Diesel wins EU General Court Appeal on its Mark

Diesel S.P.A (Diesel), Proprietor of the “D” logo depicted below on the left, opposed clothing brand Sprinter Megacentros Del Deporte SL’s (Sprinter) European Union Application for the “D” logo depicted on the right.

Diesel’s Registration                           Sprinter’s Application

(EU000583708)                                                      (EU011404019)

Diesel challenged Sprinter’s application on the basis that a likelihood of confusion existed between the marks, as Sprinter’s mark was similar to its registration and sought protection in classes 18 and 25 in relation to identical and highly similar goods.

The opposition was rejected by the Opposition Division of the European Union Intellectual Property Office (EUIPO). The EUIPO’s rejection was subsequently upheld by Board of Appeal on the following grounds:

  • Diesel’s mark represented the letter “D” whereas Sprinter’s mark would be perceived as a basic geometric shape. In view of this, it is unlikely that a large proportion of the relevant public would recognise the Sprinter’s mark as the letter “D”. The Board of Appeal noted that a “small” proportion of the relevant public may perceive the shape as the letter “D” but this was unlikely.
  • In view of the above, phonetic and conceptual similarity would only exist for a small proportion of the relevant public who would perceive the Applicant’s mark as the letter “D”. Phonetic and conceptual similarity would therefore not be established in respect of the remaining relevant public.
  • Visually, there were clear differences between the marks and these differences outweighed the respective marks’ similarities.
  • Diesel’s mark was considered to have a weak distinctive character in relation to the relevant goods.

Diesel appealed the Board of Appeal’s decision.

The General Court upheld Diesel’s appeal on the following basis:

  • The General Court found that Sprinter’s mark contained all the necessary features to be recognised by the relevant public as the letter “D”. Accordingly, the Board of Appeal was mistaken in only finding that a small proportion of the relevant public would perceive the mark as a letter as opposed to a geometric shape. It was therefore highly likely that the mark would be perceived as a stylised capital letter “D”.
  • The Court rebuffed the Board of Appeal’s finding that the visual differences between the marks outweighed the similar elements. The Court found that for a “non-negligible” part of the relevant public, a high degree of visual similarity existed in relation to the shape and stylisation of the marks, when considered as a whole. The Court remarked that the alleged differences outlined by the Board of Appeal required a “degree of meticulousness and effort which seems unlikely to be employed by the average consumer”.
  • In view of the above, the marks are conceptually identical, as both pertain to the same letter of the alphabet and are also deemed as phonetically identical, as they would be pronounced by a significant part of the public in the same way.
  • The Court also highlighted the relevance of the goods in question and the average consumers’ level of attention. The Court concluded that a likelihood of confusion was possible on the premise that consumers rely on imperfect recollection and do not usually have the opportunity to view marks side by side. Further, the Court noted that the size of a trade mark as applied to consumable goods such as clothing and shoes etc. is usually small in relation to the size of the product, therefore “it cannot be ruled out that consumers might experience difficulties in grasping the minor stylistic differences which may differentiate those marks”.
  • The Court found that there was a likelihood of confusion regardless of whether Diesel’s mark was regarded as having a weak distinctive character.
  • Finally, the Court stated that the purpose of Diesel’s opposition was to prevent the registration of a mark which it deemed as confusingly similar, as opposed to an attempt to unfairly monopolise the capital letter “D”.
  • The Court held that the Board of Appeal must reassess its decision and the matters outlined above as part of the opposition.

Our thoughts

We consider that the General Court’s observations in relation to Diesel’s ability to challenge marks likely to give rise to likelihood of confusion to be entirely founded, despite Sprinter’s assertions that Diesel was trying to unfairly monopolise the letter “D”. It therefore seems that regardless of the degree of distinctiveness possessed by the prior right, if marks are identical or highly similar visually, phonetically and conceptually and seek registration in relation to identical or highly similar goods, a likelihood of confusion may well exist.

It will be interesting to see how the Board of Appeal reassesses this opposition in view of the General Court’s judgement. Further updates on this opposition to follow.

If you have any questions or would like more information on opposition proceedings, please contact us at info@chapmanip.com.

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