On 20 June 2017, a ruling between Sprinter megacentros del deporte SL and Diesel SpA was made regarding similar trademarks indicating there would be a risk of consumers being misled in relation to two similar figurative marks in the form of the letter “D” in respect of identical goods. A consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.
On 6 December 2012, the company Sprinter megacentros del deporte SL filed an application with the EUIPO for registration of the following figurative trademark:
The goods in respect of which registration was sought are in classes 8, 25 and 28 (including clothing, training shoes and sports accessories). An opposition was filed by Diesel SpA (Breganza, Italy) on the basis of its earlier trademark registered on 19 February 1999 for similar/identical goods from classes 18 and 25.
On 30 September 2014, the opposition was rejected. Diesel SpA’s appeal also did not bring the result the plaintiff hoped for. The EUIPO Second Board of Appeal found that the earlier mark is clearly reminiscent of the letter “D”, while the trademark submitted is a basic geometric form. While the EUIPO did not entirely rule out the possibility that a small number of members of the public could perceive the Sprinter mark as a letter “D”, in the EUIPO’s opinion this was rather unlikely. The Board of Appeal found that there is no reason to suppose that the relevant consumer group in the European Union would be misled into believing that goods bearing that mark, even if identical to Diesel products, come from the same company or from companies that are economically linked, taking account of the normal level of attention paid by the target group.
On 7 September 2015, Diesel SpA lodged an application with the EU General Court, claiming that the Court should annul the decision.
On 20 June 2017, the court issued a ruling in favour of the applicant. The court stated that, even though there are graphic differences between the two marks, there is a risk of consumers being misled in relation to the two similar figurative marks in the form of the letter “D” in respect of identical goods.
In the opinion of the court, regardless of whether there is any relation between the mark submitted and the letter “D”, the differences between the marks are slight and are of little significance when comparing their similarities. In order to perceive those differences, a consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.