ORDER OF THE COURT (Sixth Chamber)

10 July 2009 ([\*](#Footnote*))

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Word mark QUARTZ – Opposition by the proprietor of the Community figurative mark QUARTZ – Refusal to register – Similarity between goods – Likelihood of confusion – Appeal clearly inadmissible)

In Case C‐416/08 P,

APPEAL under Article 56 of the Statute of the Court of Justice, lodged on 18 September 2008,

**Apple Computer Inc.,** established in Cupertino, California (United States), represented by M. Hart and N. Kearley, solicitors,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

**TKS-Teknosoft SA,** established in Trélex (Switzerland),

intervener at first instance,

THE COURT (Sixth Chamber),

composed of J.‐C. Bonichot, President of the Chamber, K. Schiemann and P. Kūris (Rapporteur), Judges,

Advocate General: V. Trstenjak,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

**Order**

1        By its appeal, Apple Computer Inc. seeks to have set aside the judgment of the Court of First Instance of the European Communities
of 1 July 2008 in Case T‐328/05 *Apple**Computer* v *OHIM – TKS-Teknosoft (QUARTZ)* (‘the judgment under appeal’), by which the Court dismissed its action brought against the decision of the Fourth Board of
Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 27 April 2005 (Case R 416/2004-4)
(‘the contested decision’), relating to opposition proceedings between TKS-Teknosoft SA and the appellant.

**Legal background**

2        Article 8(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b) 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.’

**Background to the dispute**

3        On 13 December 1999, the appellant filed an application with OHIM for registration of the word sign QUARTZ in respect of a
product in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes
of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description:

‘A computer operating system functionality specifically intended for use by IT developers with the aim of improving and accelerating
the reproduction of digital images in application programs, except those products intended for the banking sector’.

4        On 18 September 2000, TKS-Teknosoft SA gave notice of opposition to registration of the mark applied for, on the basis of
the Community registration of 31 August 1998 of the figurative mark reproduced below, covering goods and services in Classes
9, 16 and 42 of the Nice Agreement:

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5        The opposition, based on Article 8(1)(b) of Regulation No 40/94, was directed at some of the goods and services covered by
the earlier mark, corresponding to the following description:

–        Class 9: ‘Packets of programs for banking’

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

6        By decision of 22 March 2004, the Opposition Division of OHIM, finding that there was a likelihood of confusion between the
marks at issue, upheld the opposition in its entirety.

7        By the contested decision, the Fourth Board of Appeal of OHIM dismissed the appeal brought by the appellant against the Opposition
Division’s decision. It held that, on account specifically of the fact that the marks at issue were almost identical and in
spite of the lesser degree of resemblance between the goods and services concerned, the origin of the goods and services covered
by the earlier mark was likely to be confused with that of the product covered by the mark applied for.

**The judgment under appeal**

8        On 26 August 2005, the appellant brought an action against the contested decision relying on two pleas in law alleging infringement
of Article 8(1)(b) of Regulation No 40/94 and infringement of the EC Treaty on the ground that TKS-Teknosoft SA had been granted
an unjustified monopoly with respect to its mark. By the judgment under appeal the Court of First Instance dismissed that
action.

9        In order to dismiss the first plea in law the Court of First Instance first of all adopted, in paragraph 24 of the judgment
under appeal, the definition of the relevant public given in the contested decision, accepting that that public was composed
of IT specialists present on the territory of the European Community. It then found, in paragraphs 34, 48 and 60 of the judgment
under appeal, that the Board of Appeal had not made an error of assessment in holding that the marks at issue are almost identical,
that there is some degree of similarity between the goods covered by those marks, and that there is a likelihood of confusion
between the marks on the part of the relevant public.

10      In paragraphs 67 and 68 of the judgment under appeal, the Court of First Instance also dismissed, as inadmissible and manifestly
unfounded, the second plea in law by which the appellant argued that the Board of Appeal had infringed the principles of the
free movement of goods and free competition by wrongly granting TKS-Teknosoft SA an unjustified monopoly in respect of the
use of its mark.

**Forms of order sought**

11      By its appeal, the appellant claims that the Court should:

–        declare the appeal admissible;

–        set aside the judgment under appeal;

–        refer the case back to the Court of First Instance, and

–        reserve the costs.

12      OHIM contends that the Court should dismiss the appeal and order the appellant to pay the costs.

**The appeal**

13      Under Article 119 of the Rules of Procedure of the Court of Justice, where an appeal is, in whole or in part, clearly inadmissible
or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate
General, by reasoned order dismiss the appeal in whole or in part.

*Arguments of the parties*

14      In support of its appeal, the appellant relies on a single plea in law, alleging that the Court of First Instance infringed
Article 8(1)(b) of Regulation No 40/94. That plea is divided into two parts.

15      By the first part, the appellant criticises the Court of First Instance for failing to take full account of the fundamental
differences between the goods covered by the marks at issue and between the markets for which those goods are intended, which
led it to err in law in its assessment of the similarity of those goods and, therefore, in its assessment of the likelihood
of confusion.

16      However, the product designated by the appellant’s mark is very different from those covered by the earlier mark, because
it is used at a different stage of the software lifecycle. While TKS-Teknosoft SA’s products are stand-alone, that is to say
installed to run as sold, the appellant’s product is incorporated in its operating system and used in the process of developing
other IT applications. Furthermore, while TKS-Teknosoft SA’s products, sold through specialist providers, target only the
financial and banking sector, the appellant’s product is distributed solely to purchasers of the Mac OS X operating system
to be incorporated into the software applications they develop. Thus, the goods compared have different functions, are used
in different industries, are sold through different distribution channels and are manifestly different in nature.

17      By its oversimplification the Court of First Instance designated the goods concerned as software, without taking into account
the criteria laid down in Case C-39/97 *Canon* [1998] ECR I-5507, and in contradiction with the analysis it had adopted in Case T‐336/03 *Editions Albert René* v *OHIM – Orange (MOBILIX)* [2005] ECR II-4667. As a result, the earlier mark was granted a monopoly over all software programs, preventing any use of
a similar mark in relation to any type of software or software-related products, notwithstanding the vast commercial differences
between the goods concerned.

18      In the second part of its plea, the appellant submits that the Court of First Instance also erred in law in failing to assess
the likelihood of confusion on the part of the relevant public as defined and, in particular, by failing to take sufficient
account of the context in which that assessment must be made, namely the banking sector. The Court of First Instance did not
take into account the high level of expertise of IT specialists who have an enhanced degree of knowledge of the various IT
products available on the market, their applications, their origins and their distribution channels, and who, generally, specialise
in one particular industry or market. Such specialists are used to distinguishing between goods which to the general public
appear similar, and could not confuse the specific goods at issue or believe that they originate from the same undertaking
or from undertakings which are economically linked.

19      Lastly, the Court of First Instance both failed to take account of all the relevant factors as set out in Case C-251/95 *SABEL* [1997] ECR I‐6191, *Canon*, and Case C-342/97 *Lloyd Schuhfabrik Meyer* [1999] ECR I‐3819, and failed to give appropriate weight to each of those factors.

20      According to OHIM, the appeal is inadmissible in so far as it relates only to questions of fact which cannot be reviewed by
the Court.

21      Alternatively, OHIM submits that the plea put forward by the appellant is unfounded. In particular, the Court of First Instance
did not make a superficial assessment of the differences between the goods concerned and took into consideration all the relevant
factors in accordance with the case-law. It took sufficient account of the high degree of knowledge that the relevant public
has of the characteristics of the goods at issue and of the high level of attention paid on the purchase of those goods.

*Findings of the Court*

22      It should be recalled that, according to Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court
of Justice, an appeal lies on points of law only. If the appeal does not raise points of law it must therefore be dismissed
as clearly inadmissible. The Court of First Instance has exclusive jurisdiction to find and appraise the relevant facts and
to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where they distort
the facts or evidence, constitute a point of law which is subject as such to review by the Court of Justice on appeal (see,
in particular, Case C-214/05 P *Rossi* v *OHIM* [2006] ECR I-7057, paragraph 26 and the case-law cited).

23      By the first part of its single plea, the appellant challenges the assessment of the Court of First Instance of the similarity
of the goods concerned.

24      In that connection, the Court of First Instance first rightly stated in paragraph 35 of the judgment under appeal, on grounds
which have not been challenged, that, according to settled case-law, in order to assess the similarity of the goods or services
concerned, all the relevant features of the relationship between those goods or services should be taken into account. Referring
to paragraph 85 in Case C-416/04 P *Sunrider* v *OHIM* [2006] ECR I-4237, and to paragraph 23 of *Canon*, it stated that those factors include, in particular, the nature, the intended purpose and the method of use of those goods
or services and whether they are in competition with each other or are complementary.

25      Going on to analyse those various factors in the case, the Court of First Instance held, in paragraph 40 of the judgment under
appeal, that the goods for which the earlier mark had been registered are ‘packets of programs’, that is to say a complete
and documented set of programs designed to be supplied to a number of users for one application or one function, while the
product covered by the mark applied for is software intended for use by IT developers with the aim of improving and accelerating
the reproduction of digital images in application programs. It then held, in paragraph 48 of the judgment under appeal, that,
even taking into account the fact that the goods concerned are neither in competition with one another nor complementary,
the similarities outweigh the differences and concluded that there exists, as the OHIM Board of Appeal had found, some degree
of similarity between those goods.

26      In order to arrive at that conclusion, the Court of First Instance observed in particular, in paragraphs 41 to 46 of the judgment
under appeal, that the goods compared are the result of programming work, they are designed to be installed in computers in
order to fulfil certain requirements and they are aimed at IT specialists working in different economic sectors which are
not necessarily very different from the point of view of information technology. It also held that the fact that the appellant
had excluded the banking sector from its trade mark application does not in any way mean that the product covered by the mark
applied for cannot also be sold or used in that sector.

27      The appellant essentially criticises the Court of First Instance for failing to take full account of the differences between
the goods at issue and, by oversimplification, designating them as software, although those goods have different functions,
are used in different industries, are sold through different distribution channels and are manifestly different in nature.
Therefore, according to the appellant, the Court of First Instance incorrectly applied the criteria laid down in *Canon*.

28      However, in the light of the foregoing, it is clear that, by all its arguments, the appellant attempts to challenge the findings
of fact, summarised in paragraphs 25 and 26 of this order, made by the Court of First Instance in its analysis of the relevant
factors in the present case in order to assess, in accordance with the case-law relied on by the appellant, the similarity
of the goods concerned.

29      Since no distortion of the facts and evidence has been alleged, moreover, it follows that the first part of the single plea
in law is clearly inadmissible.

30      By the second part of its single plea, the appellant challenges the assessment of the Court of First Instance of the likelihood
of confusion on the part of the relevant public.

31      In that connection, the Court of First Instance held, in paragraph 59 of the judgment under appeal, that the fact that the
relevant public has a high level of attention is not sufficient, given the fact that the signs at issue are almost identical
and the similarity of the goods in question, to exclude the possibility that that public might believe that the goods and
services concerned come from the same undertaking or, as the case may be, from economically-linked undertakings. It concluded
that the Board of Appeal of OHIM had not made an error of assessment in holding that there is a likelihood of confusion between
the marks at issue on the part of the relevant public.

32      In order to reach that conclusion, the Court of First Instance rightly stated in paragraph 52 of the judgment under appeal,
on grounds that have not been challenged, that, according to settled case-law, the likelihood of confusion on the part of
the public, which is defined as the risk that the public might believe that the goods or services in question come from the
same undertaking or, as the case may be, from economically-linked undertakings, must be assessed globally, taking into account
all factors relevant to the circumstances of the case. Furthermore, it recalled, in paragraph 55 of the judgment under appeal,
that, also according to settled case-law, the global assessment of the likelihood of confusion implies some interdependence
between the factors taken into account and, in particular, the similarity of the trade marks and that of the relevant goods
or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity
between the marks, and vice versa.

33      In light of all the case-law cited, the Court of First Instance, in paragraph 56 of the judgment under appeal, approved the
contested decision in so far as it found that there was a likelihood of confusion on the part of the relevant public taking
into account the fact that the signs at issue are almost identical and the lesser degree of resemblance between the goods
in question. It then rejected, in paragraphs 57 and 58 of the judgment under appeal, the appellant’s argument that the OHIM
Board of Appeal had failed to take account of the fact that the relevant public are specialists and therefore endowed with
a high level of attention, holding essentially that that public may consider the goods concerned to be part of the same category
of goods, notwithstanding their different spheres of application, and that they have the same commercial origin.

34      In criticising the Court of First Instance for failing to take account of either the high level of expertise and specialisation
of the relevant public or all the relevant factors as set out in *SABEL*, *Canon* and *Lloyd Schuhfabrik Meyer* as those factors should have been taken into account, the appellant is clearly trying to challenge the considerations of
a factual nature, summarised in paragraphs 31 to 33 of this order, set out by the Court of First Instance in the global assessment
of the likelihood of confusion which it made in accordance with the case-law relied on by the appellant.

35      Therefore, since no distortion of the facts or evidence has been alleged, the second part of the single plea in law is also
clearly inadmissible.

36      Accordingly, this appeal must be dismissed as clearly inadmissible.

**Costs**

37      Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful
party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has
applied for costs and the appellant has been unsuccessful, the appellant must be ordered to pay the costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1.      **The appeal is dismissed.**

2.      **Apple Computer Inc. shall pay the costs.**

[Signatures]

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[\*](#Footref*) Language of the case: English.