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General Court: LEXDELL v. DELL
In Case T‑641/14, the General court had to review the following opposition:
Ms Alexandra Dellmeier - CTM applicant
Dell, Inc.- Opponent
Class 16: ‘Paper, cardboard and goods made from these materials; printed matter; instructional and teaching material (included in class 16); printed goods, pamphlets, newspapers and periodicals (included in this class)’
Class 25: ‘Clothing, footwear, headgear, in particular men’s and women’s outer clothing, children’s outer clothing; hiking, trekking, outdoor and climbing clothing; men and women’s city and leisure shoes, etc
Class 41: ‘Providing of training, education and instruction, in particular organising, arranging and conducting of seminars, training courses and lectures, in particular on legal topics; etc;
Class 45: ‘Licensing of trademarks and hallmarks (legal services); licensing of patents, utility models, registered designs, copyright and artistic copyright, trademark rights, general personal rights, rights to a name and rights to a company name (legal services);etc’.
Class 9: ‘Computers; computer hardware; computer peripherals; etc;
Class 16: ‘Printed matter; handbooks, publications and information manuals for computers and for software; etc;
Class 25: ‘Clothing and headgear’;
Class 35: ‘Retail services in the field of computers, computer peripherals and software and printed publications; services of the operation (administrative service) and compilation of a data bank including the electronic information’;
Class 36: ‘Financial services relating to the purchase, re-purchase, sale and leasing of computers/information technology equipment and apparatus’;
Class 37: ‘Installation, maintenance and repair of computer hardware, computer peripherals and advisory and consulting services relating thereto’;
Class 38: ‘On-line document delivery via a global computer network; reception and delivery of data by means of electronic transmission; network for transmission of data and messages’;
Class 40: ‘Custom manufacture for others of computers, etc;
Class 41: ‘Providing of education and training in the field of computer hardware and computer software’
OHIM and the General Court upheld the opposition on the basis of Article 8(5) CTMR in respect of the services in Classes 41 and 45 covered by the mark applied for, with the exception of the services ‘cultural activities; book rental; film production; film rental; arranging film showings, performances of music and theatre productions; artist management; radio and television entertainment, arranging sporting competitions; rental of periodicals; language interpretation; translations; planning, arranging and conducting of press conferences and other public relations events’ in Class 41. The opposition was upheld on the basis of Article 8(1)(b) of CTMR in respect of the rental of books and periodicals in Class 41 and the goods in Classes 16 and 25 covered by the mark applied for.
First of all, there is a certain degree of visual similarity between the marks at issue in spite of the stylisation of the letter ‘e’ in the earlier mark and in spite of the element ‘lex’ in the mark applied for. Moreover, there is a low degree of phonetic similarity between the marks at issue in view of the presence of that element in the mark applied for and a partial conceptual similarity between them in so far as they contained the word ‘dell’, which means ‘small, wooded hollow’ in English. Further, the word ‘lex’ would generally be understood as meaning ‘law’ or ‘legal’, so that each of the two elements in the mark applied for has a meaning. Therefore, there is a certain degree of similarity between the marks at issue. Next, the earlier mark has a reputation in relation to the goods and services in Classes 9, 37, 40 and 42.
Moreover, the Court also rejected the additional arguments invoked by the applicant. Regarding due cause, Ms. Dellmeier claimed that she had obtained registration of that mark in Germany in 2001 for legal services and, secondly, that the mark is a combination of her name and that of her father. However, even though the applicant obtained registration of the mark applied for in a Member State, that fact cannot allow her to circumvent Article 8(5) of CTMR in respect of the whole of the territory of the EU.
Lastly, the judgment of the Hanseatisches Oberlandesgericht Hamburg (Higher Regional Court, Hamburg) of 30 May 2012, on which the applicant relied, actually prohibits the applicant from using the mark LexDell in such a way as to make the distinction between the first and second elements of that mark obvious, with the result that that judgment cannot, in any event, be used as a basis for any argument to dispute the merits of OHIM's decision.Posted by: Laetitia Lagarde @ 11.19
Tags: General Court, lexdell, dell, reputation, likelihood of confusion, legal services, computers,
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