Computer maker
Gateway Inc. owns numerous trade marks incorporating the word
'Gateway' and objected to its rival's application for a
pan-European trade mark registration in 2002. The companies'
respective marks are intended to be exclusive in the IT market.
Fujitsu Siemens sells an 'ACTIVY media center' and 'ACTIVY media
player'; it does not presently use the ACTIVY Media Gateway brand,
though. Gateway Inc. is the world's third-largest PC company and
attaches its Gateway brand to a wide range of computers and
gadgets.
In 2004, the Office of Harmonisation for the Internal Market
(OHIM), Europe's trade mark registry, said there was no likelihood
of confusion between the marks. That was upheld on appeal the
following year. Gateway Inc. then took its opposition to the Court
of First Instance.
Gateway made various arguments in trying to suppress the rival
mark, including that both marks were "phonetically and
conceptually" similar. It is not the word 'ACTIVY' that catches the
consumer's attention, it argued. Many non-English speakers in
Europe would perceive that as a misspelling of 'activity' and
"therefore would not confer such distinctiveness on it in
comparison with the other elements of the mark, namely 'media' and
'gateway'. These consumers would nonetheless recognise the Gateway
mark because of its reputation, it said.
OHIM, not Fujitsu Siemens, defended the case in the Court of
First Instance.
The court said that confusion was unlikely, noting that "the
European consumer of [information technology goods and services] is
more familiar with the use of English words than the average
consumer."
From a visual point of view, 'gateway' is not an element which
stands out in the trade mark applied for, the court ruled. "By
contrast, the element 'activy', by virtue of its position at the
beginning of the trade mark applied for and by its reproduction in
capital letters, clearly stands out," it wrote. "Therefore, it
constitutes the distinctive and dominant element in the trade mark
applied for from a visual point of view."
It concluded that there was no visual similarity between the
marks. There was no phonetic similarity either, it said. Even if
some consumers read the word as a misspelling, that only serves "to
reinforce the fanciful character of the word 'activy'," it
wrote.
The court said the word 'gateway' evokes the concept of a
gateway, a term commonly used in the computing sector, deeming it
"highly descriptive" of the goods and services covered by the
mark.
The court dismissed the action and ordered Gateway to pay the
costs of OHIM.
Lindsey Wrenn, Head of Trade Marks at Pinsent Masons, the law
firm behind OUT-LAW.COM, said the case highlights the value of a
distinctive trade mark. "A well-known brand can still be difficult
to protect," she said. "Gateway's biggest rivals – Hewlett-Packard
and Dell – have brands that are much, much easier to protect."
Wrenn said the ruling is unsurprising and does not weaken trade
mark protection. "In most situations you can still stop someone
using your registered trade mark as a component of a new trade
mark," she said.
Wrenn points to a 2005 ruling from the European Court of Justice
(ECJ) in a dispute between rival tech firms Medion and Thomson.
Germany's Medion owned the word mark 'Life' for electronic
entertainment goods and Thomson wanted to register the mark
'Thomson Life' in the same sector. Medion won the case – but Wrenn
distinguishes that ruling from Gateway's circumstances.
"The registered mark Life was ruled to be 'of normal
distinctiveness' for the goods in question," said Wrenn. "That was
an important factor. Had it been a more descriptive mark, such as
Gateway, the decision may well have gone the other way."
Wrenn said the Gateway mark has "low descriptiveness" because it
alludes to the products, albeit still eligible for
registration.
"The addition of a company name or another mark to a registered
trade mark of average distinctiveness will not avoid the composite
mark being deemed confusingly similar to the registered mark," she
said. "But as Gateway has discovered, that situation can change
where the registered mark has low distinctiveness."
"When your brand is a generic or descriptive word, protection is
always an uphill struggle," she said. "When you're choosing a
brand, you should always go for something distinctive."
