• ALICANTE ABSTRACTS

    Software v. Goods Containing Software Are They Similar Goods?

    In today’s high-tech world, computers are everywhere. Their constant visible presence is matched only by their backroom role as the engine of countless other electronic or digital products. There are few such items today that do not incorporate computers and software in one form or another. However, even though computers and software are essential to their functioning, we do not usually refer to DVD players, telephones, stereos and the like as “computers.” Are they nonetheless similar goods?

     

    Les Éditions Albert René v OHIM (Case T-336/03)

    This issue was central to the CFI’s October decision in Les Éditions Albert René v OHIM (Case T-336/03).

    In that case, Orange A/S applied to register MOBILIX as a CTM for inter alia telecommunications products and other electronic goods. Les Éditions Albert René opposed, pleading confusing similarity to its well-known trade mark and comic strip character, OBELIX, registered as a CTM for electrical goods, computers and software in Class 9.

    At first instance, OHIM rejected the opposition, finding that the aural similarity of the marks was off-set by the visual and conceptual differences: MOBILIX suggested mobile phones, and OBELIX seemed to suggest obelisks, or the famous comic character. On appeal, however, the decision was partially annulled and the opposition upheld in respect of “signalling and teaching apparatus and instruments” and “business management and organisation consulting and assistance, consulting and assistance in connection with attending to business duties.” The CTM was granted in respect of most of the Class 9 telephony and electronics claim.

     

    The Appeal to the CFI

    On further appeal to the CFI, Les Éditions Albert René argued that the other Class 9 goods claimed by Orange A/S were similar to its earlier Class 9 goods because they included “essential constituent parts” of the earlier goods. It cited the applicant’s “digital cellular telephones,” “telephones” and “apparatus…for telecommunication” as containing the “program modules” for which its own earlier mark was protected. It added that all these goods were controlled by processors and thus by software, which was also covered by the earlier CTM. Likewise, “telephone calling cards” contained computer code and were therefore similar to “computer programs recorded on data carriers.”

    The appellant further submitted that the average consumer was likely to assume that data-processing manufacturers also supplied telecommunications services, in light of the above, and that the applicant’s Class 38 services were also similar.

     

    The CFI’s Decision

    The CFI began by observing that the average consumer of the telecommunications and electronic products in question was the average consumer of everyday electronic consumer goods, rather than the technical specialist. Confusion needed to be assessed, therefore, from the point of view of one not necessarily versed in the functioning of complex electronic products.

    Although it accepted that computers and software were integral to the functioning of most telecommunications goods, it did not accept that, from the point of view of the average consumer, these could be regarded as similar to computers. “The mere fact,” it ruled, “that a particular good is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different.”

    With specific regard to Class 38, the CFI declined to find similarity on the basis that all the services claimed were in some way connected to computers and software. It considered that so many electronic products were powered in some form or another by computers or software, that to find similarity on this basis would result in the granting of unduly broad protection. It observed that such a finding could allow trade mark registrants in respect of computers or software to exclude all subsequent use of and applications for marks for virtually any type of electronic or digital goods.

    With the exception of “leasing of computers and computer programs,” which it found were complementary to computers and software and therefore similar services, the CFI upheld the Board of Appeal’s decision.

     

    Comment

    This common-sense approach by the CFI is a welcome clarification of the law.

    The prevalence of computers and software in electronic products has long given rise to uncertainties on infringement issues, where an earlier right was protected for “computer hardware and software,” and the later goods or services were powered, in some way, by such goods. OHIM in particular lays down no requirement that registrants for such goods should specify the purpose of the software or hardware in question, and the sheer number of CTM registrations including such broad wording created scope for significant risks if all types of software and hardware were covered, and if all goods and services powered by these were to be regarded as similar.

    Whilst it was always clear that finding similarity on the mere basis that computers and software were essential to the functioning of particular goods and services would result in breathtakingly wide protection, it was always possible that a court might nonetheless grant it. Now that the CFI has laid down guidance in this area, practitioners will be able to advise with greater confidence, and trade mark users will proceed, or proceed perhaps more boldly, to develop their electronic product and service lines more freely.

    On an ancillary point, the ready availability of unfettered protection in respect of “computer software” remains an attractive feature of the CTM system for many. However, the existence of so many CTMs for this broad term still presents problems when later marks are used, or applied for, in respect of specific types of software only. Should CTM owners who use only one type of software obtain an indefinite monopoly of all types of software, entitling them to stifle the market for at least 5 years in respect of all others on the theoretical basis of a likelihood of confusion?

    The availability of non-use revocation after 5 years may allow later market entrants to prune such broad claims eventually and thereby level the field to some extent. Until use provisions apply, however, such monopolies may stand unchallengeable. There is, therefore, an argument that OHIM should itself restrict unduly broad protection that improperly stifles competition at the source, by permitting registration of broad electronic items such as “computer software” only where the function or purpose of the product is specified.