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.
As carried in IP