Official Journal of the European Union

C 301/25

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(Case C-416/08 P)

(2008/C 301/38)

Language of the case: English

Parties

Appellants: Apple Computer, Inc. (represented by: M. Hart, N. Kearley, Solicitors)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), TKS-Teknosoft SA

Form of order sought

The appellant claims that the Court should order that:

—The appeal by the applicant to the European Court of Justice be allowed;

—The judgment of the Court of First Instance of the European Communities (CFI) in case T-328/05 of 1 July 2008 be set aside;

—The case be referred back to the CFI; and

—The costs in the case be reserved.

Pleas in law and main arguments

1.Apple, Inc., (the applicant) has applied to register a Community Trademark for the word mark ‘QUARTZ’. Its application covers:

‘A computer operating system functionality specially intended for use by IT developers with the aim of improving and accelerating the reproduction of digital images in application programs, except products intended for the banking sector’ in Class 9.

2.TKS-Teknosoft S.A. (the ‘Opponent’) is the registered proprietor of a Community Trade Mark Registration for the figurative mark ‘QUARTZ’, which was in respect of, amongst other things:

(a) ‘packets of programs for banking’ in Class 9; and

(b) ‘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’ in Class 42.

The Opponent opposes the registration of the Applicant's QUARTZ mark on the basis that there would be a likelihood of confusion between the two marks. The Court of First Instance agreed.

The Applicant submits that the CFI erred in law because:

(a) the goods in respect of which the two marks would be registered and used are clearly different and the CFI failed to take into account those relevant differences;

(b) it did not correctly identify the relevant ‘public’ for the purposes of assessing whether confusion was likely. In particular, it did not give sufficient weight to the fact that the relevant public must logically be software specialists employed in or providing services to the banking sector; and

(c) it therefore misapplied the global appreciation test as previously set out by the European Court of Justice.

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