JUDGMENT OF THE GENERAL COURT (Third Chamber)
15 January 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark Gigabyte – Earlier Community word mark GIGABITER – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑451/11,
Gigabyte Technology Co., Ltd, established in Taipei (Taiwan), represented by F. Schwerbrock, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Robert A. Haskins, residing in Quakertown, Pennsylvania (United States)
ACTION brought against the decision of the Second Board of Appeal of OHIM of 20 May 2011 (Case R 2047/2010-2), concerning opposition proceedings between Robert A. Haskins and Gigabyte Technology Co., Ltd,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka and D. Gratsias (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 8 August 2011,
having regard to the response lodged at the Court Registry on 7 November 2011,
having regard to the reply lodged at the Court Registry on 23 January 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 22 December 2006, the applicant, Gigabyte Technology Co., Ltd, filed an application for registration of a Community trade mark with 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign Gigabyte.
3 The goods and services in respect of which registration was sought are in Classes 9, 35, 37 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. In particular, the services in Classes 37 and 42, following the classification amendments carried out by the applicant at OHIM’s request, correspond, for each of those classes, to the following description:
– Class 37: ‘Installation of computer and network systems; repair services for computers and computer peripherals, computer networks and associated peripheral devices; computer installation and maintenance services; repair and maintenance of motherboards, VGA cards, servers, personal computers and internet hardware equipment’;
– Class 42: ‘OEM (Original Equipment Manufacturer) for motherboard software design; system tests and OEM for motherboards, VGA cards, servers, personal computers and internet hardware equipment; computer services, namely, designing, creating, implementing computer equipment and (global) networks for others; operational and technical support services relating to computers and computer peripherals, computer systems and computer network analysis, consulting and management services, computer information technology management and consulting’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 61/2007 of 5 November 2007.
5 On 5 February 2008, Robert A. Haskins filed a notice of opposition to registration of the mark applied for in respect of the goods and services listed in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on the earlier Community word mark GIGABITER, filed on 13 March 2006 and registered on 20 July 2007 under No 4 954 095 in respect of, inter alia, services in Class 42 corresponding to the following description: ‘Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored, including but not limited to electrical equipment, electronic media and optical media, main-frame computers, personal computers, circuit boards, power supplies, cables, hard drives, floppy drives, CD-Rom drives, tape drives, monitors, keyboards, network equipment, telecommunications equipment, electronic components, transformers, electrical equipment assemblies and sub‑assemblies, motors, reel-to-reel tape and tape drives, video tape and video tape drives and players, audio tape and audio tape drives and players, zip disks, CDs, media storage tapes, floppy disks, personnel identification badges and cards, microfiches, microfilm, electronic medical devices, electronic and optically-based navigational devices, electronic and optically-based automotive devices, electronic and optically-based consumer devices’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 On 23 August 2010, the Opposition Division upheld the opposition in respect of all the services in Classes 37 and 42. First, it held that those services were similar to the services in Class 42 covered by the earlier trade mark and corresponding to the following description: ‘Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored’. Second, the Opposition Division held that the mark applied for was visually and aurally similar to the earlier trade mark and that, accordingly, a likelihood of confusion could not be ruled out.
9 On 18 October 2010, the applicant filed an appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
10 By decision of 20 May 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and upheld the Opposition Division’s decision.
11 With regard to the comparison of the services, the Board of Appeal confirmed that there was a certain similarity between, on the one hand, the services in Classes 37 and 42 covered by the mark applied for and, on the other hand, the services in Class 42 covered by the earlier mark and corresponding to the following description: ‘Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored’.
12 Comparing the signs, the Board of Appeal found that the marks at issue were visually and aurally highly similar, and were conceptually similar. It also noted that their similarities outweighed their differences.
13 Under those circumstances, the Board concluded that there was a likelihood of confusion on the part of the relevant public for the services in Classes 37 and 42 covered by the mark applied for, even taking into account the fact that the relevant public was likely to display a high degree of attention.
Forms of order sought
14 The applicant claims that the Court should annul the contested decision. In the reply, it also claims that the Court should order OHIM to pay the costs.
15 OHIM contends that the Court should:
– dismiss the application for annulment in its entirety;
– order the applicant to pay the costs.
Law
Admissibility of new evidence produced by the applicant for the first time before the General Court
16 In the response, OHIM submits that the applicant has produced new evidence before the General Court in Annexes A.1 to A.4 to the application. Using those annexes, the applicant has, in particular, attached the following to its application: the Gigabyte Global Warranty Card (Annex A.1), documents relating to the IT products and repair services offered by competitors (Annex A.2), a profile of the computer equipment manufacturer F. (Annex A.3) and a Notice from the United States Patent and Trademark Office (USPTO) (Annex A.4). OHIM submits that the evidence mentioned above was produced for the first time before the General Court and is for that reason inadmissible.
17 It should be noted that it is clear from the case-file of the proceedings before OHIM that those documents were not produced in the course of those proceedings. It follows that the applicant is indeed relying on them for the first time before the General Court.
18 In that regard, it should be noted that, according to settled case-law, documents produced for the first time before the Court cannot be taken into consideration. The purpose of actions before the Court is to secure review of the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, it is not the role of the Court to re‑evaluate the factual circumstances in the light of documents which have been produced for the first time before it (see judgment of 20 June 2012 in Case T‑357/10 Kraft Foods Schweiz v OHIM – Compañía Nacional de Chocolates (CORONA), not published in the ECR, paragraph 15 and the case-law cited).
19 Therefore, in accordance with the case-law, Annexes A.3 and A.4 to the application are inadmissible and cannot be taken into consideration by the Court, particularly as the applicant does not put forward any reasons whatsoever as to why it produced them for the first time before the Court.
20 By contrast, the applicant claims that Annex A.1 to the application is intended to establish a matter of common knowledge, namely the fact that manufacturers are obliged to provide consumers who purchase their goods with a guarantee such as the one provided by the Gigabyte Global Warranty Card, which includes ancillary repair services.
21 In addition, the applicant claims that it produced Annex A.2 to the application in order to challenge the accuracy of a fact invoked by OHIM as a matter of common knowledge, namely that it is normal practice for providers of installation and repair services connected with computers and computer equipment also to destroy data electronically stored on computers in order to repair them.
22 In that regard, it should be borne in mind that, according to case-law, an applicant is entitled to produce documents before the Court as evidence of the accuracy – or inaccuracy – of a matter of common knowledge (see CORONA, cited above, paragraph 16, and judgment of 10 November 2011 in Case C‑88/11 P LG Electronics v OHIM, not published in the ECR, paragraphs 29 and 30). Moreover, the question of taking such documents into consideration as evidence is distinct from the question of whether the matter concerned was of common knowledge, which is, furthermore, examined below (see paragraphs 62 to 67).
23 Accordingly, Annexes A.1 and A.2 to the application must be declared admissible.
The applicant’s reliance on Article 9(1)(b) of Regulation No 207/2009
24 The applicant relies on a single plea in law, alleging that ‘one of the necessary conditions contained in [Article] 9(1)(b) of [Regulation No 207/2009] is not satisfied’.
25 That article provides as follows:
‘1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark …’
26 In support of that plea, the applicant claims, in essence, that the Board of Appeal wrongly compared the services in Classes 37 and 42 covered by the mark applied for with the services in Class 42 covered by the earlier mark. Thus, it argues, the Board of Appeal came to a wrong conclusion regarding the likelihood of confusion between the marks in question.
27 In view of the nature of those claims, it is clear that, through the plea mentioned in paragraph 24 above, the applicant intended to invoke, not disregard of Article 9(1)(b) of Regulation No 207/2009, which, as is apparent from its wording, defines the scope of the right conferred by a Community trade mark and, therefore, the effects of its registration, but rather a breach of Article 8(1)(b) of that regulation, which concerns the conditions governing registration. The applicant must therefore be regarded as raising a single plea in law, alleging a breach of Article 8(1)(b) of Regulation No 207/2009.
28 In that regard, it should be borne in mind that it is not necessary for a party expressly to indicate the provisions under which he is entitled to bring his action, or, more generally, on which he is basing the pleas which he is raising. It is enough for the subject of that party’s application and the main elements of fact and law on which it is based to be set out sufficiently clearly in that application (see, to that effect, Joined Cases 2/63 to 10/63 Acciaierie San Michele and Others v High Authority [1963] ECR 327, 341, and Case T‑385/00 Seiller v EIB [2003] ECR‑SC I‑A‑161 and II‑801, paragraphs 40 to 45), which is the situation in the present case.
29 Furthermore, the applicant’s reasoning is sufficiently clear and precise to enable the defendant to prepare its defence and for the General Court to exercise its power of review (see, to that effect, Seiller v EIB, cited in paragraph 28 above, paragraph 40). Indeed, OHIM contests the applicant’s arguments in their entirety, referring to an ‘infringement by the Board of Appeal of Article 8(1)(b) [of Regulation No 207/2009]’.
30 It follows from the foregoing that, although the applicant has not expressly invoked Article 8(1)(b) of Regulation No 207/2009 in its written pleadings, its single plea in law is admissible.
Substance
31 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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.
32 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 from economically‑linked undertakings constitutes a likelihood of confusion. Under that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned 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 covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
33 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
34 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
35 In the present case, the applicant’s single plea in law must be examined in the light of the principles of the case-law set out above.
The relevant public
36 The likelihood of confusion between two marks, within the meaning of Article 8(1)(b) of Regulation No 207/2009, must not be assessed on the basis of an abstract comparison of those signs and the goods or services which they designate. Rather, the assessment of that likelihood must be based on the perception which the relevant public will have of those signs, goods and services (judgment of 24 May 2011 in Case T‑408/09 ancotel v OHIM – Acotel (ancotel), not published in the ECR, paragraph 29).
37 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 those covered by the mark applied for (judgment of 1 July 2008 in Case T‑328/05 Apple Computer v OHIM − TKS‑Teknosoft (QUARTZ), not published in the ECR, paragraph 23).
38 In that regard, account must be taken of the fact that a restricted and specialist public is likely to have specific knowledge of the goods or services covered by the marks at issue and/or to display, in that regard, a higher level of attentiveness than the public at large (see, to that effect, judgment of 19 November 2008 in Case T‑315/06 Ercros v OHIM − Degussa (TAI CROS), not published in the ECR, paragraph 26; judgment of 28 October 2009 in Case T‑339/07 Juwel Aquarium v OHIM − Potschak (Panorama), not published in the ECR, paragraph 33; and judgment of 9 February 2010 in Case T‑113/09 PromoCell bioscience alive v OHIM (SupplementPack), not published in the ECR, paragraph 31). Those factors may play a decisive role in determining whether or not there is a likelihood of confusion between those marks.
39 In the present case, it should be noted that the Board of Appeal found that the services in Classes 37 and 42 covered by the mark applied for were addressed not only to professionals but also to the public at large, which, taking into account the specialised nature of the services concerned, was deemed to be well informed, observant and circumspect. The services in Class 42 covered by the earlier mark were addressed to business professionals, whose level of attentiveness is high. In addition, the relevant territory for the assessment of the likelihood of confusion was the territory of the European Union as a whole.
40 The Board of Appeal’s conclusion that the services in Classes 37 and 42 covered by the mark applied for are addressed not only to professionals but also to the public at large, a conclusion not contested by the parties, must be upheld.
41 The description of the services covered by the earlier mark is sufficiently broad to include the obliteration of all types of data. Accordingly, those services may potentially be of interest to any person using a computer, whether for professional or private purposes. Therefore, it must be concluded that those services are also addressed to the public at large.
42 The Board of Appeal took the view that those services were addressed to ‘business professionals’. In other words, according to the Board of Appeal, those services are not addressed to those using computers for private purposes. However, the perception of ‘business professionals’ – a very broad category – is in fact impossible to distinguish from the perception of the public at large. Accordingly, the Board of Appeal came, in essence, to the same conclusion as that set out in paragraph 41 above.
43 Moreover, taking into account the nature of the services covered by both the mark applied for and the earlier trade mark, the Board of Appeal acted correctly in taking the view that the public concerned had a high level of attentiveness.
44 Under those circumstances, it must be held that the Board of Appeal correctly defined the relevant public and its level of attentiveness.
Comparison of the services
45 According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods or services concerned (Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraphs 52 and 53, and Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37).
46 Regarding the services concerned, in paragraphs 22 and 23 of the contested decision the Board of Appeal merely compared the services in Classes 37 and 42 covered by the mark applied for with the services in Class 42 covered by the earlier trade mark.
– The services in Class 37 covered by the mark applied for
47 The Board of Appeal held that there was a certain similarity between, on the one hand, the services in Class 37 covered by the mark applied for and, on the other hand, the services in Class 42 covered by the earlier trade mark and corresponding to the following description: ‘Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored’.
48 According to the Board of Appeal, although repairing computers, on the one hand, and destroying computers and data, on the other hand, are normally separate activities, that does not alter the fact that computer repair services can sometimes include the destruction of undesirable data, such as computer viruses.
49 In making that finding, the Board of Appeal confirmed the Opposition Division’s decision, in that that division had found, first, that all of the services in Class 37 covered by the mark applied for were connected with installing and repairing computers and computer equipment and, second, that it was normal practice on the market for providers of those services to seek to destroy data electronically stored on computers in order to repair them.
50 The Board of Appeal therefore took the view, just as the Opposition Division had previously done so, that the services covered by the marks at issue could be supplied by the same undertakings, that they had common distribution channels and that they were similar in nature.
51 In the first place, it should be noted in this regard that both the services covered by the mark applied for and those covered by the earlier mark are, by their nature, IT specialist services and have a similar purpose in that they are designed, ultimately, to enable and to facilitate the use of computers and to deal with various aspects of that use. The mere fact that, as the applicant claims, those services may concern two different aspects of computer use, namely, on the one hand, the retrieval of data and, on the other hand, the destruction of data, does not mean that they cannot be regarded as similar. There is no clear reason, in the absence of evidence to the contrary, to refuse to take the view that those two seemingly antithetical tasks may form part of the range of services liable to be provided by the same kind of undertaking. Ultimately, both the retrieval and destruction of electronic data require technical knowledge of such data and how to process them. A situation where an undertaking specialising in retrieving data may also have expertise in the field of destroying and obliterating data cannot therefore be ruled out. Indeed, the relevant public will reasonably expect all the services concerned to be provided by IT specialist undertakings.
52 The applicant submits, firstly, that it is not common practice for an undertaking providing the services covered by the mark applied for to, on the one hand, install and repair computers and computer equipment, and, on the other hand, destroy undesirable data contained in computers in order to repair them. It submits, in essence, that repairing computers does not always involve the destruction of undesirable data, and that computer technicians very rarely carry out such destruction. According to the applicant, anti-virus software is currently commonly available and any computer user is able to delete any data.
53 However, as the applicant itself acknowledges in the application, there are situations in which the repairing of computers involves destroying viruses. While it is true that not all malfunctions are caused by viruses, the fact remains that a virus may affect the working of a computer and that, where that is the case, it may prove necessary to employ the services of a specialist undertaking. Moreover, the existence of anti-virus software does not prevent users from employing the services of such an undertaking.
54 Secondly, the applicant submits that the obliterating services covered by the earlier mark must require some kind of technologies in order to render the obliterated data unreadable and irretrievable and are, therefore, different from the ordinary process of destroying computer data, which is reversible. In addition, only products that are not working properly are likely to have repairs carried out on them. However, in this particular case, the services covered by the earlier trade mark do not cover solely products that are malfunctioning. Normally, before giving a final solution, the testing service will ascertain the products that are not working properly. However, that will not take place during the provision of the services covered by the earlier trade mark. Therefore, the procedure applicable to those services is not the same.
55 Those arguments must be rejected. It is not disputed, first, that repairing computers may involve destroying or obliterating data and, second, that there are sometimes situations where a professional computer user, being unable to rectify a computer malfunction connected with the presence of a virus without assistance, must have recourse to the services of a specialist undertaking. As a result, the distinctions set out by the applicant in the preceding paragraph are unconvincing.
56 Regarding, in addition, the applicant’s claim that the obliterating services covered by the earlier trade mark require ‘some kind of technologies’, it should be noted that, even if that were true, it could not undermine the finding that those services and the services covered by the mark applied for are similar. Where the conditions listed by the case-law mentioned in paragraph 45 above are met, two types of services can be regarded as similar even when they are provided using different technologies. In any event, that claim by the applicant is not supported by the description of the services in Class 42 covered by the mark applied for, which refers generally to obliterating electronically stored data in order to render such data unreadable and irretrievable, without evoking any particular kind of obliterating technology.
57 Furthermore, even supposing that, as the applicant claims, obliterating a virus is a reversible process, such a fact is not sufficient to exclude the similarity between the services covered by the mark applied for and the services covered by the earlier mark. In view of the technical nature of data obliteration, the average consumer is unable to distinguish obliterating ‘electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored’ from the ordinary process of obliterating data from a computer, which is, according to the applicant, reversible.
58 In addition, the applicant does not rule out the possibility that obliterating ‘electronically stored data to render such data unreadable and irretrievable’ may concern malfunctioning products, as in the case of the services covered by the mark applied for.
59 Thirdly, the applicant claims that viruses cannot be stored in computer peripherals, with the result that repairing such peripherals does not involve destroying undesirable data.
60 However, the distinction made by the applicant between computers and their peripherals does not undermine the finding that repair services and the destruction of electronic data could be provided by the same undertaking in order to restore a computer’s functions.
61 In the second place, concerning the end-users of the services in question, it should be noted that professionals and, in general, average consumers wishing to delete data electronically stored on their computers permanently, with a view, for example, to destroying them, recycling them, or putting them to another use, might well employ the data-obliterating and destroying services covered by the earlier trade mark and the installation, maintenance and repair services for computers and computer equipment covered by the mark applied for. Consequently, the applicant’s argument that the end-users of the services covered by the marks at issue are different must be rejected.
62 In the third place, all of the services in question can be distributed using the same channels, which, according to the case-law cited in paragraph 45 above, is another factor indicating a similarity between them.
63 In that regard, the applicant asserts that the distribution channels of the services covered by the marks at issue are different. In particular, it contests the Board of Appeal’s finding that the services covered by the marks at issue may be provided by the same undertakings. It states that that finding is not supported by any reasoning or evidence.
64 It should first of all be borne in mind that, as is clear from settled case‑law, Article 76 of Regulation No 207/2009 does not prevent the departments of OHIM from basing their decisions on – in addition to the facts and evidence submitted by the parties – facts which are well known (see, to that effect, Case T‑185/02 Ruiz‑Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraphs 28 and 29 and the case-law cited).
65 In the present case, the finding made by the Opposition Division, and upheld by the Board of Appeal, that it is common practice for providers of installation, maintenance and repair services connected with computers and computer equipment also to destroy data electronically stored on computers in order to repair them is a fact which is well known to any person with a basic level of understanding of computer‑related matters. It is quite common for computer users to experience virus attacks which vary in seriousness and which may, on occasion, have serious consequences. As has already been noted in paragraph 53 above, the user is not always able to combat such situations and it may therefore be necessary for him to seek the services of a specialist undertaking. Consequently, the Board of Appeal was entitled, without erring, to base its decision on the finding that it is common practice for providers of installation, maintenance and repair services in respect of computer equipment also to destroy data electronically stored on computers in order to repair them.
66 That finding cannot be brought into question by the applicant’s argument that the likelihood of confusion on the part of consumers is limited, given that the installation and repair services covered by the mark applied for are ancillary services for goods already purchased by consumers and are likely to be provided under a warranty entered into at the time of purchase. According to the applicant, undertakings providing services covered under such warranties do not provide any data-obliterating services.
67 It is true that, as the applicant claims in the reply, it is common knowledge that installation and repair services may be provided under a warranty entered into at the time of the purchase of the goods concerned. However, it is also possible that a user might have need of those services after the expiry date of the warranty provided to him when he purchased his computer, or where the requirements necessary for the application of that warranty are not met. Accordingly, it is entirely possible that computer installation and repair services may be provided not only by the computer manufacturer or an undertaking connected with that manufacturer, but also by independent service providers. It may reasonably be assumed, in the absence of any argument to the contrary put forward by the applicant, that at least an independent provider of those services might be expected to offer, alongside computer-installation and repair services, data‑obliterating services, such that there may be, on the part of the relevant public, a likelihood of confusion between the services covered by the mark applied for and those covered by the earlier mark. That conclusion is reinforced by the fact that, as the Board of Appeal confirmed, it is common practice for providers of installation, maintenance and repair services in respect of computer equipment also to destroy data electronically stored on computers in order to repair them.
68 The applicant’s argument that, unlike the services covered by the mark applied for, the service covered by the earlier trade mark does not require confidential information regarding IT products to be made available for the purposes of obliterating data must also be rejected. That argument – which is, moreover, unsubstantiated – is irrelevant for the purpose of challenging the Board of Appeal’s finding that certain repairs involve the obliteration of data. Although it is true that a number of operations necessary to repair a computer require access to confidential data stored on that computer, the fact remains that not all operations of that nature require access to such data.
69 Lastly, the applicant claims that the services covered by the mark applied for include services which do not involve destruction of data, namely installing network systems and software and assembling computer components.
70 In that regard, taking into account the very close link between computer installation, maintenance and repair services, it may reasonably be concluded that the services covered by the mark applied for and the destroying and obliterating services covered by the earlier trade mark may indeed be provided by the same undertaking. If a consumer can be obliged to destroy or obliterate electronically stored data in order to repair a computer, it may also be necessary for that consumer to destroy or obliterate such data when required to prepare to install network systems and software and to assemble computer components.
71 It follows from all of the foregoing that the services in Class 37 covered by the mark applied for are similar to the services in Class 42 covered by the earlier trade mark.
– The services in Class 42
72 The Board of Appeal held that there was also a certain similarity between, on the one hand, the services in Class 42 covered by the mark applied for, which are provided by electronics experts, and, on the other hand, the services in Class 42 covered by the earlier mark and corresponding to the following description: ‘Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored’.
73 It also found that the Opposition Division had acted correctly in holding that the services in Class 42 covered by the mark applied for were services provided by IT experts for other undertakings and had a connection with the services in Class 42 covered by the earlier mark, which are also provided by IT experts for others. The Board of Appeal therefore concluded, as the Opposition Division had done previously, that the services covered by the marks at issue belonged to the same sector, used the same distribution channels and were, therefore, similar.
74 The applicant contests the Board of Appeal’s assessment in this regard.
75 In the first place, the applicant submits that the services covered by the earlier trade mark use specific technologies which enable the proprietor of that mark to obliterate data in order to render such data unreadable and irretrievable. According to the applicant, the services in Class 42 covered by the mark applied for relate mainly to, first, services offered by the original equipment manufacturers and, second, computer‑related services, namely the design, creation and implementation of computer equipment and networks. Original equipment manufacturers, such as the applicant, have a mass manufacturing capacity, including factories, equipment and staff. Consequently, it is not possible to provide any service offered by those original computer equipment manufacturers without possessing manufacturing capacity. In this particular case, the proprietor of the earlier trade mark does not even have an office in the European Union, with the result that it is certainly impossible for him to provide services such as those offered by the original equipment manufacturers. It is true that both the services in question are provided by experts, but they are experts who specialise in entirely different areas, namely the area of manufacturing computer products and the area of obliterating electronic data, and have different skills.
76 However, as is clear from the description included in the applicant’s Community trade mark application (paragraph 3 above), the services in Class 42 covered by the mark applied for are, as the Board of Appeal rightly found, similar to the obliterating services covered by the earlier trade mark, given that they belong to the same area, namely computing, are addressed to the same public, are made available using the same channels and are provided by the same type of undertaking. In the light of those factors, any other factor, such as whether or not there is an adequate infrastructure in place, is irrelevant. Furthermore, the applicant does not provide any evidence to show that the services mentioned above can be provided solely by the original equipment manufacturers and not by other IT experts.
77 In the second place, according to the applicant, the services in Class 42 covered by the mark applied for are used to create new products, which is not true of the services in Class 42 covered by the earlier trade mark. Consequently, the services covered by the mark applied for and the services covered by the earlier trade mark satisfy different demands. In addition, the applicant submits that companies which need to delete electronic data from their computers completely are unlikely to contact the applicant, as none of the services in Class 42 covered by the mark applied for indicates that the applicant is capable of destroying data.
78 However, it must be pointed out that the relevant public will reasonably expect all the services in Class 42 described above to be provided by IT specialist undertakings.
79 More specifically, while it is true that, as the applicant claims, such services may pursue different ends, namely, on the one hand, in particular, the creation and design of computer software and networks for others and, on the other hand, the destruction of data, the fact none the less remains that there is no clear reason, in the absence of evidence to the contrary, to refuse to take the view that those two seemingly antithetical tasks may form part of the range of services which could be provided by the same kind of undertaking. Ultimately, therefore, the possibility that an undertaking specialising in the creation of new computer products may also have expertise in the area of obliterating and destroying data cannot be excluded.
80 Moreover, in the absence of evidence to the contrary, it must be conceded that expertise in the area of destroying and obliterating data may form part of the services likely to be provided by an undertaking offering computer-related services, services connected with implementing computer equipment or networks for others, operational and technical support services relating to computers and computer peripherals, computer systems and computer network analysis, consulting and management services and computer information technology management and consulting.
81 It follows from all of the foregoing that the services in Class 42 covered by the mark applied for are similar to the services in Class 42 covered by the earlier trade mark.
Comparison of the signs
82 According to settled case-law, the global assessment of the likelihood of confusion must, as far as concerns the visual, aural and conceptual similarity of the signs at issue, be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and the case-law cited).
83 In the present case, in paragraph 28 of the contested decision the Board of Appeal noted that the Opposition Division had rightly concluded that the signs were visually and aurally highly similar. It also noted in paragraph 30 of that decision that the two word signs in question – namely the signs Gigabyte and GIGABITER – displayed visual, aural and conceptual similarities which outweighed their differences.
84 With regard to the visual comparison, the Board of Appeal found that the marks at issue clearly had letters in common and differed only in that the earlier trade mark contained an ‘i’ instead of a ‘y’ and ended in an ‘r’. Visually, it held, this would create little difference between the marks.
85 With regard to the aural comparison, according to the Board of Appeal, the first three syllables of the signs are identical and the slight differences affecting the ending of each of the signs at issue could pass unnoticed when spoken.
86 So far as the conceptual comparison is concerned, the Board of Appeal upheld the opponent’s argument that the words ‘gigabyte’ and ‘gigabiter’ evoked the same idea, namely that of a gigabyte. Moreover, it found that the Opposition Division had made an error in taking the view that the marks at issue were not conceptually similar. However, that conceptual similarity, it found, has little bearing on the comparison of the signs given that they have, at best, a very weak distinctive character.
87 Furthermore, the Board of Appeal noted that the signs displayed a slight conceptual difference, likely, incidentally, to be noticed only by the English‑speaking public. According to the Board of Appeal, the word ‘gigabiter’ evokes not only the idea of a gigabyte but also the idea of something which bites, whereas the word ‘gigabyte’ evokes nothing beyond the idea mentioned in paragraph 86 above.
88 Those findings, which are not contested by the parties, must be upheld. It must accordingly be concluded that the signs at issue are, at the very least, similar.
The global assessment of the likelihood of confusion
89 A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and, in particular, a similarity between the trade marks and between the services designated. Accordingly, a lesser degree of similarity between the services designated may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17).
90 The Board of Appeal held that the visual, aural and conceptual similarities between the marks at issue outweighed their differences. In particular, it took the view that the relevant public might not notice the slight differences in the spelling of the signs at issue. Moreover, the conceptual difference observed in paragraph 87 above would not be noticed except by the English-speaking public, which constitutes only part of the relevant public within the European Union. Furthermore, even for the English-speaking public, the conceptual difference between the marks at issue would only be slight given that the word ‘gigabiter’ also evokes the word ‘gigabyte’. In the context of a global assessment, there would therefore, according to the Board of Appeal, be a likelihood of confusion on the part of the relevant public between the services in Classes 37 and 42 covered by the mark applied for and the services in Class 42 covered by the earlier trade mark, even though that public displays a high level of attentiveness.
91 The assessment of the Board of Appeal set out above is well founded.
92 As has already been observed, the signs in question are visually, aurally and conceptually similar. In addition, the services covered by the marks in question are similar. In the context of a global assessment, it must therefore be held, on the basis of the case-law cited in paragraph 89 above, that there is a likelihood of confusion between the signs at issue.
93 That finding cannot be brought into question by the applicant’s argument based on the fact that it owns a number of trade marks containing the word ‘gigabyte’, including two registered Community figurative marks, which have been used on the European market since at least 1996 and which cover services identical to those at issue in the present case. According to the applicant, given that no instance of confusion has been found concerning its use of the mark containing the word ‘gigabyte’ – highly similar, if not almost identical, to the mark applied for in the present case – it is unlikely that consumers will be led mistakenly to believe that the services covered by the mark applied for have the same commercial origin as the services covered by the earlier mark.
94 In that regard, it must be borne in mind that, although the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks, that possibility may be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the opponent’s earlier mark, and provided that the earlier marks concerned and the marks at issue are identical (Case T‑31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86).
95 Suffice it to state that the applicant, during the administrative procedure, has neither demonstrated nor even claimed that the coexistence of the earlier trade mark and the earlier figurative marks containing the word ‘gigabyte’ was based upon the absence of any likelihood of confusion.
96 In any event, as has already been observed in paragraph 6 above, the Community word mark GIGABITER was filed on 13 March 2006 and registered on 20 July 2007. In view of the short period of coexistence of the earlier marks upon which the applicant is relying and the opponent’s earlier mark, it cannot be concluded that there was no likelihood of confusion between those marks.
97 Lastly, the applicant submits that, in his notice of opposition, the proprietor of the earlier trade mark also relied on a trade mark application submitted in the United States. However, the mark in question had, according to the applicant, been classified as abandoned, as shown in the notices published by the USPTO, since the proprietor of the earlier trade mark was unable to show actual use, in the United States, of the services covered by that mark. Accordingly, the applicant submits that it is unlikely that the proprietor of the earlier trade mark would use that mark on the European market, since he has no office in any of the Member States. Under those circumstances, the mark in question does not have a reputation in the European Union and thus should not enjoy any special protection.
98 Even setting aside the fact that it is supported only by evidence which has been rejected (see paragraph 19 above), that line of argument is ineffective. It follows from the considerations set out in paragraphs 91 to 96 above that the opposition was well founded, to the requisite legal standard, on the earlier trade mark and that OHIM acted correctly in allowing that opposition and in rejecting the trade mark application submitted by the applicant in respect of the services in question. The trade mark application filed by the proprietor of the earlier trade mark in the United States, evoked by the applicant in its submissions, is therefore irrelevant. The applicant’s assertions relating to the earlier trade mark having no reputation in the European Union are also ineffective, since it is not apparent from the contested decision that the Board of Appeal took any allegedly highly distinctive character of the earlier trade mark resulting from a hypothetical reputation into consideration in its global assessment of the likelihood of confusion between the marks at issue.
99 In the light of all of the foregoing, the applicant’s single plea in law must be rejected and, accordingly, the action must be dismissed.
Costs
100 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 form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Gigabyte Technology Co., Ltd to pay the costs.
Delivered in open court in Luxembourg on 15 January 2013.
[Signatures]