Dell, Inc (Dell) has succeeded before the General Court in opposing the registration of LEXDELL. Dell's earlier trade mark concerned, essentially, computers and related services. It prevented the registration of LEXDELL for all the goods and services sought, none of which concerned computers or IT.
An individual called Alexandra Dellmeier (the applicant), sought to register LEXDELL as a Community trade mark (CTM) for goods and services in classes 16 (paper, card and other materials), 25 (clothing; footwear and headgear), 41 (provision of training, education and instruction) and 45 (licensing of trade marks and hallmarks (legal services)).
Relying on its earlier Community figurative mark (below), Dell, Inc (Dell) opposed the registration.
Dell's mark is registered for goods and services in many classes – essentially computers and related services, but also clothing and headgear (class 25) and printed matter (class 16). Dell's opposition was founded upon Articles 8(1)(b) and (5) of the Community Trade Mark Regulation no. 207/2009.
In a decision dated 24 September 2015 T641/14, the General Court agreed with the Office for Internal Harmonisation (OHIM)'s Opposition Division and Board of Appeal that Dell's opposition should be upheld.
According to Article 8(5) of the CTM Regulation, an application for a CTM can be opposed on the basis of a pre-existing mark which has a reputation in the Community, 'provided that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark'.
The Court agreed that Dell's mark had a reputation in the Community, particularly as delineated by the Board of Appeal, in classes 9 (computer hardware), 37 (installation maintenance and repair) 40 (custom manufacture for others of computers) and 42 (technical consultancy). Survey evidence placed DELL consistently in the most valued brands category and it had a sizeable market share in the Community. The Court dismissed the applicant's appeal on this issue because she only disputed the surveys, but failed to address the other evidence.
The Court also agreed with the Board of Appeal's finding that there was visual and conceptual similarity between the marks, and a lower degree of phonetic similarity between them. The addition of the 'LEX' element did not cancel out the common element "DELL". The Board of Appeal had also reasoned that, as DELL was not a word typically associated with the world of IT, it possessed a 'normal amount' of inherent distinctiveness.
The General Court upheld the Board of Appeal's verdict that the use of LEXDELL for the services sought in classes 41 and 45 would take unfair advantage of, or be detrimental to, the distinctive character or the repute of Dell's mark. A number of factors contributed to this, including:
- the degree of closeness between 'legal services in respect of intellectual property' (part of the services applied for), on the one hand, and on the other hand the technology which forms the subject matter of the intellectual property for which Dell is known through its goods and patents;
- the word 'LEX' is often used to refer to legal services, and the relevant public might therefore understand that 'LEXDELL' referred to the legal arm of DELL.
Further, the facts that (i) the applicant succeeded in registering LEXDELL as a national trade mark in Germany in 2001, before Dell's mark was sought in 2007, and (ii) that LEXDELL was an amalgamation of the applicant's forename and surname, did not provide 'due cause'. The relevant public would be ignorant of the reasons behind the name; and the earlier national registration could not be used to circumvent the requirement of Article 8(5) of the Regulation in respect of the whole of the territory of the EU.
Article 8(1)(b) of the CTM Regulation prohibits registration of a mark where, because of similarity to an earlier mark and similarity of the goods or services covered, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected.
The Board of Appeal had ruled that the goods in classes 16 and 25 for which registration was sought were identical or similar to those protected by DELL's mark and a likelihood of confusion would result. The applicant appealed this finding, but the Court found the arguments raised to be insufficiently intelligible to exercise its power of review. It also dismissed arguments on the absence of similarity between the signs at issue for the same reasons as noted above in the context of Article 8(5).
The decision serves as a reminder that where a business has a very significant reputation, such as DELL, it may successfully object under Article 8(5) to a wide range of seemingly unrelated services. For businesses in the Tech sphere this is particularly pertinent, as technology today supports so many market sectors which until relatively recent times were considered quite disparate.