20 jul 2017
Teken hoofdletter D van Sprinter is verwarringwekkend t.o.v. beeldmerk Diesel
Gerecht EU 20 juli 2017, IEF 16979; IEFbe 2265; T-521/15; ECLI:EU:T:2017:536 (Diesel tegen EUIPO) Merkenrecht. Oppositie. Sprinter heeft een merkaanvraag ingediend voor een beeldteken, bestaande uit een hoofdletter D. Diesel heeft oppositie ingesteld. Dit werd afgewezen, waarop hoger beroep is ingesteld door Diesel. Het Gerecht stelt dat sprake is van soortgelijke tekens en verwarringsgevaar. De uitspraak van EUIPO moet worden vernietigd.
32. In the first place, as regards the earlier EU trade mark, the Court endorses the Board of Appeal’s finding, in paragraph 47 of the contested decision, that the earlier mark could be perceived as a capital letter ‘D’, a finding which has not, moreover, been disputed by the applicant or by the intervener.
33. In the second place, as regards the mark applied for, first, it must be pointed out that, as the applicant submits, that mark has all the elements that make up a capital letter ‘D’, namely the curved bowl on the right-hand side, the oblique stem, with a slant that gives an impression of verticality, on the left-hand side between the ends of the bowl, and a framed counter between the bowl and the stem.
34. Secondly, the applicant’s argument that the presence of serifs is not an element that is essential for the mark applied for to be recognised as a capital letter ‘D’ must be endorsed. Consequently, the lack of a serif in the lower part of the mark applied for, which is, in any event, insufficient to refute the fact that the mark applied for will be perceived as a capital letter ‘D’, is inconsequential.
35. Thirdly, the argument on the part of the Board of Appeal and of EUIPO that the lower part of the line in the mark applied for, which has a slanted turn upwards at the end, will not be seen as a stem, which is one of the essential elements of the letter ‘D’, is not convincing. As the applicant correctly observes, the presence of a stem which is vertical and attached to the upper and lower parts of the bowl is not a standard characteristic which is an obligatory part of the stylisation of a capital letter ‘D’, as the stem may be slanted and not attached to the bowl. That finding seems, moreover, to be confirmed by EUIPO in its written pleadings because it observes that, in the standard typewritten form of a capital letter ‘D’, the stem is ‘normally’ straight and is connected with the upper and the lower parts of the bowl.
36. Fourthly, it must be pointed out that, as the applicant submits, since the gap between the stem and the upper line of the mark creating the bowl is very small, it cannot be held that there is no counter framed by the bowl and the stem of the mark applied for. In addition, that gap cannot appreciably detract from the contested sign’s being perceived as a capital letter ‘D’. It is very likely that the gap between the stem and the upper horizontal line in the mark applied for will be perceived by the relevant public as a stylistic variation which has been made to the mark applied for in order to differentiate it from the classic and standard version of a capital letter ‘D’. Furthermore, in that regard, it must be pointed out that, in the clothing and fashion sector in general, the relevant public is used to seeing goods bearing figurative signs the design of which is original as compared with the standard version of those signs. It is also common in that sector for the same mark to be configured in various different ways according to the goods which it designates or to particular periods in time (see, to that effect, judgment of 10 May 2011, Emram v OHIM — Guccio Gucci (G), T‑187/10, not published, EU:T:2011:202, paragraph 71 and the case-law cited).
37. In view of the foregoing, it must be pointed out that, even though it is true that, compared with the classic form of the capital letter ‘D’, there are variations in the mark applied for, the possibility of that mark being perceived as representing that letter cannot, contrary to what the Board of Appeal states in paragraph 50 of the contested decision, be regarded as remote. On the contrary, it is highly likely that, in the light of the specific characteristics of that mark, a non-negligible part of the relevant public will perceive the mark applied for as a stylised capital letter ‘D’.
38. Consequently, the Board of Appeal erred in finding, in paragraph 47 of the contested decision, that only a small part of the relevant public will perceive the mark applied for as a capital letter ‘D’.
