Court of Justice of the European Communities (including Court of First Instance Decisions)

(Community trade mark Opposition proceedings Application for the Community word mark ACTIVY Media Gateway Earlier Community and national word and figurative marks Gateway and GATEWAY Relative grounds for refusal No likelihood of confusion Absence of similarity between the signs Article 8(1)(b) of Regulation (EC) No 40/94 Article 8(5) of Regulation No 40/94)

In Case T-434/05,

Gateway, Inc., established in Irvine, California (United States), represented initially by C.R. Jones and P. Massey, and subsequently by C.R. Jones and E.S. Mackenzie, solicitors,

applicant,

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM having been

Fujitsu Siemens Computers GmbH, established in Munich (Germany),

ACTION brought against the decision of the First Board of Appeal of OHIM of 14 September 2005 (Case R 1068/2004'1), relating to opposition proceedings between Fujitsu Siemens Computers GmbH and Gateway, Inc.,

composed of M. Vilaras, President, M.E. Martins Ribeiro and K. Jürimäe, Judges,

Registrar: C. Kristensen, Administrator,

having regard to the application lodged at Registry of the Court of First Instance on 6 December 2005,

having regard to the response of OHIM lodged at the Court Registry on 11 April 2006,

further to the hearing on 13 March 2007,

gives the following

Background to the dispute

1. On 25 April 2001, Fujitsu Siemens Computers GmbH filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The trade mark for which registration was sought is the word sign ACTIVY Media Gateway.
3. The goods in respect of which registration was sought fall within Classes 9, 35, 38 and 42 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, and correspond, in respect of each of those classes, to the following description:

Class 9: 'optical, electrotechnical and electronic apparatus and equipment (included in class 9); electrotechnical and electric apparatus for recording, broadcasting, transmission, reception, reproduction and processing of sounds, signals and/or images; electrotechnical and electric apparatus for the recording, processing, sending, transmission, relaying, storage and output of messages and data; communications computers, software; optical, electrotechnical and electronic information technology and communications technology apparatus';

Class 35: 'gathering, storage and retrieval of data, information, images, video and audio sequences';

Class 38: 'forwarding and distribution of data, information, images, video and audio sequences';

Class 42: 'consultancy with regard to the construction and operating of apparatus, installations and other data, information and communications technology products; planning, development, consultancy, testing, technical monitoring, systems integration and product integration in the field of data technology, information technology and communications technology; development, creation and rental of computer programs'.

4. That application was published in Community Trade Marks Bulletin No 5/2002 of 14 January 2002.
5. On 11 April 2002, Gateway, Inc. filed a notice of opposition to registration of the trade mark applied for in respect of all the goods covered by that mark, claiming a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 and Article 8(4) and (5) thereof.
6. That opposition was based on the existence of the following earlier Community and United Kingdom trade marks, of which the applicant is the proprietor:

Community figurative trade mark number 883991, registered on 21 September 2000 in respect of goods in Class 9 (computers, computer accessories, and computer peripherals) and with the following appearance:



Community figurative trade mark number 884015, registered on 17 October 2001 in respect of goods falling within Class 9 (personal computers, none being a gateway or incorporating a gateway device; computer accessories and computer peripherals, none being a gateway device) and with the following appearance:



Community word mark GATEWAY.NET, number 925719, registered on 30 March 2000 in respect of the following goods and services:

Class 9: 'computers, computer hardware and software featuring multi'media applications; computer operating system programs; software in the fields of general interest, business, education and games; and computer peripherals';

Class 36 : 'computer services, namely providing financing';

Class 37: 'computer services, namely factory installation of operating systems for purchasers of computer hardware prior to delivery, and repair and services';

Class 38: 'computer services, namely providing on-line facilities for the electronic transmission of messages and data, accessing and interacting with the global communications network, and real time interaction with other computer users concerning topics of general interest';

Community word mark GATEWAY PROFILE, number 1053974, registered on 10 October 2000 in respect of goods in Class 9 (computers and computer peripherals; none being or incorporating gateways);

Community word mark GATEWAY ASTRO, number 1326388, registered on 20 November 2000 in respect of goods in Class 9 (computers and computer peripherals);

Community word mark GATEWAY, number 1555630, registered on 23 May 2002 in respect of services falling within Class 35 (retail and mail order services relating to computers, software, computer peripherals and computer manuals);

Community word mark GATEWAY, number 1848647, which was lodged on 11 September 2000 but then refused by OHIM by letter of 1 August 2005, in respect of services in Class 38 (services for the transmission of data and of information by electronic, computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, telecopier, television, microwave, laser beam or communication satellite means; services for the transmission, provision or display of information for business or domestic purposes from a computer'stored data bank; services for the broadcasting or transmission of radio and television programmes; none of the services relating to gateways or software for gateways);

Community word mark GATEWAY, number 1981919, registered on 22 March 2005 in respect of the following goods and services:

Class 9: 'computers, none being a gateway or incorporating a gateway device or software; computer peripherals fittings and accessories not being gateway devices; computer software other than gateway software';

Class 35: 'retail, mail-order and Internet selling services relating to computers, computer peripherals fittings and accessories; and the demonstration of those products';

United Kingdom word mark GATEWAY, number 1346431, registered on 30 March 1990 in respect of services in Class 38 (telecommunication, facsimile, telex, telephone, telegram, message collection and transmission services; services for the transmission of data and of information by electronic computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, telecopier, television, microwave, laser beam or communication satellite means; services for the transmission, provision or display of information for business or domestic purposes from a computer-stored data bank; services for the broadcasting or transmission of radio and television programmes);

United Kingdom figurative mark, number 1530635, registered on 5 January 1996 in respect of goods in Class 9 (computers and computer peripheral devices; but not including interfaces) and with the following appearance:



the series of three United Kingdom trade marks number 2209141, registered on 14 March 2003 in respect of services in Class 38 (computer services including providing on-line facilities for electronic transmission of messages and data, assessing with global communications network and real time interaction with computer users concerning topics of general interest; providing user access to a global computer network or Internet, providing telecommunications connections to a global computer network or Internet, telecommunication, facsimile, telex, telephone, telegram, message collection and transmission services; services for the transmission of data and of information by electronic computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, telecopier, television, microwave, laser beam or communication satellite means; services for the transmission, provision or display of information for business or domestic purposes from a computer'stored data bank; services for the broadcasting or transmission of radio and television programmes) and consisting of the two word marks GATEWAY and Gateway and the following figurative mark:



the series of two United Kingdom trade marks, number 2257301, registered on 4 October 2002 in respect of goods in Class 9 (computers; computer peripherals and accessories; software; CD'ROMs; mouse mats) and with the following appearance:



the series of five United Kingdom trade marks (the colour green was claimed for the fourth mark in the series and the colours black, white and green were claimed for the fifth mark), number 2271730A and B, registered on 4 October 2002 in respect of goods in Class 9 (CD-ROMs; DVDs; software, computer and computer peripherals, but not including gateways) and in Class 16 (instructional and teaching materials), with the following appearance:

.

7. In support of its opposition, the applicant also claimed use, in France and the United Kingdom, of an earlier unregistered GATEWAY sign with respect to computer equipment.
8. The applicant also claimed that the earlier GATEWAY mark was well'known in Ireland and the United Kingdom.
9. Lastly, the applicant relied on the reputation of all the earlier Community marks in the Community and that of all the national marks in the United Kingdom.
10. By decision of 27 September 2004, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion. For the sake of convenience, the Opposition Division based its decision solely on the United Kingdom GATEWAY registration.
11. On 19 November 2004, the applicant filed a notice of appeal with OHIM against the Opposition Division's decision in so far as it concerned Article 8(1)(b) and (5) of Regulation No 40/94.
12. By decision of 14 September 2005 ('the contested decision'), the First Board of Appeal of OHIM dismissed the appeal. It thereby confirmed the decision of the Opposition Division by holding, in essence, first, that, given the absence of identity or similarity between the conflicting marks, there was no likelihood of confusion between them under Article 8(1)(b) of Regulation No 40/94, whatever the reputation of the earlier marks and irrespective of the degree of identity or similarity of the goods or services concerned. Secondly, on the same grounds, the Board of Appeal rejected the opposition based on the provisions of Article 8(5) of Regulation No 40/94.

Forms of order sought

13. The applicant claims that the Court should:

annul the contested decision;

allow in its entirety the applicant's opposition to the registration of the trade mark applied for;

order OHIM to pay the costs.

14. OHIM contends that the Court should:

dismiss the application;

order the applicant to pay the costs.

Law

15. In support of its application for annulment of the contested decision, the applicant puts forward two pleas alleging infringement, first, of Article 8(1)(b) of Regulation No 40/94 and, secondly, of Article 8(5) of that regulation.

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

Arguments of the parties

16. First, the applicant claims that the relevant consumers should have been defined by reference to all the goods and services at issue, and not merely as consumers of computer goods and services. None of the goods and services covered by the trade mark applied for refers to media gateways, gateways or services relating to such goods and the trade mark applied for also covers goods and services other than computing goods and services, namely optical equipment and technology in Class 9. Consequently, the Board of Appeal misdirected its inquiry as to the general impression created by the trade mark applied for by confining that inquiry to consumers of computing goods and services.
17. Had the Board of Appeal correctly identified the relevant consumers, it would have found that a substantial number of them would not have assessed the mark applied for as a composite mark containing a fanciful badge of origin and a descriptor, but would have perceived it as a mark in which the 'gateway' element was distinctive. Further, the applicant criticises the Board of Appeal for having held that the elements 'media' and 'gateway' were perceived together by the relevant public as referring to a characteristic of the goods and services covered by the trade mark applied for.
18. Secondly, it was on account of the above errors that the Board of Appeal found that the conflicting marks were not visually similar. The Board of Appeal also erred in holding that the element of the trade mark applied for which caught the attention of the consumer was the word 'activy'. In fact, a substantial number of English-speaking members of the Community would perceive that word as a misspelling of the English word 'activity' and therefore would not confer such distinctiveness on it in comparison with the other elements of the trade mark applied for, namely 'media' and 'gateway'. In addition, the Board of Appeal wrongly held that those two latter elements, taken separately or together, would tend to be disregarded by the relevant public because they were purely descriptive of the goods and services at issue. Lastly, the applicant submits that, in non-English'speaking countries, it is possible that the average consumer does not understand English but would nevertheless recognise the GATEWAY trade mark by reason of its reputation, and would make an association through the term 'gateway' between the goods bearing the trade mark applied for and the applicant's goods.
19. Thirdly, for the same reasons, the applicant asserts that the Board of Appeal erred in finding that the conflicting marks were not phonetically and conceptually similar.
20. Fourthly, the Board of Appeal was wrong to hold, in paragraph 32 of the contested decision, that the reputation and well-known character of the earlier marks did not alter its finding that the conflicting marks were not similar.
21. Fifth and finally, the applicant submits that, as required by the seventh recital in the preamble to Regulation No 40/94, the Board of Appeal should have treated the concept of similarity in relation to the likelihood of confusion and not separately. As a result, the Board of Appeal did not give sufficient weight to the interdependence between the factors relevant to the global assessment of the likelihood of confusion. In that regard, the applicant recalls that case-law provides that the more distinctive the earlier mark, the greater the likelihood of confusion and that trade marks with a highly distinctive character enjoy greater protection than those with a less distinctive character. Equally, the Board of Appeal should have taken into consideration the fact that a high degree of similarity between the relevant goods and services may offset a lesser degree of similarity between the conflicting marks.
22. For the sake of completeness, the applicant submits that if, which is not accepted, the term 'gateway' was held not to constitute the dominant element of the trade mark applied for, the reputation and the well'known character of that sign in the field of computer goods and services would bestow on it an independent distinctive role in the trade mark applied for, which would lead the relevant public to believe that the goods or services at issue derive from economically-linked companies.
23. OHIM recalls, first, that the global assessment of the likelihood of confusion between conflicting marks implies some interdependence between the factors taken into account and, in particular, similarity between the trade marks at issue and between the goods or services covered. In accordance with Article 8(1)(b) of Regulation No 40/94, it is necessary first to compare the conflicting signs and then to proceed, if necessary with the comparison of the relevant goods and services.
24. Secondly, as regards the relevant public, OHIM contends that, given the nature of the goods and services concerned, which are all related to information technology and linked with the transmission and/or reception and/or conversion of data (sounds, signals and/or images), and the fact that the earlier marks are registered in the United Kingdom and in the Community, the target public in relation to which the likelihood of confusion must be assessed is composed of reasonably well-informed and reasonably observant and circumspect consumers in the United Kingdom and the Community. OHIM adds that the European consumer of such goods and services is more familiar with the use of English words than the average consumer. It concludes from this that, although the Board of Appeal did not address specifically the issue of the relevant consumer, it kept in mind the perspective of the relevant public and consequently did not make any wrong assumption in this regard.
25. Thirdly, as regards the assessment of the similarity of the signs, OHIM observes, first, that the global assessment of the likelihood of confusion must be based on the overall impression created by the marks, bearing in mind, in particular, their distinctive and dominant components. In the present case, the earlier marks consisting of the single word 'gateway' are the closest to the trade mark applied for. OHIM thus concludes that, following the example of the Board of Appeal, it is necessary to consider the likelihood of confusion between the trade mark applied for and the earlier word marks consisting of the single word 'gateway'.
26. Subsequently, as regards determining the dominant element of the trade mark applied for, OHIM points out that case'law provides that the public will not consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark.
27. Like the Board of Appeal in the contested decision, OHIM considers that both the expression 'media gateway' and the single term 'gateway' refer to a media gateway, which is a recognised device in the information technology industry. OHIM observes in this respect that the trade mark applied for relates to a number of goods and services related to information technology which are linked with the processing, transmission and/or reception and/or conversion of data (sounds, signals and/or images) and which fall within Classes 9, 35, 38 and 42. Consequently, the Board of Appeal correctly held, in paragraph 26 of the contested decision, that the expression 'media gateway' was entirely descriptive of the goods of Fujitsu Siemens Computers in Class 9 and in large part descriptive of its services in Classes 35, 38 and 42. Although the relevant consumer may not understand the precise nature of a media gateway, that will not prevent him from understanding it to be a computer or networking device. OHIM adds that, for a term or expression to be generic or descriptive, and non-dominant, it is not a necessary requisite that it be used in a narrow descriptive sense. In the present case, it submits, the expression 'media gateway' may be used to identify either the nature of some of the goods in question or their intended purpose.
28. OHIM thus infers that the Board of Appeal was correct when it held, in paragraph 29 of the contested decision, that the element in the trade mark applied for which catches the attention of the relevant consumer is the leading, fanciful element, namely 'activy', and that the element which follows, namely 'media gateway', will tend to be disregarded because of its descriptive nature and must be assigned far less emphasis. Even if it were to be held that the relevant public, as the applicant claims, might perceive 'activy' as stemming from a misspelling of the English word 'activity', that would have no impact on the Board of Appeal's assessment since none of the meanings which may be attributed to that word are connected with the goods at issue and since, on the contrary, such a misspelling would help to strengthen the distinctiveness of the word 'activy'.
29. Fourthly, as regards the comparison of the signs, OHIM submits that the Board of Appeal was right to hold, first, that since the earlier marks only clashed with the non-distinctive element of the trade mark applied for, namely 'media gateway', there was no visual or aural similarity between the conflicting marks and, second, that since the dominant element of the trade mark applied for is 'activy', a purely fanciful element, there is also no conceptual similarity between the marks.
30. Fifth and finally, OHIM observes, first, that it follows from the provisions of Article 8(1)(b) of Regulation No 40/94 that the global assessment of the likelihood of confusion between conflicting marks requires both identity or similarity of the signs at issue and identity or similarity of the goods and services covered. Case-law shows that if the conflicting signs are completely different it is possible, in principle, without examining the goods in question, to take the view that there is no likelihood of confusion. Consequently, since there was no similarity between the earlier marks and the mark applied for, the Board was correct when it ruled, without examining the goods and services in question, that there was no likelihood of confusion between those marks. The same argument applies to the other relevant factors noted by the applicant. Since the Board of Appeal found no similarities between the conflicting signs, OHIM maintains that it rightly held, in paragraph 32 of the contested decision, that it was unnecessary to consider the other factors noted by the applicant.
31. Finally, as regards the applicant's argument alleging that the element 'gateway' plays an independent distinctive role in the trade mark applied for, which will lead the relevant public to believe that the goods or services at issue derive from economically-linked companies, it is OHIM's submission that the element 'gateway' does not play an independent role in the sign ACTIVY Media Gateway. On the contrary, its role is subordinate or secondary. In addition, its role is not at all distinctive since it describes either the characteristics or the main purpose of the goods and services at issue.

Findings of the Court

32. 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'.
33. Further, under Article 8(2)(a)(i) and (ii) of Regulation No 40/94, 'earlier trade marks' is deemed to mean Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
34. It is settled case-law that 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. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services at issue and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32, and the case-law cited).
35. Case-law also provides that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30; Case T-34/04 Plus v OHIM Bälz and Hiller (Turkish Power) [2005] ECR II-2401, paragraph 43; and Case T-317/03 Volkswagen v OHIM Nacional Motor (Variant) [2006] ECR II-12, paragraph 46).
36. Lastly, it is a result of the unitary character of the Community trade mark, laid down in Article 1(2) of Regulation No 40/94, that an earlier Community trade mark has identical protection in all Member States. Earlier Community trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Community. It follows that the principle laid down in Article 7(2) of Regulation No 40/94, which provides that it is sufficient that an absolute ground for refusal obtains in only part of the Community for a trade mark application to be refused, applies, by analogy, also in the event of a relative ground for refusal under Article 8(1)(b) of Regulation No 40/94 (MATRATZEN, paragraph 35 above, paragraph 59, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 34; see also to that effect Case T-355/02 Mühlens v OHIM Zirh International (ZIRH) [2004] ECR II-791, paragraphs 35 and 36, confirmed on appeal in Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717).
37. In the present case, the Board of Appeal was correct to hold that the relevant public was made up of consumers in the Community who purchase computer goods and services (paragraph 23 of the contested decision). In fact, the earlier trade marks relied on by the applicant in support of its opposition are protected on the one hand, for the most part, throughout the Community and/or, on the other, in France, Ireland or the United Kingdom. Therefore, the target public is the European consumer.
38. In addition, contrary to what the applicant claims, it is apparent from the documents in the file that the goods and services at issue relate to information technology and are linked to the transmission and/or reception and/or conversion of data. As OHIM contends, the European consumer of such goods and services is more familiar with the use of English words than the average consumer.
39. Lastly, the Court notes that the Board of Appeal held that it was appropriate first to examine the earlier registered marks made up of the single generic word 'gateway', since those marks were visually and phonetically nearest to the trade mark applied for and the opposition was most likely to succeed on the basis of those marks (paragraph 24 of the contested decision). In that regard, as is apparent from the documents in the file, since the applicant has not disputed that limitation adopted by the Board of Appeal the present examination should be limited to those earlier marks consisting of the single word 'gateway'.
40. The Board of Appeal's assessment of the likelihood of confusion between the conflicting marks must be examined in the light of the foregoing considerations.
41. The Board of Appeal held, in essence, as is evident from the pleadings of OHIM as regards determining the dominant element of the trade mark ACTIVY Media Gateway (see paragraph 26 above), that the public will not regard a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark (paragraphs 27 to 31 of the contested decision). It concluded that the dominant element of the trade mark applied for is solely the 'activy' element and therefore ruled out any likelihood of confusion between the conflicting marks from the visual, phonetic or conceptual point of view.
42. As regards, first, the visual comparison, the trade mark applied for consists of three words. The first of those words, 'activy', written in capitals, has six letters. The other two, 'media' and 'gateway', are written in lower case, with the exception of the first letter of each word, and together have a total of 12 letters.
43. As regards the earlier marks taken into consideration in the assessment of the likelihood of confusion between the conflicting marks, they are word marks composed of a single word of seven letters, namely the word 'gateway', reproduced either in capitals, or in lower case with the exception of the first letter.
44. The trade mark applied for is therefore longer than those earlier marks. In addition, it must be stated that the word 'gateway' is the only word in the earlier trade marks examined, whereas it is one of the three words and the last of the words making up the trade mark applied for.
45. It follows from the foregoing that, from a visual point of view, 'gateway' is not an element which stands out in the trade mark applied for. By contrast, the element 'activy', by virtue of its position at the beginning of the trade mark applied for and by its reproduction in capital letters, clearly stands out. Therefore, it constitutes the distinctive and dominant element in the trade mark applied for from a visual point of view. It follows that the Board of Appeal was right to hold, after making a global assessment, that there was no visual similarity between the conflicting signs.
46. As regards, secondly, the phonetic comparison, first of all it must be stated that the first two words of the trade mark applied for, namely 'activy' and 'media', are not in any way similar to the single word forming the earlier trade marks taken into consideration in the assessment of the likelihood of confusion between the conflicting marks, namely 'gateway'. Next, it must be stated also that only the third and last word in the trade mark applied for, namely 'gateway', is the same as the word forming those earlier marks. Further, having regard to its position in the trade mark applied for, the word 'activy' will be the first heard by the consumer and, for that reason, will hold the consumer's attention. Moreover, as the Board of Appeal rightly held, that word, by virtue of its fanciful nature, will carry the most impact in the mind of the consumer (paragraph 30 of the contested decision). In addition, as OHIM submits, even if the non-English-speaking relevant public might, as the applicant maintains, perceive the word 'activy' as a misspelling of the English word 'activity', it is conceivable that that misspelling of the word 'activity' helps to reinforce the fanciful character of the word 'activy'. Consequently, from a phonetic point of view, 'activy' is the distinctive and dominant element in the trade mark applied for, and the last two elements in the trade mark applied for, namely the words 'media' and 'gateway', by virtue of their position in that mark, will not hold the consumer's attention. The Board of Appeal was therefore correct in concluding that there was no real phonetic similarity between the conflicting signs.
47. As regards, thirdly, the conceptual comparison, it is settled case-law that, as a general rule, the public will not consider a descriptive element forming part of a complex mark to be the distinctive and dominant element in the overall impression conveyed by that mark (Case T-129/01 Alejandro v OHIM Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 53; NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 36 above, paragraph 34, and Case T-135/04 GfK v OHIM BUS (Online Bus) [2005] ECR II-4865, paragraph 70). In this connection, it is sufficient if the descriptive character of that element is perceived in part of the Community (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 36 above, paragraph 34).
48. In the present case, the Court finds that both the element 'media gateway' and the element 'gateway' in the trade mark applied for directly evoke, in the mind of the relevant consumer, the concepts of a media gateway and a gateway, which are commonly used in the computing sector. Those elements of the trade mark applied for are therefore highly descriptive of the goods and services covered by that trade mark. By contrast, since the first element of that mark, 'activy', is devoid of any conceptual meaning in the mind of the relevant consumer, the Board of Appeal was lawfully able to consider that it constitutes the dominant element and to conclude that there is no conceptual similarity between the conflicting signs.
49. For the sake of completeness, even if it were possible to hold that the 'gateway' element, without necessarily constituting the dominant element of the trade mark applied for, holds the attention of the relevant public, it cannot be concluded that it has, as the applicant submits, an independent distinctive role. Besides the descriptive character that the word 'gateway' has in itself in the trade mark applied for, the applicant has yet to prove that the overall impression produced by that trade mark might lead the public to believe that the goods and services at issue derive, at the very least, from companies which are linked economically (see, to that effect, Case C-120/04 Medion [2005] ECR I-8551, paragraphs 30 and 31).
50. Accordingly, given that the conflicting signs, following a global assessment, cannot, from the visual, phonetic and conceptual points of view, in any way be considered to be either identical or similar, the Board of Appeal rightly concluded that they were different.
51. It follows from the foregoing arguments that one of the essential conditions for the application of Article 8(1)(b) of Regulation No 40/94 has not been met. Therefore, without it being necessary to rule on the degree of similarity of the goods and services concerned, and however well-known may be the earlier marks taken into consideration for the purposes of that assessment, the Board of Appeal was correct to conclude that there was no likelihood of confusion between the conflicting marks.
52. Therefore, the first plea must be rejected as unfounded.

The second plea, alleging infringement of Article 8(5) of Regulation No 40/94

Arguments of the parties

53. The applicant submits that, for the same reasons as those set out under the first plea in support of its claim for annulment, the earlier trade marks are similar to the trade mark applied for. The Board of Appeal therefore erred in not considering whether the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks.
54. First, the applicant submits that it is possible that the relevant public will mistakenly assume that there is an economic link or a contractual relationship between the parties. Secondly, the applicant observes in the alternative that there is a risk that, without confusing them, the relevant public will make a connection or link between the earlier marks and the mark applied for. Thirdly, in view of the reputation of the earlier national and Community trade marks, both in the United Kingdom and within the Community, the use of the trade mark applied for will (a) inevitably and unfairly generate consumer interest in the goods of Fujitsu Siemens Computers and (b) make the public think that Fujitsu's goods and services have qualities comparable to those of the applicant's goods or services or that they are compatible with them. Fourth and finally, the use of the trade mark applied for will erode the distinctiveness of the earlier marks.
55. OHIM submits that Article 8(5) of Regulation No 40/94 applies only in so far as (a) the trade mark applied for is identical with or similar to the earlier trade mark and (b) it is to be registered for goods or services which are not similar to those for which the earlier trade mark was registered. It maintains that since the conflicting signs at issue are neither identical nor similar, the Board of Appeal was correct to reject the opposition based on infringement of Article 8(5) of Regulation No 40/94.

Findings of the Court

56. Under Article 8(5) of Regulation No 40/94, 'upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark'.
57. According to the case-law, in order to determine whether the Board of Appeal infringed that provision, it is necessary to assess whether the requirements for its application are satisfied in the present case. Accordingly, it must be determined, (a), whether the mark in respect of which registration is sought is identical with those earlier marks claimed by the applicant or is similar to them; (b), whether those marks have a reputation in the United Kingdom or within the Community; and, (c), whether the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks. Since those conditions are cumulative, failure to satisfy one of them is sufficient to render inapplicable the provisions of Article 8(5) of Regulation No 40/94 (see, to that effect, Case T-67/04 Spa Monopole v OHIM Spa'Finders Travel Arrangements (SPA'FINDERS) [2005] ECR II-1825, paragraph 30).
58. Moreover, the case-law shows that the existence of a link between the mark applied for and the earlier mark is an essential condition for the application of Article 8(5) of Regulation No 40/94. The infringements referred to in that provision, where they occur, are the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue of which the relevant public makes a connection between them, that is, establishes a link between them (SPA-FINDERS, paragraph 57 above, paragraph 41).
59. In the present case, the Board of Appeal held that the first essential condition for the application of Article 8(5) of Regulation No 40/94 was not satisfied since the conflicting signs were neither identical nor similar (paragraph 33 of the contested decision).
60. In this respect it need only be stated, as is apparent from the foregoing arguments (see paragraphs 42 to 50 above), that the conflicting signs are neither identical nor similar.
61. Therefore, since the first of the three cumulative conditions for the application of Article 8(5) of Regulation No 40/94 is not satisfied, the Board of Appeal rightly rejected the opposition brought by the applicant on the basis of Article 8(5) of Regulation No 40/94.
62. As a result, the Court concludes, without it being necessary to examine the other two conditions for application of the provision, that it is necessary to reject as unfounded the second plea alleging infringement of Article 8(5) of Regulation No 40/94 and to dismiss the action in its entirety.

Costs

63. Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs, if they have been applied for in the successful party's pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM.

On those grounds,

THE COURT OF FIRST INSTANCE (Fifth Chamber)

hereby:

1. Dismisses the action;

2. Orders Gateway, Inc., to bear its own costs and to pay those of the Office for Harmonisation in the Internal Market (Trade Marks and Designs).




Vilaras

Martins Ribeiro

Jürimäe

Delivered in open court in Luxembourg on 27 November 2007.




E. Coulon

M. Vilaras

Registrar

President

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* Language of the case: English.