In Case T-662/13, Diseños Mireia, SL, sought to register the figurative sign on the left as a CTM, claiming protection for goods in Class 14, such as "jewellery".
The opponent, dm-drogerie markt GmbH & Co. KG, filed a notice of opposition based on the Community word mark 'dm' covering "jewellery, horological instruments; key fobs" also in Class 14, arguing that the applicant's mark gave rise to a likelihood of confusion under Article 8(1)(b) CTMR.
Both the Opposition Division and the First Board of Appeal of OHIM rejected the opposition in its entirety: The mark applied for would most probably be perceived as representing a highly stylised capital letter 'M' whereas the earlier mark consisted of the letters 'd' and 'm'. According to OHIM, there were no visual, phonetic or conceptual similarities between the signs and, thus, no likelihood of confusion.
The General Court (GC) shared this view and dismissed the opponent's appeal. In essence, the case turned on the question of whether or not the relevant public saw a representation of the interlinked capital letter 'D' in addition to a representation of the capital letter 'M' in the mark applied for. 'No', said the GC (and this blogger admits that, when seeing the figurative mark for the first time, he was not sure to be looking at a letter at all).
More precisely, the Court eloquently described that
"the line which extends the upper serif of the left vertical line of the mark applied for towards the centre of that mark, curves markedly towards the left, crosses the baseline, turns back towards that vertical line and ends placed under the lower serif will not be perceived by the relevant public as also having the function of forming the bowl of the capital letter 'D'."
The opponent was unable to convince the Court of the contrary on the grounds that the letters 'D' and 'M' represented the initials of the applicant's trade name 'Diseños Mireia'. It was considered to be insufficient that the applicant allegedly used the mark applied for together with a reference to its trade name. The GC confirmed that the comparison must be made between the signs as they were registered or as they appear in the application, regardless of whether they are used alone or together with other marks or particulars.
The picture on the right, from the applicant's website, implies that the mark applied for is indeed used in connection with the trade name 'Diseños Mireia', which, somehow, makes seeing the interlinked letter 'D' that much easier. That being said, the Court's approach to limit the comparison of the signs to their registered form (or the form applied for) is generally understood as common practice, and it is in line with previous EU case law (see, for instance, Case T-29/04, para. 57; later confirmed by the CJEU in Case C-131/06 P, para. 56).