

42      As regards their intended purpose and their method of use, which must be examined together, the Court observes, in the first place, that the goods concerned are designed to be installed in computers in order to fulfil certain requirements.

43      In the second place, the goods concerned target information technology specialists working in different economic sectors which are not necessarily very different from the point of view of information technology. Information technology specialists are often required, inter alia, to advise an undertaking wishing to computerise part of its activities as to the software most appropriate to its needs, to adjust that software according to its specific requirements, to resolve technical problems and to train staff required to use the software concerned.

44      It is therefore possible that an information technology specialist will, for example, be required to computerise certain procedures in a bank, using the intervener’s software package, and, subsequently, to computerise an undertaking operating in a different field, using the applicant’s software.

45      Accordingly, it must be observed that even where a bank has its own information technology specialists, they might previously have worked or might subsequently work as information technology specialists in another sector, and they will not necessarily limit their activities in the bank to managing banking software, but may be required to work on other aspects of a bank’s activity, which require the use of other software.

46      In the third place, the fact that the applicant excluded the banking sector from its trade mark application does not in any way mean that the product covered by the mark applied for cannot also be sold and/or used in that sector. It is perfectly feasible that, within a bank, use will be made of both the software packages covered by the earlier mark and other software, in particular software which, like that covered by the [32703mmark applied for, is part of a computer operating system.

47      The fact indeed remains that the applicant has not established or even argued that that is not the case.

48      Accordingly, even taking into account the fact that the goods concerned are neither in competition with one another nor complementary, the Court finds that the similarities outweigh the differences and concludes that there exists, as correctly found by the Board of Appeal, some degree of similarity between the goods in question (see, to that effect, Case T-483/04 Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries (GALZIN) [2006] ECR II-4109, paragraph 71).

49      That conclusion cannot be called into question by the national decisions to which the applicant refers. The Community trade [32703mmark regime is an autonomous system with its own set of objectives and rules peculiar to it and it is self-sufficient and applies independently of any national system (see Joined Cases T-350/04 to T352/04 Bitburger Brauerei v OHMI – Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud) [2006] ECR II4255, paragraph 114 and the case-law cited).

50      In the same way, the applicant’s argument, that it follows from Praktiker Bau- und Heimwerkermärkte, paragraph 37 above, that any trade mark application covering software must state its intended purpose, must be rejected. Even if that judgment could be interpreted in the way suggested by the applicant, the fact remains that, in the present case, the earlier mark covers software specifically for banking. The issue in dispute in this case is not, therefore, the lack of a specific intended purpose for the goods covered by the intervener’s mark, but the fact that those goods, although intended for banking, bear some similarity to the product covered by the mark applied for from the point of view of the relevant public.

51      As regards the comparison between the product covered by the mark applied for and the services covered by the earlier mark, the Court considers that the existence of a certain degree of similarity between the goods covered by the marks at issue is sufficient, at this stage, in order to determine whether there is a likelihood of confusion between the marks.

 The likelihood of confusion

52      According to settled case-law, the likelihood of confusion on the part of the public, which is defined as the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, must be assessed globally, taking into account all factors relevant to the circumstances of the case (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-0000, paragraph 35 and the case-law cited).

53      The applicant criticises the Opposition Division and the Board of Appeal for having adopted a rigid and formulaic approach which failed to give appropriate weight to all the relevant factors.

54      OHIM and the intervener challenge the applicant’s arguments.

55      The Court recalls that, according to settled case-law, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and that of the relevant goods or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see PiraÑAM diseño original Juan Bolaños, paragraph 52 above, paragraph 36 and the case-law cited).

56      It is precisely on the basis of that interdependence that the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public, taking into account the fact that the signs at issue are almost identical and the lesser degree of resemblance between the goods in question.

57      As regards the applicant’s argument that the Board of Appeal’s finding fails to take account of the fact that the relevant public are specialists and therefore endowed with a high level of attention, the Court considers that that argument must be rejected.

58      As has been shown above, the relevant public, even if it is a specialist public, is aware of the goods’ essential characteristic, which pertains to their nature and their method of use, and considers them to be part of the same category of goods. The fact that the goods have different spheres of application is not sufficient for the relevant public to conclude, rightly or wrongly, that those differences prevent one undertaking from making or selling both types of goods at the same time. Therefore, the relevant public will naturally have the impression that the goods concerned may have the same commercial origin (see, to that effect, Case T85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 33).

59      Accordingly, the fact that the relevant public is composed of persons whose level of attention may be considered high is not sufficient, given the fact that the signs at issue are almost identical and the similarity between the goods in question, to exclude the possibility that that public might believe that the goods and services concerned come from the same undertaking or, as the case may be, from economically-linked undertakings (GALZIN, paragraph 48 above, paragraph 80).

60      It is clear from the foregoing that the Board of Appeal did not make an error of assessment in holding that there was a likelihood of confusion on the part of the relevant public.

61      The applicant’s argument, that in other cases the Opposition Division has already held that there is no likelihood of confusion having regard to the technical nature of the relevant goods which, by virtue of their technical nature, are targeted at specialist consumers with a higher level of attention than the general public, cannot invalidate that finding.

62      First, the applicant has not established that the decisions that it relies on relate to circumstances comparable to those in this case and, second, it is clear from settled case-law that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice of those boards (see Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I551, paragraph 48 and the case-law cited).

63      Furthermore, the Court finds irrelevant the applicant’s argument that, since the product covered by the trade mark application is incorporated in the MAC OS X operating system, information technology specialists would purchase that product by identifying it not with the trade mark QUARTZ, but with the trade mark of the operating system which incorporates it, namely the trade marks MAC or APPLE. Even assuming that the applicant’s assertion corresponds to the current selling arrangements for the product concerned, there is nothing to prevent the mark applied for playing a more important role in the identification of the goods concerned in the future (see, to that effect, judgment of 7 November 2007 in Case T-57/06 NV Marly v OHIM – Erdal (Top iX), not published in the ECR, paragraph 93 and the case-law cited).

64      It follows from all the foregoing that the first plea must be dismissed, without there being any need to examine the similarity between the product covered by the mark applied for and the services covered by the earlier mark.

 Second plea: infringement of the EC Treaty

65      The applicant claims that the Opposition Division and the Board of Appeal infringed the principles of the free movement of goods and free competition by wrongly granting the intervener an unjustified monopoly in excess of its sphere of business and, more particularly, its actual trade mark rights.

66      As OHIM rightly observes, the applicant does not put forward in support of that plea any additional explanation as to how the principles of free competition and the free movement of goods have been infringed.

67      Therefore, that plea must be dismissed as inadmissible on the ground that it is contrary to Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the Court of First Instance, applicable to intellectual property matters by virtue of Article 130(1) of those Rules. It is clear from those provisions that an application must specify the grounds on which the action is based, with the result that a mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure (see Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II5301, paragraph 15 and the case-law cited).

68      In any event, that plea is also manifestly unfounded. Article 9(1) of Regulation No 40/94 clearly lays down that a Community trade mark confers on the proprietor exclusive rights therein which entitle him to prevent all third parties from using in the course of trade, inter alia, any sign where, because of its identity with or similarity to the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign concerned, there exists a likelihood of confusion on the part of the public.

69      Since the existence of a likelihood of confusion was established above, the alleged monopoly consists of nothing more than the legitimate exercise of those exclusive rights. In that connection it must be noted, first, that the free movement of the product covered by the mark applied for is limited only in so far as it infringes the exclusive rights of the proprietor of the earlier mark and, second, that Article 30 EC recognises derogations from the principle of the free movement of goods justified on grounds of the protection of industrial and commercial property.

70      Since none of the pleas relied on can be upheld, the action must be dismissed in its entirety, without there being any need to give a ruling on the admissibility of the applicant’s claim for annulment of the Opposition Division’s decision (see, to that effect, judgment of 22 November 2007 in Case C-6/06 P Cofradía de pescadores ‘San Pedro’ de Bermeo and Others v Council, not published in the ECR, paragraph 21 and the case-law cited).

 Costs

71      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.

On those grounds,

THE COURT OF FIRST INSTANCE (Third Chamber)

hereby:

1.      Dismisses the action.

2.      Orders Apple Computer, Inc. to pay the costs.