statement of grounds

sE  :

 Lovells 

Bilbao 1, 5' Piso,  03001 Alicante, Spain

Imogen.Fowler@lovells.com                     

21 October 2004    Our ref: c201.5 AR/IF

Office for Harmonization in the Internal market (OHIM) Avenida de Europa, 4   03080 Alicante.

The First Board of Appeal

Appeal No.:           R0699/2004-1

Application No.:   1 564 061

Trade Mark:           'E'  (fig.)

Applicant and Appellant:   Dell Inc.

Opponent and Respondent:  Stephan G.M. Tychon  

                       STATEMENT OF GROUNDS

We herewith submit the statement of grounds in support of the appeal filed by Dell Inc. on 21 August 2004.(comments by Tychon)

We ask the Board that the Decision No. 1998/2994 of the Trade Marks Department be annulled and the opposition be rejected as unfounded.

In its decision, the Trade Marks Department came to the conclusion that the opposing marks and the CTM application would cover partially similar goods/services and that the signs at issue were at least visually similar. The Office therefore concluded that there was a likelihood of confusion.

We do not share the view of the Trade Marks Department. There are three factors which exclude a likelihood of confusion in the present case:

*   First, the two marks at issue are figurative one-letter signs.  It has correctly been the opinion of the Boards of Appeal that one-letter marks only enjoy a limited scope of protection, in particular if they are comprised of a commonplace letter like the 'E' in the present case.  The scope of protection of those marks is most often limited to identical or almost identical reproductions for identical goods. That might well be different if the earlier mark is well-known, but the opponent has not shown any such reputation for the opposing International Registration in any country.

*   Secondly, the goods and services at issue are mostly dissimilar or only remotely similar.  We admit that in relation to some services, there mightbe a identity of the services, but for the majority of the goods and services there is no such similarity.  In particular the assessment of the Trade Marks Department in relation to the similarity of computer hardware products in class 9 and 'development and installation of computer software' (wrong quote by Dell! :'development and implementation of computer programs' is registered by Tychon) does not take into account the significant differences between those goods and services and the consumer's level of attention when choosing such products.

*   Thirdly, when considering a likelihood of confusion the Trade Marks Department incorrectly (!) comcluded that extensive use of the CTM application in the Benelux could not count for the countries comprised by the International registration (of Tychon). While the Trade Marks department was correct in saying that coexistence of the two marks on the market may well counteract a likelihood of confusion in some cases, it was incorrect to conclude the applicant did not submit evidence for countries other than the Benelux.  The applicant has shown, inter alia, Community trade mar registrations for the canted E sign which certainly extend to the EU member states covered by the International Registration.

Moreover, sales figures for the whole of Western Europe were presented and not only for the benelux. For an international company like Dell Inc. which is active in all EU member states it is obvious the canted E sign as one of its core brands (?) is used and registred Europe-wide.  The evidence submitted for the Benelux should therefore have been considered for the remaining countries too, in particular when taking into account that the material submitted also showed detailed information for The UK, Spain, France and germany too T see Enclosure 9 and 10). Nonetheless, we will herewith submit further evidence showing the extensive use of the canted E sign subject to the CTM application.

After having set forth our key arguments in support of the appeal, we would now like to comment in more detail:

1. Preliminary Remark

The Opponent repeatedly accused the applicant Dell of having copied his International Trade Mark and of committing 'Corporate Trade Mark Terror' against the Opponent.

We have already mentioned in our submission of 13 March 2003 that these allegations and comments of the Opponent are not only far fetched but also far from reality.  We appreciate that the trade marks Department specifically emphasised in its decision that those allegations and comments of the Opponent were not taken onto account when taking a decision.  However, we would again like to stress and show how unreal these allegations of the Opponent are and that rather it was the opponent who copied the famous canted E sign of the applicant and not vice versa.

We submit that this is also an important factor for the assessment of a likelihood of confusion, which is the reason why we would like to comment in more length:

The applicant, Dell Inc., is the world's largest producer (assembler?) of computer hardware products.

Dell started its business in 1984.  Ever since the trade mark DELL (fig.) has been used on Dell products, packaging and advertising material as follows: (compare the 'DELL' word-mark). This mark is registered as a Community trade mark (registration no. 83 345) and was filed on 01 april 1996.  As can be seen this mark incorporates the canted E sign which has now been filed separately with the present application.

The importance of the canted E sign as a corporate identifier of the applicant can also weel be seen when (!) looking at the trade mark portfolio of applicant.  Dell Inc. has registered and used many (confusing?) marks including the canted E sign.  We would like to refer to the following marks which all pre-date the priority date of the opposing Benelux and International Registration of the Opponent: (no graphic representations available here; please request at E@xxell.com or visit www.OAMI.eu.int ) CTM registratiom 101 394 (filed on 01 April 1996), CTM registration 1 140 193 (filed on 14 April 1999) and CTM application 1 161 769 (filed on 04 1999, later abandoned)

As can be seen, the canted E sign has always and prior to the application date of the opposing marks (?) played an important sign (role?) in the corporate branding of the applicant, either incorporated in combination marks or even (!)used alone, as in CTM registration 101 394.

We have shown how marks with the canted E sign were registered and we would like to submit the following material to also show use of those signs and others using the cabted E sign of the applicant prior to Februari 2000.  We attach as copies of internet websites of the period prior to Februari 2000. We had mentioned in our brief of 13 March 2003 that following such use the US District Court of Georgia (thanks goodness this is Europe!), in a judgement of 2001 concluded:

' Dell's 'Canted E'-Mark, in its various forms, is distinctive and famous (!) and Dell owns valid, strong and enforceable rights in its 'Canted E'-Mark'. (impressing)

We had submitted the judgement as Enclosure 7 to our brief of March 2003 and would like to again refer to this judgement which relates to the use of a canted E sign by a third party in 1998, hence effectively even prior to a time when Mr. Tychon filed the opposing marks. Following the worldwide international presence of the applicant, the same must be concluded here.

Apart from the above-mentioned use of the cabted E sign in combination marks or in a form subject to CTM registration 101 394, the applicant also started using the canted E sign alone in marketing material in 1999.  We herewith attach marketing material used in the Netherlands, the home country of the Opponent, dating back to a period prior to Februari 2000, as Enclosure @.  The material clearly shows use of the canted E sign in the following forms: (not pictured)

The same use occurred in 1999 in France, Germany, Italy, Spain and the UK as one can see from the documents attached as Enclosure 3.

In particular, we would like to draw attention to the fact that the first two websites displayed on Enclosure 3 show not only the canted E sign, but also the circular logo.  In fact, the first website (a historical copy of the Dell Germany website as at 1999) depicts the canted E sign in an identical manner to the CTM application which is the subject of this case, namely as follows: (not pictured, white E in black square)

From all the aforesaid it is very clear that it is not the Opponent who is the true owner of the canted E sign bur rather the applicant.  Moreover, the extensive use of the Dell trade marks over the last ten years all over Europe makes it obvious that the Opponent was very well aware of the applicant's use of the canted E sign.

Given all the aforesaid, it must be concluded that the canted e sign (be it in a circle or not) was coined by and originates from the applicant.  it will be associated with the applicant by the European consumer due to its extensive use on the European continent and the British Isles.

Before this background, we would now like to consider the different grounds of the Opposition:

2.   ARTICLE 8(1)(b)CTMR

According to the case law of the European Court of Justice (hereinafter ECJ) and the Court of First Instance (herinafter CFI), a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (Judgement in Case C-251/95 Sabel BV vs. Puma AG, Rudolf Dassler Sport, and Judgement of 15 January 2003 in Case T-99.01 Mystery Drinks GmbH vs. OHIM, para 30).

The global assessment of a likelihood of confusion under Article 8(1)(b) CTMR implies some interdependence between the factors taking into account, as stated in the recitals of the CTMR, in particular the similarity between the trade marks and between the goods and services.  Accordingly, a lesser degree of similarity between the goods or services may be offered by a greater degree of similarity between the marks and vice versa.  Likewise there may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive.

Therefore, according to the established practice for the assessment of likelihood of confusion the degree of distinctiveness of the earlier mark, the similarity of goods and the similarity of the signs need to be assessed.

2.1   Similarity of the Signs

In comparing signs a global appreciation of the visual, phonetic and conceptual similarity of the marks*) in question must be made.  Such appreciation must be based on the overall impression created by the marks*), bearing in mind, in particular, their distinctive and dominant components.  The ruling of Article 8(1)(b)CTMR shows 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 (see Judgement of the Court of Justice of 11 November 1997, Sabel-Puma C-251.95, paragraph 23 and Judgement of the Court of Justice C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH vs. Klijsen Handel B.V., paragraph25).

*) Tychon's earlier mark is a Internationally registred mark opposing Dell's later sign which is not registered for that reason.

To begin with, it must be taken into account that we are dealing in the present case with one-letter signs. (see above: Tychon's is a Mark)It has be recognised by the Boards of Appeal, including the First Board, that one-letter signs have in principle and without any proof of reputation -(Tychon's Mark is applied intelligence: an implicit business-method!)- a very low distinctive character and may not grant a monopoly to the letter as such. Only if the graphic elements of the one-letter signs(?) at issue are identical or almost identical and thus the overall visual impression of both signs is identical, is there a relevant similarity of the signs (see the recent decisions of the Boards in: Decision of the First Board of Appeal of 23 October 2003 in case R663/2002-1 [Kv.K] para 28; Decision of the Second Board of Appeal of 02 December 2003 in case R753/2002-2 [Dv.D], para 24 and Decision of the Second Board of Appeal of 28 May 2004 in case R999/200-2 [Lv.L], para 26).

The First Board in its Decision of 12 March 2004 in case R464/2003-1 [Tv.T], para 28 held:

"Furthermore, the Board agrees with the applicant that the marks are clearly distinguishable due to their obvious figurative differences and that the opponent is effectively claiming an exclusive right to the letter 'T'.  A single Letter, in the absence of any figurative elements, does not possess any inherent distinctiveness and must be kept available for use by all traders".

The First Board further held in its Decision of 23 October 2003 in case R663.2002-1 [Kv.K]. para 28 and 29:

"A la vista de lo precedente, el hecho de que los signos en conflicto compartan la letra 'K' no los hace similares, dado que dicha letra figura no como elemento dominante y fundamental, tal y como alega la oponente, sino como un elemento poco llamativo.

Por lo tanto, desdo un punto de vista visual, si bien existe identidad en la letra 'K' de caracter poco llamativo, los elementos figurativos en los signos en conflicto producen una impresion visual global diferente.  Mientras que la marca solicitada incluye la letra 'K' de tono oscuro que figura en un circulo de tono claro dispuesto en un cuadrado de tono oscuro, las marcas anteriores, por su parte, consisten en la letra 'K' en dos planos distintos de tonos contrastados en un circulo rayado, cortado en su parte inferior por un elemento con la apariencia de un barco en dos planos de tonos contrastados."

The Second Board in its Decision of 28 May 2004 in case R999/2002-2 [Lv.L] at para 26 said:

'The Opponent also affirms that the statement in the contested decision according to which the opposing mark is scarcely distinctive insofar as it represents yhe letter 'L' is unacceptable and unwarranted.  In this regard, the Board notes that the letters have a very low level of distinctiveness per se and in principle they may serve in trade to distinguish the goods or services of one undertaking from those of other undertakings, only whenthey are registered in a special graphic manner'. 

In other words: the holder of a trade mark containing a letter of the alphabet cannot expect to get a monopoly over such a letter, but can only claim protection over the specific graphic way in which such a letter has been registered.  This is a commonly accepted principle in trade mark law and applies to the letter 'L' in the present (?) case.

Taking the aforesaid and the Board's case law into account, the two marks (!) show clear differences sufficient to consider them dissimilar. the marks at issue look as follows: (see document under Tychon/Dell in left menue:  Tychon defeats Dell Inc. in european dispute)

The two marks (a mark and a sign!) share the letter E slanted to the left and a circle or oval surrounding it. However, all other features are different. The Trade Marks Department in its Decision correctly mentioned the various differences on page 14/15 when it said:

"The differences consist in that the contested sign (!) does not contain, unlike the earlier trade mark, a small square in the bottom left part of the oval; that the letter 'E' in the contested sign is written in slightly thicker lines, its middle line is not shorter than the upper and lower line as in the earlier trade mark and that the 'E' is slightly vertically compressed so that the lines do not meet in right angle as in the earlier trade mark; that the black and white combination of colours of which both marks (?) consist is reversed (black E on white background and vice versa); that the contested sign has an oval shape as opposed to the circular shape of the earlier trade mark".

However, the Trade Marks Department came to the wrong conclusion when it found:

"However, 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 an identical position. The marks must therefore be considered visually similar overall".

It is certainly true that the letter E slanted to the left and the circle or oval are somewhat similar. However, circles or ovals are rather common design elements of figurative marks. (see also Decisions mentioned below in which circles and ovals were considered). Moreover, an E slanted to the left is also not too common for goods and services in classes 9 and 42 as can be seen from the following CTM registrations:

CTM registration 2 231 140, 95 810, 966 671 & 1 726 900. Please check out website www.OAMI.eu.int

When only considering the two identical design elements of the marks but not the many differences between them as shown above, one would in fact grant the Opponent a monopoly to a canted E sign in a circle or oval regardless of differences in other elements of the marks.  While such monopoly could be granted if the earlier mark is well-known, itshould not be if the earlier mark does not have a reputation. (Tychon's registered Trade Mark has a natural reputation sustained by internet activity in general and the use of the two internet icons - 'E' & 'Dot' -) That has also beeen the position of the Boards of Appeal as one can see from the following three Decisions in which a similarity between the signs was denied due to even smaller differences in the design elements (and due to the lack of a reputation of the earlier mark):

Decision of the Board of Appeal of 23 October 2003 in case R663/2002-1 [Kv.K]

Decision of the Second Board of Appeal of 02 December 2003 in case R753/2002-2 [Dv.D]

Decision of the Second Board of Appeal of 28 May 2004 in case R999/2002-2 [Lv.L]

As in the decision of the First Board in case R663/220-2 [Kv.K], although both marks have a circle surrounding the letter, and the letters are stylised in a similar way (i.e. as if consisting of three round bars), the background of the present marks is different.  the Board emphasised the importance of such differences in its Decision mentioned above. Moreover, the shapes of the letter E are even moer different than the shapes of the letter K in the above-mentioned Decision.  Finally the additional Dot next to the letter E of the earlier mark gives a different impression in light of other existing registrations for a slanted E. Finally, as in the other two Decisions of the Second Board mentioned above, even smaller differences between the one-letter signs may be sufficient to render them dissimilar.  Hence, the differences in the background, the shape of the circle/oval, the shape of the slanted E, the position of the slanted E and the Dot before the E in the earlier mark should be sufficient to make the marks different and dissimilar.

In the light of the aforementioned case-law, the other CTM registrations for a canted E sign in class 9 and the described differences, a similarity between the signs(?) at issue must be denied.

2.2 Similarity of the Goods and Services

The Trade Marks Department found that between the services of the opposing registrations (?) and the following goods and services of the CTM application there was a similarity:

"data processing equipment and apparatus; computers; digital computers; computer hardware; pre-recorded memories; permanent memory units; computer software; operating software; application software and utility software; operating software, application software and utility software, and instruction manuals in electronic format, sold as a unit; computer peripherals; computer peripheral devices; computer programs; operating software; data storage apparatus and equipment; data strorage units; data storage units for use with computers; monitors; keyboards; printers; scanners; mouses; processors; coprocessors; modems; hard and floppy disk drives; tape drives; CD-ROM drives; DVD-drives; network hubs; network routers; interface cards; cards and memory add-ons; personal computer add-ons; memory boards and chips; memory boards; memory chips; sound boards; sound chips; speakers, loudspeakers, subwoofers, headsets and microphones, all for use with computers; chips; media for computers; floppy disks, hard drives, CD-ROM disks and fibre channel disk devices for computers; instructional manuals in electronic format in class 9, 

distribution of computers, computer peripherals, and parts, components, fittings and accessories for computers in class 39,

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, fittings, 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 in class 40,

computer systems consulting services;  internet consulting services; computer programming; maintenance and updating of computer software; consultancy in the field of computer software; updating of computer software; computer software design; computer systems analysis in class 42".

When considering whether or not a similarity exists between these goods and services with the services of the earlier International Registration of mr. Tychon, one needs to look at those services in detail.  for the ease of reference we show them here again:

Advertising intermediary services and public relations; distribution of advertising material; employment-finding and consulting in personnel and human resource management; temporary employment agency; compilation of statistics (statistical reports); accounting; auctions and public sales; commercial information; market canvassing; market research; market analysis; opinion polls; window dressing; business organisation, consulting and research, also in relation to mergers; design and development of business strategies, also in the framework of mergers, the above-mentioned services rendered through the internet in class 35,

Issuance of credit cards and traveller's cheques; pawn brokerage; debt collection agencies; financing services; stockbrokerage, foreign exchange market; placing shares; advisory and intermediary services in granting credit; storage and safe keeping of valuable documents and valuables in safes; real estate management; real estate brokerage and appraisal of property; mortgages; leasing; capital management; insurance; rental of property in class 36,

Telecommunications services including services of an internet access provider; news gathering in class 38,

Transportation and storage of goods; transportation of people in class 39,

Treatment of materials, recycling in class 40,

Pedagogic, educational, recreational and cultural activities, operating lotteries in class 41,

Development and implementation of computer programs; granting of licences; lobbying; management of animal and plant life; agricultural, forestry and horticultural services in class 42

We admit that the conclusion of the Trade Marks Department in relation to the identity of the services in class 39 and 40 is correct as the earlier mark covered the class-heading and futhermore also covers the specific services covered by the CTM application.

Furthermore, we accept 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.

However, for the remainder of the goods and services, in particular computer hardware products or services which are related to computer hardware, there is no similarity.

The Trade Marks Department, however, concluded that there existed (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 application.  It said at page 10/11 of the contested decision:

"The purpose of these goods and services is, from a general point of view, the same as they both serve to process data, although there is a rather minor difference in their specific purpose: processing data by means of various data processing equipment as opposed to the preparation and implementation of programs for computers". 

The Office partially agrees with the applicant's argument that the producers of computer hardware and businesses involved in the development of computer software may be different kinds of undertakings. However, regard must be had to the fact that the final product resulting from the opponent's services is computer software, be it software bought : off-the-shelf", or personalized, "tailor-made" programs.  Basic opration software is indispensable for the functioning of computer hardware, and most computers come with such programs pre-installed. In addition, many pieces of hardware also need specific programming to be able to communicate and/or interact with other computer parts or perpherals.  There is therefore a clear and strong complementary relationship between computer programming and computer hardware/perpherals, 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).  The specification of the Opponent's services is expressed in terms 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 conclude that there is a considerable degree of similarity between the goods and services concerned.

We do not share the opinion of the Trade marks Department. The Trade Marks Department incorrectly started from the wrong premise: The earlier international registration has been registered for "development and implementation of computer programs" only: it has no protection for the goods computer software or computer programs in class 9. One can also not say - as the Trade Marks Department did - that "the final product resulting from the opponent's services is computer software, be it software bought 'off-the-shelf', or personalized, 'tailor-made' programs".  That would mean that any registration for "development and implementation of computer programs" would also be a registration for "computer software". That cannot be correct, in particular as it really makes a difference whether a mark is only protected for "development and implementation of computer programs" and/or for "computer programs or computer software".  Computer software is indeed often offered at the same place in a specific computer store or a general store like computer hardware. (remember: Dell has no stores! That's what makes it 'Dell') Many computer hardware products even contain pre-installed computer software. However, whilst computer software might be offered at the same time and at the same place as computer hardware products, that is not true in relation to "development and implementation of computer programs" as those services are not offered in stores next to computer hardware. In the case of 'standard or off-the-shelf' software, such software is mostly pre-installed on the computer hardware part as mentioned by the Office.  The consumer will therefore not ask for installation of a computer program at the time of purchasing a laptop or desktop in a store. If not pre-installed, such standard software is in most cases anyway to be installed by the buyer herself or himself. (?) As regards 'tailor-made' software, such software is not purchased in stores where one can find computer hardware. (about time it does!) The same applies if a computer is bought on the internet. (the same?) Moreover, consumers asking for the development of 'tailor-made' software will usually make a very careful decision when purchasing such product and will very precisely look at the producer. They will not trust (!) the mere depiction of a one-letter-mark but rather ask for more information about its developer.  Any likelihood of confusion is then excluded (see also the Judgement of the Court of First Instance of 22 June 2004 in case T-185/02, Claude Ruiz-Picasso and others v. OHIM [PICASSO v. PICARO], para 58).

Given the aforesaid, not only are the producer of computer hardware and the developer of computer software different (as accepted by the Office), but also the point of sale is different. Moreover, if the development of 'tailor-made' computer software is required or the installation of computer software needed, such act will always happen after the computer hardware product was bought. Therefore, the goods and services will never be offered at the same time or at the same place. (sustaining this 'picture' on itself is a breach of competition rules) Given that their nature (?), their producer and their point of sale are different (not the case at Exxellland Computers!), computer hardware products and "development and implementation of computer programs" must be considered dissimilar.

The latter all the more applies to the services "custom manufacture for others of computers, etc." in class 40 of the application (by Dell) as consumers asking for 'tailor-made' software and hardware will very carefully look at the producer and will not make a decision on the basis of a mere one-letter-mark. (like .E-ware?)

2.3   LIKELIHOOD OF CONFUSION

(a)   Overall Assessment

We have seen that the trade marks at issue (Dell's sign is not a Trade mark yet!) are dissimilar and that most of the goods and services also do not share any similarities. However, even if one considers the marks to be remotely (?) similar and some of the goods also remotely similar, for the assessment of a likelihood of confusion it must be taken into account that the earlier international Registration is a one-letter-mark with a rather low distinctive character (that's why we copied it!) and a limited scope of protection. Before that background it must be concluded that the marks at issue are not confusingly similar, in particular given that the products and services at issue are usually highly-priced (no competition?) and the consumer will make a careful analysis (?) of the producers before purchasing any product or asking for any service.

(b)   Coexistence

Even if one wanted to consider the trade marks to be remotely similar and computer hardware and "development and implementation of computer programs" to also be remotely similar, any possible likelihood of confusion would be excluded in the present case by the factual coexistence(?) - and/or - more importantly - by the extensive use of the canted E sign by the applicant.

We have mentioned above the importance and extensive use of the canted E sign for the international branding of Dell products. (compare Enron's 'crooked' E) We have shown the presence of the canted E sign in Europe, in particular in the Benelux, France, Germany, Italy, Spain and the UK since 1990. The Trade Marks Department had argued that although use of the applicant's mark had been shown for some countries, in particular the Benelux, it had not been shown for the others. However, we submit that Enclosures 9 and 10 also include data and important information of the business of the applicant for e.g. the UK, Italy, Spain, France and Germany and in general for Western Europe (see in particular Dell's press-release of 18 August 1999 under "European Country Highlights"). Moreover, we had submitted registrations of the various Dell marks incorporating the canted E sign which is shown on every Dell computer and in particular its packaging.(!) The latter can be demonstrated with the picture of a Dell box attached as 'Enclosure 4' (totally balck!)

Every year millions of packages with the canted E sign are sold in the EU. (what's in it?) Over the years, the consumer has therefore become accustmed to seeing Dell's canted E sign (without permission of .E) within different combination marks (confusing its own customers!) or as subject to the contested CTM application and will (?) not confuse it with the different mark of opponent. (who is just a fly compared to us)

Whilst it is normally questionable whether some minor coexistence on a national market may have an influence on the assessment of a likelihood of confusion, we submit that in the present case due to the particular extensive and long-lasting utilisation of the canted E sign by Dell (as weel as the lack of use of the opposing marks - see the letter of 24 August 2004 of the opponent) any likelihood of confusion will be excluded. In this respect we would like to refer to the Decision of the First Board of Appeal of 12 September 2000 in case R415/1999-1 [SHIELD v.GOLDSHIELD] where the Board at para 22 at the end held:

"While the Opposition Division may have been correct in stating that coexistence between the two marks in the relevant territory is not dcisive, it is none the less highly persuasive."

We therefore conclude that there is no likelihood of confusion between the marks at issue.

3.   Article 8(5) CTRM

Article 8 (5) CTRM requires that the opponent demonstrates that the earlier registered mark had obtained a reputation at the date of filing of the application. (within two weeks?)

The opponent has not submitted any evidence which would allow the conclusion that the earlier International Registration obtained a reputation in the relavant territories.

The opposition based on Article 8(5) CTRM must therefore be rejected from the outset.

4.   Overall Conclusion

We have demonstrated that there is no likelihood of confusion between the signs and that Article 8(5) CTRM cannot be applied given the lack os a reputation of the earlier marks. the opposition must therefore be rejected and the reimbursable costs for the opposition and appeal proceedings of Euro 1.550,- (which were charged to the applicant) must be awarded to the applicant and appellant.

We therefore ask the Board to

-   annul Decision No. 1998/2004 of 21 june 2004;

-   reject Opposition No. B 471352 in its entirety;

-   award the costs of the opposition and appeal proceedings to the applicant and appellant.

Imogen Fowler