The EU’s General Court recently ruled in a dispute over a stylised capital letter D, registered by clothing company Diesel as an EUTM since 1999. On appeal, the General Court agreed with Diesel in its opposition against a subsequent trademark application for the letter D on the grounds of likelihood of confusion.
The registration of a trademark is only the first step in the effective use of a chosen brand, company or product name. In order to ensure valuable marks are protected and enforced, trademark owners also need to monitor new trademark applications to ensure that those potential new trademarks don’t infringe or potentially damage their existing rights. Where potential conflicts are identified, owners of earlier marks can raise an opposition to (or challenge) the younger trademark on the basis that it is identical or confusingly similar to their own rights (find out more about the opposition procedure).
To establish whether there is likelihood of confusion, the relevant trademark authority will assess the visual, phonetic and conceptual similarity of the relevant trademarks, account being taken, in particular, of their distinctive and dominant components, and the goods and/or services involved. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.
D versus D In 2012, Diesel challenged an application by clothing brand Sprinter megacentros del deporte SL (Sprinter) on the grounds that it was similar to its registered trademark covering a stylized form of capital D (both shown below). Both figurative trademarks were filed for (among other goods) clothing (class 25) and leather goods and bags (class 18).
Registered trademark – trademark owner Diesel
Mark as applied for – trademark applicant Sprinter
The opposition was initially rejected by the EU’s Intellectual Property Office (EUIPO) in 2014, with its Board of Appeal (BoA) confirming that decision in 2015. In its ruling, the BoA said that:
- The registered trademark clearly represents a capital letter D, whereas the mark as applied for will be seen as a simple geometric form;
- It is unlikely, therefore, that the mark as applied for will be recognised by the relevant public as a letter D; although it can not be ruled out that a small part of the relevant public will recognise it as such;
- Visually, there are significant differences between the marks that weigh heavier than the similarities;
- The phonetic and conceptual similarity only exists for that (small) part of the public that perceives the mark as applied for as a capital letter D. For the remaining (much larger part of) the relevant audience there is no phonetic and conceptual similarity; and
- The distinctive character of the registered trademark is considered weak for the goods in question.
However, the EU’s General Court rejected those arguments in its judgement of 20 July 2017. Most importantly, the Court found that the mark as applied for contains all the necessary features to be regarded by the relevant public as a capital letter D. The fact that the mark applied for has a minor interruption in its 'stem’ does not lead to another conclusion. It also found that EUIPO’s BoA failed to make clear what simple geometric shape was represented by the mark as applied for.
The EU’s General Court ruled instead that the marks are similar from a visual standpoint: they have the same dynamism and overall proportions; the width of the lines and two rounded angles are similar. It is also relevant that the goods in question are consumer goods, as the relevant public is not considered to be very attentive, making differences less noticeable. Indeed, it is considered that, in general, the presentation size of trademarks affixed to fashion products are small in relation to the goods as a whole “with the result that it cannot be ruled out that consumers might experience difficulties in grasping the minor stylistic differences which may differentiate those marks”.
The logical consequence of the Court’s judgment is that the mark as applied for is phonetically and conceptually identical to Diesel’s registered trademark. Because the goods in question are also identical, the Court concluded, therefore, that there is a likelihood of confusion between the marks, even if the registered trademark has a low degree of distinctiveness.