TO THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET ( TRADE MARKS AND DESIGNS)
Att. The First Board of Appeal
Avenida de Europa, 4
03080 Alicante, Spain
Observations on the appeal of Dell Inc. of October 21, 2004
Till Kolle www.hvm-law.nl
Amsterdam, february 4, 2005
Our file No. :20040145-04-TKsd
Our filename :Tychon/Dell
From :T.M. Kolle, attorney-at-law
Subject :Appeal No. R0699/2004-1
Trade Mark : ' E ' (fig)
Application No : 1 564 061
Opponent & Respondent :Stephanus G.M. Tychon
Applicant & Appellant :Dell Inc.
We herewith timely submit our final observations on the appeal filed by Dell Inc.on October 21, 2004.
We ask the Board that to reject the appeal of Dell Inc as unfounded and to and to confirm and uphold Decision No. 1998/2004 of teh Trade Mark Department.
Preliminary remarks on comparison of signs
Opponent's mark is a letter and design mark and only this mark is used to refer to the goods and services of teh opponent. This is the trade mark opponent is known by. It is therefore of great importance to him. Moreover, the opponent's trade mark is not solely a canted E sign. It is the canted E sign within a circle, in the colours black and white, with a dot before the E.
First of all, applicant's position on the canted E sign as an alleged corporate identifier is not entirely clear to the opponent. For the applicant states both that the canted E sign was coined by and originates from the applicant and she also states that the canted E sign is not uncommon for goods and services in classe 9 and 42. These arguments are rather conflicting.
The applicant gives a number of examples on how she has used the canted E sign earlier. We remark that most of the applicant's use of the canted E sign has no similarities with the contested sign. The cantedd E sign has been used by applicant in a word or three-dimensional as/in a square with a thin elliptic line around it. These examples are in no way comparable to the contested sign. Moreover, the examples of earlier use by applicant of a canted E sign are of no importance, seen as the applicant states that a canted Esign on itself is commonly used. When aforementioned is considered, there is no "famous canted E sign of the applicant". Moreover, the opponent has not copied applicant's sign; it is the applicant that has copied the trade mark of opponent!
Applicant also refers to the judgement of a US District Court. Opponent would like to remark first of all that a US judgement cannot be considered to be internationally valid. Aside from that, the judgement merely concludes on the canted E mark, not on the canted E mark as in the contested trade mark. Above all, as applicant also already stated, the use of a canted E sign is common. This judgement should therefore not be considered at all in assessing the likelihood of confusion.
With regard to goods and services, the applicant state that they are mostly dissimilar or only remotely similar.When stating accordingly the applicant clearly did not take into account how the similarity between applicannt's and opponent's goods and services is assessed.
The Trade Marks Department did not solely look at the superficial similarity. When assessing the similarity several factors are taken into account. These factors include, amongst others, whether the goods/services are in competition with each other or are complementary, in which case the goods/services are considered similar. It is also important that in the case at hand the consumer will see the the goods/services as similar.
Furthermore, the Trade Marks Department did not, unlike the applicant states, assess the similarity of computer hardware products in class 9 in relation to "development and installation of computer software." This quote is therefore false. The Trade Marks Department assessed this similarity in comparison to "development and implementation of computer programs." There is a big difference between applicant's statement and the statement of the Trade Marks Department, "Implementation of computerprograms" is broader than "installation of computer software"; it therefore implies more service and has more similarity with class 9. The applicant tries, by simplifying this statement, to avoid any pssible similarity in relation to class 9.
However, despite the arguments of applicant, the Trade Marks department assessed the similarity between the goods/services of the applicant and the opponent very carefully and extensively and has motivated her observations duly. I refer to pages 7 to 14 of Decision No. 1998/2004 by the Trade Marks Department. While the Trade Marks Department indicates clearly why there is similarity, the applicant fails to seriously specify why there is a lack of similarity, namely what the significant differences are between the goods and services accoding to the applicant.
COMPARISON OF SIGNS
As is also accepted by applicant, a one letter mark does indeed enjoy a limited scope of protection.
The opponent states however, that in the case of his trade mark, it does not concern a single letter in the absence of any figurative elements. The opponent's trade mark does have a specific grafic way. Hence the trade mark is registered. Furthermore, the opponent does not oppose the use of the letter E on itself. It is the specific graphic way of the trade mark that is the reason for the underlying dispute. the letter E can be used freely, however not, like the applicant wrongly did, in the manner and graphic of opponent's trade mark Ther cannot be any doubt or discussion as to the distinctiveness and the registration of the opponent's trade mark.
Hence, the opponent states that the subject of dispute is not the use of the letter E or of a canted sign, unlike the applicant tries to suggest, but the use of the canted E sign in similar colours and form. The applicant repeats the minor differences that are mentioned by the Trade Marks Department that allegedly make the applicant's contested sign differ from the opponent's trade mark. The Trade Marks Department in its decision, however, stated correctly when said:
"Both marks are figurative and are represented in black and white. Visually, the marks have a very similar overall appearance and a number of minor differences. Their overall impression is based on their similar circle/oval shape and the dominant letter 'E' inside the circle/oval which is in both cases unusually rotated anti-clockwise."
Moreover the Trade Marks Department concluded correctly when statind that:
"[...] these individual minor differences do not detract from the overall visual similarity of the marks. This results from the quite similar overall impression of the marks which is, as mentioned above, based on the similar shape and an identical letter in anidentical position. The marks must therefore be considered visually similar overall."
The applicant confirms on page 5 that "the perception of the marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion." In that respect the Trade Marks Department denotes that at the level of consumer recollection:
"[...] both marks will be basically remembered as a black and white inclined E in a circle/oval. [...] the marks must be considered as similar because their overall impression resides in the same or very similar distnctive components and the individual differences are of such nature that they cannot change the similar overall impression of the marks."
It is clear - also to applicant - that the differences between opponent's trade mark and applicant's sign are neglibible.
The applicant tries also, by giving a number of examples of a canted E sign, to give the impression that this sign is often used and that therefore the minor differences are of importance when assessing any similarity. This is nonsens. The examples applicant gives, are use of a canted E sign in combination with e word and/or with another sign. There is no similarity whatsoever with the opponent's trade mark or with applicant's sign.
Moreover, the given that the E sign is canted, is not the only similarity between the opponent's trade mark and the applicant's contested sign. The contested sign is overall similar to the opponent's earlier trade mark due to the combination of all the factors of the sign.
Furthermore, the trade mark of the opponent is the only sign his business is known by. The opponent does have a reputation. This reputation is linked to his trade mark. This trade mark is therefore of great importance to him, his business and his business reputation.
With reference to the three decisions that the applicant gives, the opponent remarks as follows. Two of the three dicisions are in Spanish and not in the language of the proceedings and should therefore not be taken into account. The opponent nevertheless understood the tenor of these decisions and will comment on them accordingly.
First of all, the decision of the Second Board of Appeal of May the 28th of 2004 in the case R999/2002-2 (L.v L.), is not comparable to the underlying case. The Board considered that there was visual dissimilarity seen as one of the signs could also be interpreted as a fancyful device and not solely as a letter L. The applicant must also recognise that these signs do not look similar. With respect to the opponent's trade mark and applicant's contested sign, there is no other way as to perceive the E.
In the decision of the Second Board of a Appeal of December the 2nd of 2003 in the case R753/2002-2, it was decided that the products of the applicant and opponent were offered on different markets, were not in competition, and were not even intended for the same public. This is again not comparable to the case at hand. For on the underlying case it does concern the same market, the same public and complementary products/services, that can also be considered competitive. This subject is more elaborated on under the heading "comparison of goods/services."
In the decision of the First Board of Appeal of October the 23th of 2003 in the case R663.2002-1 (K.v K.) the trade marks are offered on different markets. The board decided that the goods were not competitive or complementary. Furthetmore they are not distributed in the same way or in the same place. The goods do not even have the same function. When compared to this case, one must conclude that the goods/services of the opponent and the applicant are offered on the same market - this being the computer market-, they are complementary and competitive and theydo have the same function. This subject is elaborated on under the heading "comparison of goods/services."Furthermore, the differences between the signs in the decision of the First Board are not as small as the differences between the signs in the case at hand, seen as the signs in the decision of the First Board do not have an overall similar appearance.
In the light of the aforementioned and the decision of the Trade Marks Department the similarity between the applicant's contested sign and the opponent's trade mark must be affirmed.
COMPARISON OF GOODS/SERVICES
The applicant admits that "[...] the conclusion of the Trade Marks Department in relation to the identity of the services of classe 39 and 40 is correct[...]. Furthermore, [...] that some of the software related services in class 42 are similar to 'development and implementation of computer programs' covered by the International Registration in class 42."
The applicant state that for the remainder of the goods and services, in this case being those under classes 9 and 35, in particular computer hardware products or services which are related to computer hardware, there is no similarity.
The applicant more specifically only protests the Trade Mark Department's conclusion that there exists a similarity between "development and implementation of computer programs" covered by the International Registration in class 42 and the various computer hardware products and services covered by the CTM applicatio.
According to the applicant "development and implementation of computer programs" has nothing to do with the goods computer software or computer programs in class 9. The opponent states that there is no doubt as to the fact that the final product of the development and implementation of computer programs is also computer software. The applicant tries to imply a difference between software bought "off-the-shelf " and personalized "tailor-made" programs. Therefore, according to the applicant, a registration for "development and implementation of computer programs" could not be a registration for "computer software". Nevertheless, it remains unclear who, besides obviously the applicant herself, decides that there is a difference between software "off-the-shelf " and personalized "tailor-made" programs, for there is not. When registering for "development and implementation of computer programs" the opponent of course also had in mind the protection of his end product. It is nonsense to assume that one would protect the development of the goods, but not the goods themselves. This nonsensical attempt by applicant to raise confusion should not be taken into account.
Moreover, the applicant already tried to use this argument in her reaction to the opposition of the opponent. The Trade Marks Department clearly did not take this argument to be of any importance, seen as it nevertheless correctly concluded that there is "[...] a clear and strong complementary relationship between computer programming and computer hardware/peripherals, which also affects the method and time of use of the goods and services concerned (e.g. one must run software to operate a computer)."
Hence, the Trade Marks Department concluded correctly when stating that:
"The specification of the opponent's services is expressed broad enough to cover not only developing and implementation of computer software on an individual basis in order to meet the specific requirements of a particular client, but also the development and implementation of e.g. operation software or firmware. In the latter case the consumers will not be able to see a difference between the opponent's services and their final product (computer software) on one hand and the applicant's computer hardware products on the other hand. It can be concluded that there is a considerable degree of similarity between the goods and services concerned."
The relevant market where both applicant and opponent work is the "computer market." This market entails computers, computer programs, computer programming, computer software and so on. Furthemore, the consumer on this market has to be considered as an average consumer who will not have specific knowledge as to these products or will not be well informed. For in these days computers are part of every household. Hence, the consumer in need of any of these products will not make a distinction between these products and if the contested trade mark is allowed to exist, the consumer will get confused seen as both applicant and opponent work in the "computer Business" and will have more or less the same trade mark.
Moreover, there are a lot of products/services that are as expensive or even more than computer programs/services. The consumer. however, never makes an analysis of the producer but of the goods/services themslves. At that level it is of great importance that the consumer does not get confused as to the origin of these goods/services, but recognises the pruducts/services as originating from the opponent. The trade mark is therefore of great importance seen as the consumer will indeed relate (the quality of) the product/service to the trad mark it is known by. Opponent and his products will be recognised by it immediately. This important purpose of the trade mark will be harmed if the contested trade mark is allowed to exist. Now that the products show a high degree of similarity ( seen as it concerns complementary products), and the trade marks are more or less the same, the consumer will get confused.
This also applies all the more to the services "custom manufacture for others of computers", etc." in class 40.
Furthermore, seen as the applicant did not oppose any of the other Trade Marks Department conclusions on similarities between goods in its decision, it must be concluded that she agrees with these similarities.
The aforementioned makes it clear that the Trade Marks Department correctly concluded that the trade marks are overall similar, and most of the products are highly similar. As stated before, opponent's trade mark is a distinctive design mark and it is registered. Consumers will, when analysing the product/service, be lead by the trade mark of the product. it is therefore of importance that they do not then get confused as to where the product originates from.
Moreover, the opponent remarks that he does not understand why applicant goes to such length of trouble for a sign she depicts as "a mere one-letter mark". It is because the applicant does not believe it is a mere one-letter mark. The applicant is also convinced - just like the opponent - that the mark is highly distinctive in its design.
There is furthermore no possibility for coexistence seen as the mark of opponent and the contested sign of applicant are highly similar. The applicant states that confusion would be excluded in the present by the factual coexistence and/or, more importantly, by the extensive use of the canted E sign by applicant.
The opponent contests this statement. The factual coexistence has been merely for a short period of time and cannot be of importance when assessing the possibility of confusion. Furthermore, opponent did not know before applicant's attempt to register the contested sign, that it was being used by the applicant. Had he known, then he would have protested it immediately.
As to the use of the canted E sign, the applicant herself has already clarified that it is commonly used by a lot of other producers; it is therefore of no importance that she has olso used it in various countries. For there is no similarity between the canted E sign as applicant has used up till now and the contested sign, other than the fact that the E is canted!
Seen as the products of opponent and applicant are highly similar, the signs have a very similar overall impression and both applicant and opponent offer their goods/services on the internet, and therefore on the same market (the computer market) there is more than a likelihood of confusion between the marks at issue.
We therefore ask the Board to
- confirm Decision No. 1998/2004 of june 2004
- reject the registration of the contested sign which is filed under application No. 1 564 061 for the classes 9, 35, 39, 40 and 42
- rule that applicant and appellant has to compensate opponent and respondent for all costs incurred in the opposition and appeal prceeding.
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