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In July the EU General Court ruled in favour of the well-known fashion brand Diesel in a trademark case related to the company’s ‘D’ trademark, writes Elena Galletti of Brandstock.
Brandstock represented Diesel before the General Court in the case.
Background to the judgment
Diesel registered its mark with the EUIPO (then OHIM) on February, 19, 1999 in classes 18 and 25:
In 2012, Sprinter megacentros del Deporte filed a trademark in classes 18, 25 and 28 at the EUIPO.
Diesel opposed the 2012 trademark application, but both the EUIPO’s Opposition Division and then its Second Board of Appeal ruled in favour of Sprinter. The main finding was that while Diesel’s mark clearly showed a letter ‘D’, Sprinter’s mark was a “basic geometric shape”: since there were “clear visual differences” between the marks that outweighed the similarities, a likelihood of confusion was excluded.
Brandstock represented Diesel before the General Court against the Second Board’s decision.
Brandstock made preliminary arguments that Sprinter’s mark should be considered as a stylised ‘D’. Since its main features recalled the earlier Diesel mark, the existence of a likelihood of confusion could not be denied. As Brandstock claimed, the similarities among the marks were in fact greater than their differences.
In Brandstock’s opinion, as both signs resembled a similar stylisation of a ‘D’, aural and conceptual similarity had to be confirmed as well.
Brandstock further claimed that, even if Sprinter’s sign would not be considered as a stylised ‘D’, the similarity with Diesel’s prior sign should have been confirmed. Comparison of the signs would indeed show that Sprinter’s younger mark entailed the main dominant elements of Diesel’s prior one, thus confirming the existence of a likelihood of confusion among the relevant consumers.
The General Court’s decision
The General Court handed down its decision on July 20, ruling in favour of Diesel, annulling the Second Board’s decision and awarding costs against the EUIPO.
Specifically, the court agreed with Brandstock’s interpretation, confirming that Sprinters’ mark should be seen as a stylised ‘D’. The judges in fact clarified that the opposed mark showed all the main features of a ‘D’. Following this preliminary, but fundamental, assumption, the court said it was persuaded that: “there is a likelihood of confusion between the signs at issue in respect of the goods concerned” as the main features of a ‘D’ were included and similarly reproduced by the younger sign.
The court agreed with Brandstock’s submission that the shapes of the marks were similar, considering that the differences between them were “very slight stylistic differences, which are of minor importance compared with the similarities”.
The board indeed erred in its conclusions as there is an “impression of similarity” between the marks. The average consumer would have to conduct a “very detailed examination of the marks” in order to notice the differences between them. It added that in the fashion sector in particular, where marks are often small elements of the overall product, consumers “might experience difficulties” in differentiating between the marks.
The court also agreed with Brandstock’s submission of the phonetic and conceptual similarities between the marks, saying the two marks could be regarded as “phonetically identical” and “conceptually identical” since they both refer to the letter ‘D’.
Indeed, the court considered that the relevant public could be confused “either because it confuses those marks or because it associates them”. The court pointed out that this is especially relevant in the fashion industry, where marks are often displayed differently but nevertheless maintain their association with the brand.
Finally, the court also invoked Brandstock’s argument that the interest in the case was of course not to monopolise the/any letter ‘D’, which would be impossible, but simply those variations of it which resembled Diesel’s prior rights.
The court’s decision, which has not yet been appealed by Sprinter, will bring comfort to trademark owners of trademarks based on letters. They can now be confident that imitators will not be able to register marks that are confusingly similar merely by having small differences compared to the prior existing marks. Consumers will be better off too, since they will be less likely to confuse such marks and inadvertently purchase the wrong product.
Diesel was represented by the following lawyers from Brandstock: A. Gaul, M. Frank, A. Parassina and K. Dani.
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Elena Galletti, Brandstock Diesel, EU General Court, trademark, trademark infringement, Sprinter megacentros del Deporte , EUIPO, Second Board