Case C-57/08 P: Appeal brought on 13 February 2008 by Gateway, Inc. against the judgment of the Court of First Instance (Fifth Chamber) delivered on 27 November 2007 in Case T-434/05: Gateway, Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
Date: 2008-02-13
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), electrical engineering, information technology industry, trade-mark law

C 171/12

EN

Official Journal of the European Union

5.7.2008

Article 6 of Directive 92/50 is applicable only if there are legislative,
regulatory or administrative provisions published which grant the bene-
ficiary an exclusive right concerning the subject-matter of the contract
awarded.

b) It wrongly defined the relevant public as made up of consu-
mers who only purchase computer goods and services,
rather than consumers of all the goods and services covered
by the contested specification.

(1) OJ C 235, 6.10.2007.

the judgment of

Appeal brought on 13 February 2008 by Gateway, Inc.
against
Instance
(Fifth Chamber) delivered on 27 November 2007 in Case
T-434/05: Gateway, Inc. v Office for Harmonisation in the
Internal Market (Trade Marks and Designs) (OHIM)

the Court of First

(Case C-57/08 P)

(2008/C 171/20)

Language of the case: English

Parties

Appellant: Gateway, Inc. (represented by: C. R. Jones, Solicitor)

Other parties to the proceedings: Office for Harmonisation in the
(Trade Marks and Designs), Fujitsu Siemens
Internal Market
Computers GmbH

Form of order sought

The appellant claims that the Court should:

— set aside the decision of the Court of First Instance (Fifth

Chamber) of 27 November 2007 in Case T-434/05;

— allow in its entirety the appellant's opposition to the regis-

tration of the trade mark applied for;

— order OHIM to pay the costs.

Pleas in law and main arguments

c) It wrongly held that the conflicting marks are not visually,

phonetically or conceptually similar.

d) It wrongly held that the question of similarity in respect of
two conflicting word marks should be subject to the condi-
tion that the overall visual, phonetic or conceptual impres-
sion produced by the composite word sign be dominated by
the part which is represented by the earlier mark.

e) When conduction its assessment of the similarity between
the conflicting marks it failed to give sufficient weight to the
distinctiveness of ‘gateway’ as an earlier trade mark of the
appellant's for computer goods and services within the rele-
vant target public.

f) It failed to give sufficient regard to the fact that trade marks
with a highly distinctive character, either per se or because of
the reputation they possess, enjoy greater protection than
marks with a less distinctive character.

g) It wrongly concluded that ‘gateway’ does not have an inde-

pendent distinctive role within the mark applied for.

h) It wrongly held that the likelihood of confusion should be
subject to the condition that the overall impression produced
by the composite sign be dominated by the part which is
represented by the earlier mark.

i) It failed to assess properly the likely visual, conceptual and
phonetic impact
the word ‘gateway’ would have on the
average consumer of the goods and services in issue when
incorporated as an element of the mark applied for.

Reference for a preliminary ruling from the Bundes-
lodged on 2 April 2008 — J.E. Tyson
finanzhof

Parketthandel GmbH hanse j. v Hauptzollamt Bremen

(Case C-134/08)

(2008/C 171/21)

Language of the case: German

The appellant submits that the Court of First Instance made the
following errors:

Referring court

a) The terms ‘media gateway’ and ‘gateway’ have a very specific
meaning in the IT market for particular forms of device
which convert one protocol or format to another. However,
the Court of First Instance wrongly held that when ‘gateway’
was incorporated as an element of the mark applied for it
served to designate descriptive characteristics of all the goods
or services covered by the contested specification, whereas in
fact none of the goods or services covered by the contested
mark are listed as ‘media gateways’ or ‘gateways’.

Bundesfinanzhof (Germany)

Parties to the main proceedings

Applicant: J.E. Tyson Parketthandel GmbH hanse j.

Defendant: Hauptzollamt Bremen