JUDGMENT OF THE GENERAL COURT (Third Chamber)
24 September 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark LEXDELL — Earlier Community figurative mark DELL — Relative grounds for refusal — Detriment to the distinctive character or the repute of the earlier mark — Article 8(5) of Regulation (EC) No 207/2009 — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑641/14,
Alexandra Dellmeier, residing in Munich (Germany), represented initially by J. Khöber, and subsequently by H. Eckermann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Dell Inc., established in Round Rock, Texas (United States), represented by A. Renck and E. Nicolás Gómez, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 June 2014 (Case R 966/2013-2) relating to opposition proceedings between Dell, Inc., and Ms Alexandra Dellmeier,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas, President, N.J. Forwood (Rapporteur), and E. Bieliūnas, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 28 August 2014,
having regard to the response of OHIM lodged at the Court Registry on 3 December 2014,
having regard to the response of the intervener lodged at the Court Registry on 16 December 2014,
further to the hearing on 1 July 2015,
gives the following
Judgment
Background to the dispute
1        On 19 February 2009, the applicant, Ms Alexandra Dellmeier, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the word sign LEXDELL.
3        The goods and services in respect of which registration was sought are in Classes 16, 25, 41 and 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        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, children’s shoes; hiking, trekking, outdoor and climbing footwear; clothing, footwear and headgear for football, basketball, handball and volleyball; clothing for jogging, fitness training and gymnastics; clothing, footwear and headgear for tennis, squash and badminton; clothing, footwear and headgear for in-line skating, skateboarding and roller skating, and for hockey, football, baseball and boxing; clothing, footwear and headgear for cycling; clothing, footwear and headgear for equestrian sports; golf clothing, footwear and headgear; men and women’s fashion bathing clothing; underwear; lingerie; corsetry; hosiery; clothing, footwear and headgear for water sports, in particular for surfing, sailing, rowing and canoeing; clothing, footwear and headgear for alpine skiing, cross country skiing and snowboarding; clothing, footwear and headgear for ice skating and ice hockey; children’s fashion clothing; babies’ diapers of textile’;
–        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; providing of training and further training, including training in the form of correspondence courses; cultural activities; organising, arranging and conducting of exhibitions, congresses, symposiums, forum discussions, information events and private views for cultural purposes; 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; publication and edition of books, newspapers and periodicals; language interpretation; translations; planning, arranging and conducting of press conferences and other public relations events’;
–        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); legal research services; legal services; lawyer and patent lawyer services, in particular in the field of intellectual property rights; legal services from lawyers and patent lawyers; legal representation and cooperation; legal research; legal research, in particular into intellectual property matters; identity and similarity searches for trademarks, company names, patents, domain names and other protected privileges; formulation and registration of patent claims; filing and registration of intellectual property rights, trademarks, patents, registered designs, utility models, copyright, software rights, protection of plant varieties and semiconductor protection rights; preparation of contracts, in particular licence contracts; management, extension, conflict monitoring and exploitation of intellectual property rights, trademarks, patents, registered designs, utility models, copyright, software rights, protection of plant varieties and semiconductor protection rights; registration and conflict monitoring of domain names and title protection notifications; licensing of intellectual property, in particular trademarks, patents and domain names; organising and appraisal of trademarks, domain names and other intellectual property rights and copyright’.
4        On 21 July 2010, the intervener, Dell, Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. The opposition was based, inter alia, on the Community figurative mark, lodged on 9 November 2007 and registered on 4 November 2008, which is reproduced below:
5        The goods and services covered by the earlier mark on which the opposition was based were in Classes 9, 16, 25, 35, 36, 37, 38, 40, 41 and 42 of the Nice Agreement and corresponded, for each of those classes, to the following description:
–        Class 9: ‘Computers; computer hardware; computer peripherals; data processing apparatus and instruments; printers; terminals; keyboards; mouses, monitors, computer processors, modems, disc drives for hard and floppy discs; tape drives; cards and memory add-ons; memory boards, memory chips; computer software, computer programs; CD-ROM read/write drives, DVD read/write drives, optical drives, personal digital assistant (PDA) devices, digital audio players/recorders, televisions; parts and fittings for all of the aforesaid goods’;
–        Class 16: ‘Printed matter; handbooks, publications and information manuals for computers and for software; instructional and teaching material (except apparatus) related to computers; plastic, paper and cardboard materials for packaging’;
–        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, computer hardware, computer peripherals, data processing apparatus and equipment and information technology apparatus and equipment; custom manufacture for others of parts, fitting, accessories and components for computers, computer hardware, computer peripherals, data processing apparatus and equipment and information technology apparatus and equipment; information and advisory services relating to all of the aforesaid services’;
–        Class 41: ‘Providing of education and training in the field of computer hardware and computer software’;
–        Class 42: ‘Technical consultancy and aid in the field of computer hardware and computer software; providing technical advice and assistance for the operation of data processing equipment; services of the creation, design and development of a data bank including electronic information; consultancy services relating to computer hardware and computer software; leasing of computer hardware and computer software; development of computer programs; maintenance and updating of computer software; design and development of computer hardware.’
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. The opposition was based on all the goods and services covered by the earlier mark and was directed against all the goods and services applied for.
7        By decision of 28 March 2013, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation No 207/2009 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 Regulation No 207/2009 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.
8        The applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. By decision of 4 June 2014 (‘the contested decision’), the Board of Appeal of OHIM dismissed the appeal.
9        As regards the application of Article 8(5) of Regulation No 207/2009, the Board of Appeal found, first of all, that there was 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, it found that there was 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. It took the view that the word ‘lex’ would, moreover, generally be understood as meaning ‘law’ or ‘legal’, so that each of the two elements in the mark applied for has a meaning. In those circumstances, the Board of Appeal concluded that there was a certain degree of similarity between the marks at issue. Next, the Board of Appeal acknowledged that the earlier mark has a reputation in relation to the goods and services in Classes 9, 37, 40 and 42 (see paragraph 5 above), thereby confirming the Opposition Division’s assessment in that regard. Lastly, the Board of Appeal took the view that the use without due cause of the trade mark applied for would take unfair advantage of the repute of the earlier mark as regards the services in Class 41 in respect of which the Opposition Division had upheld the opposition pursuant to Article 8(5) of Regulation No 207/2009 and the services in Class 45 covered by the mark applied for.
10      As regards the application of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that there was a likelihood of confusion between the mark applied for and the earlier mark with regard to all the other goods and services covered by the mark applied for in respect of which the opposition had been upheld.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of her action, the applicant relies on two pleas in law alleging infringement of Article 8(5) and of Article 8(1)(b) of Regulation No 207/2009 respectively.
The first plea, alleging infringement of Article 8(5) of Regulation No 207/2009
14      The applicant claims that, considered as a whole, the marks at issue are not similar, having regard to the different number of letters of which they consist and the stylisation of the earlier mark. Furthermore, she submits that only a negligible percentage of the relevant public knows the meaning of the word ‘lex’. She maintains that there is no valid support for the conclusion that the relevant public will focus its attention on the word ‘dell’ in the mark applied for when the word ‘lex’ is the first element in that mark. In her view, that approach would give rise to absurd results with regard to marks that contain the word ‘dell’ as their second element.
15      It must be borne in mind that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (judgment of 12 March 2009 in Antartica v OHIM, C‑320/07 P, EU:C:2009:146, paragraph 43).
16      In that regard, it must be pointed out, in line with what the Board of Appeal stated, that, in spite of the slight stylisation of the letter ‘e’ in the earlier mark, that mark is clearly legible. It follows that the earlier mark is itself included in the mark applied for, which can be distinguished by the presence of the word ‘lex’ which constitutes its first syllable. However, the presence of that word at the beginning of the mark applied for is not capable of cancelling out the visual similarity between the marks at issue due to the presence of the word ‘dell’ in each of those marks. As OHIM and the intervener submit, considered as a whole, the mark applied for, which consists of two syllables containing three and four letters respectively, differs from the earlier mark only in its first syllable which is, moreover, shorter than its second syllable. It follows that the Board of Appeal did not err in finding, in paragraph 19 of the contested decision, that there is a certain degree of visual similarity between the marks at issue.
17      As OHIM submits, that assessment is valid irrespective of whether the relevant public attributes a meaning to the word ‘lex’. In the light of the considerations set out in paragraph 16 above, even if the relevant public did not understand that word as meaning ‘law’ and perceived it as a fanciful and distinctive word, the element ‘dell’ in the mark applied for could not, as a result, be considered to be visually negligible in the context of an overall assessment of that mark.
18      Moreover, it is apparent from paragraphs 33 and 34 of the application that, as OHIM and the intervener submit, the applicant’s arguments seek to call into question the Board of Appeal’s assessment relating to the visual comparison of the marks at issue. Consequently, the applicant does not dispute the Board of Appeal’s view, which it was correct in taking, that there is a low degree of phonetic similarity between those marks in view of their common component ‘dell’.
19      Although it is true that, as is apparent from the preceding paragraph, the applicant does not expressly call into question the Board of Appeal’s finding as to the partial conceptual similarity between the marks at issue, the fact remains that it disputes the view that the word ‘lex’ will be understood by the relevant public as meaning ‘law’. In that regard, it must be pointed out that conceptual differences can counteract visual and phonetic similarities if at least one of the marks at issue has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (judgment of 23 November 2010 in Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, ECR, EU:T:2010:476, paragraph 51). In the present case, the applicant claims precisely that the great majority of the relevant public is not able to attribute a meaning to the Latin word ‘lex’, with the result that it cannot be accepted that the presence of that word within the mark applied for is capable of counteracting the visual and phonetic similarities which the Board of Appeal correctly found to exist (see paragraphs 15 to 18 above). Moreover, it must be stated that the fact that the marks at issue have the word ‘dell’, meaning ‘small, wooded hollow’ in English, in common results in a partial conceptual similarity.
20      Lastly, no relevance attaches to the applicant’s argument that, if the marks at issue were held to be similar, a series of other marks in which the word ‘dell’ is the second element would also be held to be similar. The comparison of marks for the purposes of assessing whether they are similar is carried out on a case-by-case basis according to the specific characteristics of the marks at issue and on the basis of an overall assessment.
21      The applicant also claims that, although the earlier mark enjoys a reputation for computer hardware in Class 9, general brand surveys are not sufficient to establish that that mark has a reputation for the services in Classes 37, 40 and 42.
22      In that regard, it must be pointed out that, as is apparent from paragraphs 29 to 32 of the contested decision, the Board of Appeal based its assessment relating to the earlier mark’s reputation for the services in Classes 37, 40 and 42 on various prizes, brochures, press articles and details relating to the market shares held by the intervener. Consequently, even if the applicant’s claim that general brand surveys are not sufficient to prove the reputation of the earlier mark constituted a submission that was detailed enough to make it possible to review the legality of the contested decision, it is, in any event, based on an erroneous premiss, since the Board of Appeal based its assessment on specific evidence which the applicant does not specifically dispute.
23      Furthermore, according to the applicant, in view of the lack of similarity between the disputed goods and services, it cannot be accepted that use of the mark applied for would take unfair advantage of the earlier mark.
24      It is important to bear in mind that, as is apparent from paragraphs 37, 38, 40 and 74 of the contested decision, the Board of Appeal refused registration of the mark applied for on the basis of Article 8(5) of Regulation No 207/2009 with regard to the services in Class 41 in respect of which the opposition had been upheld and the services in Class 45 (see paragraphs 3, 7 and 9 above). In that regard, it set out, in paragraphs 39 and 48 to 55 of the contested decision, the reasons why it took the view that the mark applied for would take unfair advantage of the earlier mark. Among those reasons, it is necessary to point out the degree of closeness between legal services in respect of intellectual property, on the one hand, and the technology which forms the subject-matter of the intellectual property, for which the intervener is known through its goods and patents, on the other hand. Moreover, the Board of Appeal observed that, in view of the frequent use of the word ‘lex’ in the context of legal services, the relevant public which the services at issue have in common — as defined in paragraphs 37 and 38 of the contested decision, a definition which is not disputed by the applicant — might make a link between the services of that kind covered by the mark applied for and the reputation which the earlier mark enjoys. That public might even understand the mark applied for as alluding to legal services offered by the intervener or licensed by it.
25      In that context, the sole argument put forward by the applicant, that there is no likelihood of confusion between the marks at issue on account of the dissimilarity between computer hardware and legal services, cannot be accepted. Although the existence of a likelihood of confusion must be taken into consideration, since the existence of such a likelihood necessarily satisfies the requirement of a link between the signs at issue, the implementation of the protection introduced by Article 8(5) of Regulation No 207/2009 does not require the existence of a likelihood of confusion (see judgment of 29 March 2012 in You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, EU:T:2012:177, paragraph 59 and the case-law cited). Consequently, as the Board of Appeal’s assessments regarding the unfair advantage which would be taken by the mark applied for have not been called into question, that claim can only be rejected.
26      Lastly, the applicant invokes due cause for the use of the mark applied for since, first, she obtained registration of that mark in Germany in 2001 for legal services and, secondly, that mark is a combination of her name and that of her father.
27      However, neither of those arguments can succeed. In particular, first, 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 Regulation No 207/2009 in respect of the whole of the territory of the European Union. Next, as the Board of Appeal stated in paragraph 57 of the contested decision, the mark applied for does not reproduce the applicant’s name word for word, but only a part of that name. Lastly, as the intervener submits, the judgment of the Hanseatisches Oberlandesgericht Hamburg (Higher Regional Court, Hamburg) of 30 May 2012, on which the applicant relies, 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 the contested decision.
28      Consequently, the first plea must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
29      In support of that plea, the applicant refers to the arguments relating to the absence of similarity between the goods and services concerned and between the marks at issue, which she put forward in the context of her first plea.
30      It is sufficient to point out in that regard that, as is apparent from paragraphs 6, 8 and 9 above, the goods and services covered by the mark applied for with regard to which the opposition was upheld on the basis of Article 8(5) of Regulation No 207/2009 are not the same as those with regard to which the opposition was upheld on the basis of Article 8(1)(b) of that regulation. Furthermore, the argument that the applicant puts forward in that regard in paragraphs 45 and 46 of the application concerns the absence of similarity between the goods in Class 9 covered by the earlier mark, on the one hand, and the legal services in Class 45 covered by the mark applied for, on the other hand. However, registration of the mark applied for was refused for that type of services pursuant to Article 8(5) of Regulation No 207/2009. Consequently, inasmuch as the present plea refers to the arguments set out in the context of the first plea as regards the absence of similarity between the goods and services concerned, it is not put forward in a sufficiently precise and intelligible way to enable the Court to exercise its power of review. It must therefore be rejected as inadmissible pursuant to Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991.
31      Moreover, inasmuch as the applicant refers to the arguments put forward in the context of the first plea as regards the absence of similarity between the signs at issue, it must be held that that part of the present plea must be rejected on the grounds set out in paragraphs 15 to 20 above.
32      It follows from the foregoing considerations that the action must be dismissed in its entirety.
Costs
33      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Ms Alexandra Dellmeier to pay the costs.
Papasavvas
Forwood
Bieliūnas
Delivered in open court in Luxembourg on 24 September 2015.
[Signatures]
* Language of the case: English.