General Court overturns OHIM in ‘Dialdi’ CTM case

The EU’s General Court has found that Community trademarks (CTMs) for ‘Dialdi’ and ‘Aldi’ are similar “to some extent”, and overturned a previous ruling.

Italian food company Dialcos applied for ‘Dialdi’ in classes 29 and 30 to cover products for people with special dietary requirements, prompting the supermarket Aldi to oppose the mark a year later based on its existing CTM for ‘Aldi’.

The Office for Harmonization in the Internal Market (OHIM) rejected the complaint in 2010, finding that there was no likelihood of confusion between the marks due to their “manifest differences”. Aldi filed an appeal, but OHIM’s second board of appeal dismissed it in 2011.

Ruling on the case on June 25, the General Court overturned the appeal board’s decision, saying it had wrongly assessed the mark by splitting up the first four letters and the last two – which were styled differently to the first part of the word.

The relevant public – deemed to be all consumers, not just those with special dietary needs – are not necessarily “highly likely” to view the Dialdi’s first four letters as separate from the final two, the court found.

It said: “The marks at issue cannot be held to be entirely dissimilar, or even that the similarities present are entirely outweighed by the differences.”

“On account of a certain visual similarity, classified as medium... a phonetic similarity which may, at least in certain cases, prove to be even more pronounced... and in the absence of any conceptual meaning to the marks at issue taken as a whole... the General Court holds that the marks at issue, as a whole, are, to some extent, similar.”

Rob White, senior trademark attorney at law firm Avidity IP, said the court was correct to overturn the decision.

“The OHIM board wrongly dissected the trademark rather than considering the overall impression and surrounding circumstances, which included the pronunciation in certain European languages, which would lead to an increased degree of oral similarity.”

White said the OHIM appeals board is quite often inclined to follow OHIM’s original ruling unless “there are glaring errors”.

The case will return to the board of appeal, but Aldi can appeal to the Court of Justice of the EU (CJEU).

An appeal to the CJEU would be unsurprising, he added, as Aldi has previously succeeded at OHIM.

“They probably won’t give up without a fight.”

Neither, Aldi, Dialcos nor OHIM could be reached for comment.