Construlink v EUIPO - Wit-Software (GATEWIT) (Judgment) [2017] EUECJ T-351/14 (17 February 2017)

Judgment Background to the dispute On 15 July 2011, the applicant, Construlink — Tecnologias de Informação, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). Registration as a mark was sought for the word sign GATEWIT. The services in respect of which registration was sought are in Class 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 to the following description: ‘Design of computer systems; creation and maintenance of websites, for others; research and development (for others); computer software design; consultancy in the field of computer hardware’. The EU trade mark application was published in Community Trade Marks Bulletin No 157/2011 of 22 August 2011. On 22 November 2011, the intervener, Wit-Software, Consultoria e Software para a Internet Móvel, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the services referred to in paragraph 3 above. The opposition was based on the EU figurative mark filed on 24 September 2008 and registered on 29 May 2009 under No 7 251 879, reproduced below: The goods and services covered by the earlier EU trade mark were in Classes 9, 38 and 42 and corresponded, for each of those classes, to the following description: – Class 9: ‘Computer programs and software’; – Class 38: ‘Telecommunications’; – Class 42: ‘Consultancy in the field of computer hardware and software; computer programming; computer system design; maintenance of computer software; research and development for others; updating of computer software; computer software design’. The opposition was also based on the business name Wit-Software, Consultoria e Software para a Internet Móvel, SA, registered in Portugal on 24 November 2000 for the commercial activity of ‘consultancy and development of software for mobile internet, information systems, trade of software and training’, used in the course of trade of more than mere local significance and conferring on its proprietor the right provided for in Article 239(2)(a) of the código da propriedade industrial (Portuguese Industrial Property Code). The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Regulation No 207/2009. On 12 April 2013, the Opposition Division rejected the opposition in its entirety. On 11 June 2013, the intervener filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision. By decision of 6 March 2014 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision on the grounds of infringement of Article 8(1)(b) and (4) of Regulation No 207/2009, and rejected the application for registration in its entirety. According to the Board of Appeal, there was a likelihood of confusion between the marks at issue for a part of the public in the relevant territory in respect of all the services covered by those marks. In addition, Portuguese consumers would be misled and led to believe that the mark applied for belongs to or is connected with the company known as Wit-Software, Consultoria e Software para a Internet Móvel, SA. Forms of order sought The applicant claims that the Court should: – issue letters rogatory so that witnesses may be examined in Portugal; – annul the contested decision; – consider the trade mark application fully sustained; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the request for letters rogatory; – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the request for letters rogatory; – dismiss the action; – order the applicant to pay the costs incurred before the Board of Appeal. At the hearing, in response to a question put by the Court, the applicant indicated that it was withdrawing its first head of claim seeking the issuing of letters rogatory. At its request, the other parties having been heard, the applicant was also given permission to file, by 19 July 2016 at the latest, the English version of a judgment delivered on 1 July 2016 by the tribunal da propriedade intelectual de Lisboa (Intellectual Property Court, Lisbon, Portugal). On 19 July 2016, the applicant lodged that document at the Court Registry. By documents lodged at the Court Registry on 18 and 22 August 2016 respectively, EUIPO and the intervener submitted their observations regarding that document. The oral procedure was closed on 31 August 2016. Law Admissibility of the third head of claim, requesting the Court to consider the trade mark application fully sustained EUIPO contends that the third head of claim is inadmissible, in so far as it seeks a declaratory ruling from the Court, which exceeds the powers conferred on the latter by Article 65(1) and (2) of Regulation No 207/2009. The applicant argues that the plea of inadmissibility thus raised by EUIPO should be rejected, on the grounds that the third head of claim is simply the logical consequence of annulment of the contested decision. In that regard, it should be borne in mind that, in accordance with Article 65(3) of Regulation No 207/2009, an action brought against a decision of the Board of Appeal can lead only to the annulment or alteration of that decision by the Court. Under Article 65(6) of that regulation, EUIPO is required to take the necessary measures to comply with the judgment of the Court. Therefore, according to settled case-law, heads of claim seeking to obtain statements of law from the Court are inadmissible (see judgment of 27 September 2011, El Jirari Bouzekri v OHIM — Nike International (NC NICKOL) , T‑207/09, not published, EU:T:2011:537, paragraph 17 and the case-law cited). In the present case, the third head of claim seeks a declaration from the Court that the trade mark application is fully sustained and thus seeks to obtain statements of law from the Court. That head of claim must therefore be rejected as inadmissible. Admissibility of the judgment of the tribunal da propriedade intelectual de Lisboa produced for the first time before the Court At the hearing, the applicant confined itself to stating that the judgment of the tribunal da propriedade intelectual de Lisboa that it wished to submit was a piece of evidence supporting the present action. By that judgment, submitted in the language of the case after the hearing, the tribunal da propriedade intelectual de Lisboa dismissed the intervener’s application for a declaration of invalidity in respect of the word mark GATEWIT, registered by the applicant in Portugal under No 484 007, on the ground that the condition laid down by Article 245(1)(c) of the código da propriedade industrial that the marks at issue had to be so similar that consumers would be unable to distinguish them unless they examined or compared them carefully had not been met in relation to the earlier trade mark. The intervener maintains that the applicant is not entitled to invoke that judgment, in so far as, according to case-law, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it. EUIPO contends that the applicant may invoke the judgment of the tribunal da propriedade intelectual de Lisboa only in support of the pleas alleging infringement of Regulation No 207/2009. It is apparent from the case-law that national judicial decisions, even when they have not been relied on in the procedure before EUIPO, have been declared admissible (see judgment of 1 February 2012, Carrols v OHIM — Gambettola (Pollo Tropical CHICKEN ON THE GRILL) , T‑291/09, EU:T:2012:39, paragraph 34 and the case-law cited). As was held in paragraph 71 of the judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT) (T‑277/04, EU:T:2006:202), neither the parties nor the Court itself can be prevented from drawing on national or international case-law for the purposes of interpreting EU law. It follows that a party must be given the opportunity of referring to national judicial decisions for the first time before the Court, given that the Board of Appeal is being criticised, not for failing to take account of elements of fact set out in a specific national decision, but for infringing Regulation No 207/2009, and that case-law is being invoked in support of that plea. In the present case, as is apparent from paragraph 32 below, the applicant is invoking, in support of the present action, pleas in law alleging infringement of Regulation No 207/2009. Consequently, the applicant is entitled to invoke the judgment of the tribunal da propriedade intelectual de Lisboa. Substance The applicant puts forward two pleas in law in support of the present action. The first alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The second alleges infringement of Article 8(4) of that regulation. In the first plea in law, the applicant submits that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by incorrectly finding in the contested decision that there was a likelihood of confusion between the marks at issue. EUIPO and the intervener dispute the applicant’s arguments and contend that the first plea in law should be rejected as, in essence, unfounded. It should be borne in mind that 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 must not be registered if, because of its identity with, or similarity to, an 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. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). Relevant public In paragraph 15 of the contested decision, the Board of Appeal found that, in so far as the earlier right was an EU trade mark, the relevant territory for the purposes of assessing the likelihood of confusion was the European Union. Besides the fact that that finding is not criticised by the parties, it is consistent with case-law: under Article 8(1)(b) of Regulation No 207/2009, the existence of a likelihood of confusion resulting from the similarity, on the one hand, between the trade mark in the application for registration and an earlier trade mark and, on the other hand, between the goods or services covered by the trade marks, must be assessed on the part of the public in the territory in which the earlier trade mark is protected (judgments of 26 April 2007, Alcon v OHIM , C‑412/05 P, EU:C:2007:252 , paragraph 51, and of 13 September 2007, Il Ponte Finanziaria v OHIM , C‑234/06 P, EU:C:2007:514 , paragraph 60). Therefore, the Board of Appeal’s assessment that the relevant territory is the European Union must be endorsed. In paragraph 17 of the contested decision, the Board of Appeal also found, regarding the relevant public, that ‘the ... services at issue [were] directed at both the public at large and professionals in the computer sector’. It considered that, ‘for the purposes of a global assessment of the marks, the average consumer of the category of ... services [was] deemed to be reasonably well informed and reasonably observant and circumspect’ and that, ‘with respect to the ... services aimed at professionals, their awareness and attention [would] be higher’. The applicant submits that, in making that finding, the Board of Appeal failed to take account of the fact that, as shown by the documents produced in the proceedings before EUIPO, both the applicant and the intervener marketed and supplied only services aimed at a professional public specialising in computing, which had a very high level of attention. EUIPO and the intervener dispute the applicant’s arguments. Where the marks at issue are registered or registration of those marks is sought in respect of different goods or services, the Board of Appeal is required to identify the consumers who, in the relevant territory, are likely to use each of those goods or services. In addition, according to case-law, the relevant public for the purposes of assessing whether there is a likelihood of confusion is composed solely of consumers likely to use both the goods or services covered by the earlier trade mark and those covered by the mark in respect of which registration is sought (see, to that effect, judgments of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ) , T‑328/05, not published, EU:T:2008:238, paragraph 23, and of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata) , T‑270/09, not published, EU:T:2010:419, paragraph 28). Moreover, in the global assessment of the likelihood of confusion, account should be taken, within each identified consumer group, of the average consumer of the goods or services in question, who is deemed to be 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 goods or services in question (see, to that effect, judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). Lastly, the global assessment of the likelihood of confusion must be carried out having regard to the average consumer who has the lowest level of attention (see, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO) , T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited). As a preliminary point, it should be observed that, in accordance with the case-law cited in paragraph 45 above, only the services referred to in paragraph 61 below (‘the services concerned’) were taken into account by the Board of Appeal for the purposes of assessing whether there was a likelihood of confusion, so that it is not appropriate, in the present case, for the Court to concern itself with the ‘computer programs and software’ in Class 9, the ‘telecommunications’ in Class 38, or the ‘updating of computer software’ and ‘maintenance of computer software’ in Class 42 covered by the earlier trade mark. Furthermore, it should be borne in mind that, in opposition proceedings, EUIPO may take account only of the list of goods or services as set out in the trade mark application, subject to any amendments made to that list in accordance with Article 43 of Regulation No 207/2009. Consequently, the applicant not having amended the list of services covered by its trade mark application, its assertions relating to the specific services in respect of which it has used or intends to use the mark applied for are irrelevant in the present case (judgments of 24 January 2013, Yordanov v OHIM — Distribuidora comercial del frio (DISCO DESIGNER) , T‑189/11, not published, EU:T:2013:34, paragraph 43, and of 15 March 2016, Nezi v OHIM — Etam (E) , T‑645/13, not published, EU:T:2016:145 , paragraph 77). That having been observed, regardless of the specific complaints raised by the parties, the Court may always examine any question which, like the definition of the relevant public, forms part of the global analysis of whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Where it is called upon to assess the legality of a decision of one of the Boards of Appeal of EUIPO, the Court may not be bound by an incorrect assessment of the facts by that Board, inasmuch as that assessment is part of the findings whose legality is being disputed before it (judgment of 18 December 2008, Les Éditions Albert René v OHIM , C‑16/06 P, EU:C:2008:739 , paragraph 48). In the present case, the Board of Appeal was fully entitled to note, in paragraph 17 of the contested decision, that the services concerned were directed at both the general public and professionals specialising in computing. Within the European Union, computer hardware (computers, tablets, smartphones, and so on) and computer products (software and so on) correspond, for the most part, to standardised goods that are easy to use, are not highly technical, and are widely distributed in all types of stores at affordable prices. To that extent, they are everyday consumer goods intended for the general public (see, to that effect, judgments of 26 June 2008, SHS Polar Sistemas Informáticos v OHIM — Polaris Software Lab (POLARIS) , T‑79/07, not published, EU:T:2008:230, paragraph 27, and of 5 December 2013, Grebenshikova v OHIM — Volvo Trademark (SOLVO) , T‑394/10, not published, EU:T:2013:627, paragraph 19). Similarly, following or in connection with the purchase of everyday consumer computer hardware and products, it is often the case that computer consultancy services are provided to the general public. Consequently, regarding the ‘consultancy in the field of computer hardware’ in Class 42 covered by the mark applied for and the ‘consultancy in the field of computer hardware and software’ in Class 42 covered by the earlier trade mark, the Board of Appeal was fully entitled to find, in paragraph 17 of the contested decision, that those services were also aimed at the general public. In addition, the Board of Appeal was fully entitled, in the light of the case-law cited in paragraphs 46 and 47 above, to take into account, in that paragraph, the level of attention of the average consumer within the general public and to consider, in essence, that it had no reason to find that that consumer’s level of attention would be higher than normal. Regarding the ‘design of computer systems’, ‘creation and maintenance of websites, for others’, ‘research and development (for others)’ and ‘computer software design’ in Class 42 covered by the mark applied for, and the ‘computer programming’, ‘computer system design’, ‘research and development for others’ and ‘computer software design’ in Class 42 covered by the earlier trade mark, it must be pointed out that, when a consumer does not purchase an already commercially-available standard product, but turns to a supplier specialising in the design, creation, research and development of computer programmes, he is looking to obtain a product corresponding to a specific need, which involves significant interaction with the supplier and which is, consequently, more technical and more expensive than a standard product. Those services are most often aimed at specialists and dealers whose degree of attentiveness is generally high (see, to that effect, judgment of 12 February 2015, Klaes v OHIM — Klaes Kunststoffe (Klaes) , T‑453/13, not published, EU:T:2015:98 , paragraphs 3 and 24). Nonetheless, occasionally some consumers from the general public may from time to time make use of computer design and programming services. However, in such a situation, their degree of attentiveness will be higher than normal, because those are specialised services, which are not purchased every day and represent a significant financial investment. Consequently, the Board of Appeal erred in finding, in paragraph 17 of the contested decision, that the average consumer within the general public does not have a higher than normal level of attention in respect of computer design and programming services. However, EUIPO contends in essence, in its pleadings, that the conclusion drawn by the Board of Appeal in paragraph 37 of the contested decision regarding the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was also valid as regards consumers having a higher than normal level of attention, so that the contested decision would also cover situations in which the relevant public for the services concerned was composed of such consumers. In that regard, it should be borne in mind that, in paragraph 36 of the contested decision, the Board of Appeal found that ‘[the] finding [that the relevant public was likely to confuse the marks at issue] [was] not affected by the fact that the relevant public [had] a high [level] of attention’. That sentence can be understood as meaning that the Board of Appeal found that there was also a likelihood of confusion for consumers of the services concerned having a higher than normal level of attention. The error noted in paragraph 55 above had, therefore, no effect on the merits of the contested decision as regards the level of attention of the public taken into account for the purposes of assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, inasmuch as the Board of Appeal verified that there was such a likelihood, in respect of computer design and programming services, for consumers having a higher than normal level of attention. It is therefore appropriate to continue with the examination of the first plea in law. Comparison of the services concerned According to settled case-law, in the assessment of the similarity of the goods or services at issue, 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, 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 (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, EU:T:2007:219 , paragraph 37 and the case-law cited). In paragraphs 28 and 29 of the contested decision, the Board of Appeal, indicating that it was endorsing the findings of the Opposition Division, held only that services in Class 42 covered by the mark applied for were identical to certain services in that class covered by the earlier trade mark, namely: (i) the ‘design of computer systems’ covered by the mark applied for and the ‘computer system design’ covered by the earlier trade mark; (ii) the ‘creation and maintenance of websites, for others’ covered by the mark applied for and the ‘computer programming’ covered by the earlier trade mark; and (iii) the ‘computer software design’, ‘research and development (for others)’ and ‘consultancy in the field of computer hardware’ covered by the mark applied for and the ‘computer software design’, ‘updating of computer software’, ‘maintenance of computer software’, ‘research and development for others’ and ‘consultancy in the field of computer hardware and software’ covered by the earlier trade mark. Those findings of the Board of Appeal must be endorsed. Besides the fact that, as EUIPO and the intervener correctly contend, those findings are not, as such, criticised by the applicant, they are free from any error of law in so far as the services concerned are effectively identical or must be regarded as such because the first set is included in a more general category formed by the second set (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’s BABY-PROP) , T‑133/05, EU:T:2006:247 , paragraph 29 and the case-law cited). Comparison of the marks at issue The global assessment of the likelihood of confusion must, so 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 elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). Assessment of the similarity of two marks means more than taking just one component of a composite trade mark and comparing it to another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 42, and of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, have a concrete meaning or which resemble words known to him (see, to that effect, judgments of 13 February 2007, RESPICUR , T‑256/04, EU:T:2007:46 , paragraph 57; of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle (ATURION) , T‑146/06, not published, EU:T:2008:33, paragraph 58; and of 11 June 2014, Klingel v OHIM — Develey (JUNGBORN) , T‑401/12, not published, EU:T:2014:507, paragraph 35). As a general rule, a fanciful word will be more likely to attract the public’s attention (see, to that effect, judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261 , paragraph 43). In addition, the public will not generally regard a descriptive element forming part of a composite trade mark as the distinctive and dominant element of the overall impression conveyed by that mark (judgment of 3 July 2003, Alejandro v OHIM — Anheuser-Busch (BUDMEN) , T‑129/01, EU:T:2003:184, paragraph 53). In the present case, in paragraph 26 of the contested decision the Board of Appeal considered that, despite certain visual and phonetic dissimilarities, the marks at issue were globally similar, due to their common distinctive element ‘wit’. – Dominant or most important elements of the marks at issue In the contested decision, the Board of Appeal held, inter alia, that, in the earlier trade mark, the element ‘wit’ was dominant, because of its fanciful nature and the descriptive character of the element ‘software’ (which corresponded to a word used internationally and generally understood as designating programmes and other operating information used by a computer and, accordingly, not distinctive in relation to the services concerned), which could even be regarded as negligible for a significant proportion of the relevant public, and because the element ‘wit’ dominated the visual impression of the earlier trade mark, owing to its considerably larger size and its central position within the sign, and to the unusual font in which it was written as well. Those findings of the Board of Appeal regarding the dominant nature of the element ‘wit’ in the earlier trade mark must be endorsed. Besides the fact that they are not, as such, criticised by the applicant, they are free from any error of law. In addition, in paragraphs 23 to 25 of the contested decision, the Board of Appeal considered, in essence, that the relevant public would break the mark applied for down into two elements, namely ‘gate’ and ‘wit’, in so far as it would analyse the mark applied for as consisting of the English words ‘gate’ and ‘wit’, the first of those words being descriptive and accordingly devoid of distinctive character in relation to the services concerned since it was widely used in the field of information technology and computing. The applicant submits that the Board of Appeal erred in finding that the element ‘wit’ was the more distinctive and the more important element in the mark applied for and that the element ‘gate’, although not negligible, was of less importance within the mark, despite its position at the beginning of that mark, because of its descriptive character in relation to the services concerned. It is apparent from an online dictionary that the Board of Appeal adopted a very specific meaning of the word ‘gate’, which only consumers specialising in computing would perceive without being led to confuse the marks at issue, owing to their high level of attention and alertness. As regards the general public, as the Opposition Division correctly held, that public will not attribute any specific meaning to the element ‘gate’ in relation to the services concerned and, accordingly, will not analyse the mark applied for as being a combination of two English words. The contested decision is thus the result of an arbitrary and incorrect terminological choice made by the Board of Appeal. Lastly, the applicant submits, in essence, that the element ‘wit’ has weak inherent distinctiveness, because it is included in numerous earlier trade marks designating goods or services in Classes 9, 38 and 42. EUIPO and the intervener dispute the applicant’s arguments. In accordance with the case-law cited in paragraph 65 above, the question whether the relevant public will break down the mark applied for in such a way depends on whether those elements, or one of those elements, will, for all of that public, have a concrete meaning or resemble words known to it. First of all, none of the parties argued that the word ‘gatewit’ formed a logical unit in any language whatsoever. Next, it is not disputed by the parties that, as the Board of Appeal correctly observed in paragraph 25 of the contested decision, only consumers who have a thorough knowledge of English will be capable of perceiving the element ‘wit’ as an English word describing — according to an online dictionary — a person’s ‘natural ability to perceive and understand’ or ‘intelligence’ and, by extension, a person having that ability or intelligence. As regards the element ‘gate’, which, as the Board of Appeal correctly observed in paragraph 25 of the contested decision, designates, inter alia, in computing and according to the same online dictionary, a computer circuit with several inputs but only one output that can be activated by particular combinations of inputs, its meaning will not be understood, as the applicant correctly observes, except by consumers — either from the general public or professionals — specialising in computing, who are generally familiar with the common use of English words to describe computing goods or services (see, to that effect and by analogy, judgment of 27 November 2007, Gateway v OHIM — Fujitsu Siemens Computers (ACTIVY Media Gateway) , T‑434/05, not published, EU:T:2007:359, paragraph 38). Examination of the first plea in law should be continued, having regard to the part of the relevant public consisting of consumers — either from the general public or professionals — specialising in computing (‘the consumers specialising in computing’), which constitutes a significant and non-negligible proportion of consumers of computer consultancy services. A finding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 for those consumers alone could be sufficient, according to case-law (see, to that effect, judgments of 23 October 2002, MATRATZEN , T‑6/01, EU:T:2002:261 , paragraph 38; of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT) , T‑330/12, not published, EU:T:2014:569 , paragraph 58 and the case-law cited; and of 4 July 2014, Advance Magazine Publishers v OHIM — Montres Tudor (GLAMOUR) , T‑1/13, not published, EU:T:2014:615 , paragraph 36), to lawfully justify the contested decision. Regarding the more distinctive and more important nature of the element ‘wit’ in the mark applied for, connected with the fanciful nature of that element and the descriptive character of the element ‘gate’, it must be endorsed, in the case of the services concerned, for the consumers specialising in computing. Those consumers will be capable of perceiving the descriptive character of the element ‘gate’, which corresponds to an English word that has a specific meaning in computing. Furthermore, those consumers, even if they have a thorough knowledge of English, will not attribute any particular descriptive meaning to the element ‘wit’, in so far as that word is used, in English, only to describe the specific ability or intelligence of persons, and not of inanimate tangible or intangible objects such as those which may correspond, in English or in the field of computing, to the word ‘gate’. That is why, in the present case, the word ‘wit’ will be perceived as a fanciful word. As regards the argument alleging, in essence, that the element ‘wit’ of the mark applied for is devoid of distinctive character, owing to its purportedly widespread use on the market, that argument is based, in practice, on the reference made by the applicant to eight earlier EU trade marks and one earlier international trade mark consisting of, or containing, the element ‘wit’. Even assuming that those marks are indeed used on the EU market, it cannot be inferred that the element ‘wit’ which they consist of or contain is widespread in that territory, the number nine being low in relation to the size of that market. In addition, it should be borne in mind that the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market concerned and not its having been entered in registers. However, the applicant has not provided evidence of the actual presence on the EU market of the earlier trade marks which it is invoking (see, to that effect and by analogy, judgment of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer) , T‑498/10, not published, EU:T:2013:117, paragraph 77). The present argument must therefore be rejected. Consequently, it should be noted that the Board of Appeal’s finding that the element ‘wit’ is the more distinctive and the more important element of the mark applied for, because of that element’s fanciful nature and the descriptive character of the element ‘gate’, is correct so far as the consumers specialising in computing are concerned. – Visual similarity Visually, the Board of Appeal held, in paragraph 22 of the contested decision, that the element ‘wit’ was dominant in the earlier trade mark because of the central position occupied by that element within the sign, its unusual font and its being considerably larger than the other element of that sign, ‘software’, which was, moreover, descriptive of the services concerned and, as such, weakly distinctive. Having regard to the fact that the marks at issue shared the letters of their common element ‘wit’, but differed owing to the particular stylisation of that element in the earlier trade mark and their additional elements ‘software’ or ‘gate’, the Board of Appeal concluded, in paragraph 23 of the contested decision, that they were visually similar to a low degree. The applicant submits that the Board of Appeal erred in considering that the marks at issue were visually similar to a low degree, whereas, as the Opposition Division had correctly held, there was no such similarity between them. The fact that the marks at issue share the element ‘wit’ is not decisive. Indeed, in the earlier trade mark, the highly stylised nature of the element ‘wit’ gives that element a visually dominant character, whereas, in the mark applied for, as the Opposition Division correctly observed and in accordance with case-law, the fact that the element ‘gate’ occupies the initial position in that mark means that it attracts more attention from consumers and, accordingly, is more important visually than the element ‘wit’, which occupies the second position. EUIPO and the intervener dispute the applicant’s arguments. In that regard, it should be considered that the consumers specialising in computing will perceive the marks at issue as being similar, having regard to the fact that they will break the mark applied for down into two elements, ‘gate’ and ‘wit’, and will focus their attention on the second of those elements, in view of its fanciful nature in relation to the services concerned and the descriptive character which the first of those elements will have for them (see paragraphs 66 and 73 above), so that they will mainly compare the element ‘wit’ of the mark applied for with the dominant element ‘wit’ of the earlier trade mark (see paragraph 69 above). As far as the consumers specialising in computing are concerned, the fact that the element ‘gate’ is placed at the beginning of the mark applied for and the element ‘wit’ is placed at the end of that mark will not therefore have the result, as in the other circumstances invoked by the applicant, that those consumers will ascribe more importance visually to the element ‘gate’. Moreover, although, as the applicant submits, the element ‘wit’ of the earlier trade mark is highly stylised, that does not affect the identification within that mark of the letters ‘w’, ‘i’, and ‘t’, which are properly aligned from left to right. Accordingly, as EUIPO correctly observes, the element ‘wit’ remains perfectly legible and visually identifiable within the earlier trade mark in spite of that stylisation, so that it will be possible to compare it, as such, to the element ‘wit’ of the mark applied for. Having regard to the foregoing, it must be held that, in relation to the consumers specialising in computing, there will be a normal degree, which will thus be higher than the ‘low degree’ found by the Board of Appeal in paragraph 23 of the contested decision, of visual similarity between the marks at issue. That error by the Board of Appeal cannot, however, justify annulment of the contested decision, in so far as it does not call in question the merits of that decision. – Phonetic similarity Phonetically, the Board of Appeal held, in paragraph 24 of the contested decision, that the identical pronunciation of the letters of their common element ‘wit’, which was the distinctive and dominant element of the earlier trade mark, and the fact that, having regard to its descriptive character, the additional element ‘software’ of that earlier mark might often be omitted by the relevant public were sufficient for it to be concluded that there was a phonetic similarity between the marks at issue, even though their additional elements ‘software’ or ‘gate’ were pronounced differently. The applicant submits that the Board of Appeal erred in holding that, in so far as the marks at issue shared the element ‘wit’, they were phonetically similar, when there was no such similarity between them. First, when they are pronounced in English, the marks at issue differ in terms of tonic accent, rhythm and musicality. Second, as the Opposition Division correctly observed and in accordance with case-law, the elements placed at the beginning of the marks at issue are more important phonetically than the elements that follow them. The elements ‘wit’, in the earlier trade mark, and ‘gate’, in the mark applied for, are not phonetically similar. EUIPO and the intervener dispute the applicant’s arguments. In the present case, the pronunciation of the element ‘wit’, included in both of the marks at issue, is the same, although, for the consumers specialising in computing, that element will be perceived as being the more distinctive and important element in those marks and, similarly, as being the dominant element in the earlier trade mark (see paragraph 69 above), which will, most often, be the only element taken into account by the consumers specialising in computing. As far as those consumers are concerned, and as EUIPO correctly observes, the fact that the element ‘gate’ is placed at the beginning of the mark applied for and the element ‘wit’ is placed at the end of that mark will not therefore have the result, as in the other circumstances invoked by the applicant, that consumers will ascribe more importance phonetically to the element ‘gate’. Consequently, the Board of Appeal was fully entitled to find, in paragraph 24 of the contested decision, that the marks at issue were phonetically similar. – Conceptual similarity Conceptually, the Board of Appeal found, in paragraph 25 of the contested decision, that the marks were similar, owing to their common distinctive element ‘wit’ which, although it might be understood by consumers having sufficient knowledge of English as meaning a ‘natural ability to perceive and understand’, could not be ascribed any particular meaning in relation to the services concerned, whereas the additional elements ‘software’ or ‘gate’ of the marks at issue would be perceived by a substantial proportion of the relevant public — including non-English-speakers — as being descriptive of those services. In computing, the word ‘software’ refers to computer programmes, while the word ‘gate’ is used to designate a computer circuit with several inputs but only one output that can be activated by particular combinations of inputs. The applicant submits that the Board of Appeal erred in holding that, in so far as the marks at issue shared the element ‘wit’, they were conceptually similar, whereas they referred to radically different concepts. While the earlier trade mark has a specific meaning in English, that is not the case for the mark applied for, which does not have any directly evocative meaning in relation to the services concerned and will therefore be perceived by the relevant public as being purely fanciful. It claims, but does not provide any further explanation, that the earlier trade mark has a specific meaning in English, whereas the mark applied for has no directly evocative content and is thus purely fanciful. EUIPO and the intervener dispute the applicant’s arguments. In that regard and as has already been observed in paragraph 73 above, it should be noted that the consumers specialising in computing will be able to understand the technical meaning of the word ‘gate’ in the field of computing and, more specifically, will perceive it as referring to a computer circuit with several inputs but only one output that can be activated by particular combinations of inputs or, at least, as a word describing a device or a technical function used in the field of information technology and computing. That means that, according to the case-law cited in paragraph 65 above, the consumers specialising in computing will break the mark applied for down into two elements, namely ‘gate’ and ‘wit’, which they will essentially compare with the dominant element ‘wit’ of the earlier trade mark (see paragraph 69 above). It also means that those consumers will conceptually perceive the element ‘gate’ as descriptive of the services concerned. By contrast, as has also been observed in paragraph 73 above, even assuming that some consumers having a thorough knowledge of English among the consumers specialising in computing are aware of the meaning of the word ‘wit’ in English, they will be unable to attribute a specific meaning to it in relation to the services concerned (see paragraph 75 above). Accordingly, the element ‘wit’ will be conceptually perceived by all the consumers specialising in computing as fanciful. It must therefore be concluded that the consumers specialising in computing will not associate the element ‘wit’ common to the marks at issue with any particular concept, so that the conceptual comparison will remain neutral since that term will not, for them, refer to any particular concept (see, to that effect and by analogy, judgment of 2 February 2016, Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris v OHIM — Vicente Gandía Pla (ILLIRIA) , T‑541/14, not published, EU:T:2016:51 , paragraphs 40 and 41). Consequently, it should be noted that the Board of Appeal erred in finding, in paragraph 25 of the contested decision, that the marks at issue were conceptually similar, in particular for the consumers specialising in computing, owing to the fact that they share the element ‘wit’. That being said, having regard to the visual and phonetic similarity of the marks at issue as a result of their common distinctive element ‘wit’, which is in no way offset by any conceptual dissimilarity, the Board of Appeal was fully entitled to conclude, in paragraph 26 of the contested decision, that there was a similarity between those marks, in particular for the consumers specialising in computing. It is therefore appropriate to continue with the examination of the first plea in law. Likelihood of confusion In paragraphs 36 and 37 of the contested decision, the Board of Appeal inferred from the identity or the similarity of the services concerned and the global similarity of the marks at issue that the differences between those marks were not sufficient to remove the likelihood that the relevant public might believe that those services came from the same undertaking or from economically-linked undertakings, particularly if account were taken of the fact that the consumers only rarely had the opportunity to compare the marks side by side, relying instead on the imperfect recollection of those marks that they had kept in their minds. It observed that that finding was not affected by the fact that the relevant public had a high degree of attentiveness. In its view, it was therefore likely that the relevant public would believe that the applicant’s computing services constitute a new variant of the services offered by the intervener, so that there was, in the present case, a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009. The applicant submits that the Board of Appeal’s finding that, despite certain visual and phonetic dissimilarities, the signs at issue are globally similar, due to their common distinctive element ‘wit’, is based on an incorrect analysis. According to the applicant, the fact that several EU trade marks containing, inter alia, the element ‘wit’ have already been registered designating goods or services in Classes 9, 38 and 42 and have co-existed with the earlier trade mark shows that the presence of that element in trade marks is not sufficient to create a similarity between them. In addition, the lack of similarity between the marks at issue is heightened by the fact that the initial element of the mark applied for, namely the element ‘gate’, is an original element, whereas the second element of the earlier trade mark, namely the element ‘software’, is a purely descriptive element. At the hearing, the applicant also indicated generally that the judgment of the tribunal da propriedade intelectual de Lisboa confirmed that the present action, and in particular, the first plea in law, was well founded. EUIPO and the intervener dispute the applicant’s arguments. Concerning the judgment of the tribunal da propriedade intelectual de Lisboa, EUIPO and the intervener contended, in particular, that that judgment was irrelevant in the present case, in so far as it had been invoked by the applicant without having first become final, concerned an application for a declaration of invalidity of a national registered trade mark and not, as in the present case, opposition to the registration of an EU trade mark, and concerned the application and interpretation of Portuguese legislation, which differs from the provisions of Regulation No 207/2009 alleged to have been infringed in the present action. A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks at issue and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks at issue, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). In that regard, in relation to the consumers specialising in computing, the Board of Appeal was fully entitled to conclude, in accordance with the applicable case-law, that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009. Even though it must be held that, in the present case, those consumers’ level of attention will be higher than normal, it is not possible to rule out all likelihood of confusion in so far as the services at issue are identical and the marks at issue are similar and differ only in terms of weakly distinctive elements. Therefore, as the Board of Appeal correctly observed, it is likely that the consumers specialising in computing will believe that the services designated by the mark applied for constitute a new variant of those offered by the intervener. Having regard to all of those elements, and in the context of a global assessment thereof, the Board of Appeal’s conclusion that there is a likelihood of confusion between the marks at issue for all the services concerned on the part of the residual, but nonetheless significant and non-negligible for the purposes of the case-law cited in paragraph 74 above, proportion of the relevant public constituted by the consumers specialising in computing must be upheld. That conclusion is not called in question by the argument that the applicant appears to wish to draw from the co-existence of earlier trade marks consisting of, or containing, the element ‘wit’ in the territory of the European Union (see paragraph 76 above). Admittedly, the possibility cannot be entirely dismissed that, in certain cases, the co-existence of earlier marks on the market could remove the likelihood of confusion between the marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning the examination of relative grounds of refusal, the applicant for the EU trade mark duly demonstrated that such co-existence 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 earlier trade mark on which the opposition is based, in so far as that public is used to seeing the marks without confusing them, and provided that the earlier marks concerned and the marks at issue are identical (judgments of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA) , T‑31/03, EU:T:2005:169, paragraph 86, and of 20 January 2010, Nokia v OHIM — Medion (LIFE BLOG) , T‑460/07, EU:T:2010:18, paragraph 68), as regards both their verbal and figurative elements, and refer to the same goods or services (judgment of 21 February 2013, Seven for all mankind v Seven , C‑655/11 P, not published, EU:C:2013:94, paragraphs 48 and 49). In the present case, that twofold condition is not met. Besides the fact that the marks at issue are not identical to the earlier trade marks, the applicant has not established that the co-existence of the earlier trade marks which it is invoking is based upon the absence of any likelihood of confusion between those marks on the part of the relevant public. Furthermore, EUIPO and the intervener are fully entitled to maintain that the judgment of the tribunal da propriedade intelectual de Lisboa is irrelevant in the present case. Even leaving aside the fact that, at the time it was produced by the applicant, that judgment was not yet final, it should be noted that that judgment is based on an application and interpretation of Article 245(1)(c) of the código da propriedade industrial which differs from that of Article 8(1)(b) of Regulation No 207/2009. Contrary to the application and interpretation of Article 245(1)(c) of the código da propriedade industrial adopted in that judgment, Article 8(1)(b) of Regulation No 207/2009 and the case-law handed down on the basis of that provision do not require it to be established that there is such a degree of similarity between the marks at issue that consumers would be unable to distinguish them without carefully examining or comparing them. In addition, to the extent that the judgment of the tribunal da propriedade intelectual de Lisboa refers, in the context of the application and interpretation of Article 245(1)(c) of the código da propriedade industrial, to a ‘distance theory’ enabling assessment of the distinctive character of the marks at issue having regard to other earlier trade marks not identical to those marks without researching whether those marks were in fact present on the market or whether consumers were used to seeing them without confusing them, that judgment has departed from the case-law handed down in the context of the application and interpretation of Regulation No 207/2009 (see paragraphs 76 and 108 above). It follows that the solution adopted in the judgment of the tribunal da propriedade intelectual de Lisboa on the basis of Article 245(1)(c) of the código da propriedade industrial cannot be directly transposed, as the applicant suggested at the hearing, to the present case, which concerns the application and interpretation of Article 8(1)(b) of Regulation No 207/2009. Therefore, as the applicant has not provided any further explanation, it is necessary to reject the arguments which it claims to be drawing from that judgment in the present case. Since the Board of Appeal’s conclusion confirmed in paragraph 107 above is sufficient to justify the application of Article 8(1)(b) of Regulation No 207/2009 in the present case, the first plea in law, alleging infringement of that provision, must be rejected. The application of Article 8(1)(b) of Regulation No 207/2009 in the present case is sufficient to justify the contested decision, by which the Board of Appeal, first, annulled in its entirety the Opposition Division’s decision rejecting the intervener’s opposition in its entirety and, second, rejected the EU trade mark application in respect of all the services covered by the mark applied for. Consequently, the rejection of the first plea in law is sufficient to justify the dismissal of the present action as unfounded, in so far as it seeks annulment of the contested decision. Accordingly, and without it being necessary to give a ruling on the second plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009, the present action must be dismissed. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In addition, pursuant to Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. As the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO for the purposes of the present proceedings and by the intervener for the purposes of the proceedings before the Board of Appeal, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (First Chamber), hereby: 1. Dismisses the action. 2. Orders Construlink — Tecnologias de Informação, SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) for the purposes of the present proceedings and by Wit-Software, Consultoria e Software para a Internet Móvel, SA for the purposes of the proceedings before the Board of Appeal. Kanninen Pelikánová Buttigieg Delivered in open court in Luxembourg on 17 February 2017. E. Coulon H. Kanninen Registrar President Table of contents Background to the dispute Forms of order sought Law Admissibility of the third head of claim, requesting the Court to consider the trade mark application fully sustained Admissibility of the judgment of the tribunal da propriedade intelectual de Lisboa produced for the first time before the Court Substance Relevant public Comparison of the services concerned Comparison of the marks at issue – Dominant or most important elements of the marks at issue – Visual similarity – Phonetic similarity – Conceptual similarity Likelihood of confusion Costs * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. 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