Central elements of short marks are as important as elements at beginning and end

In Aldi GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-505/11, June 25 2013), the General Court has annulled a decision of the Second Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks ALDI and DIALDÍ.

Dialcos SpA filed an application for registration of the figurative trademark DIALDÍ, as reproduced below, for goods in Classes 29 and 30 of the Nice Classification:

Aldi Gmbh & Co KG filed an opposition based on the earlier word mark ALDI, registered for goods in Classes 29 and 30. Aldi claimed that there was a risk that the public might believe that the products at issue came from the same undertaking, or from economically-linked undertakings. Aldi alleged, among other things, that the word mark ALDI possessed a reputation and therefore was highly distinctive, which entails a more extensive protection than marks with a less distinctive character.

The Opposition Division, as well as the Board of Appeal of OHIM, rejected the opposition. The marks were found to be dissimilar and, accordingly, it was unlikely that the relevant consumers would confuse them. Further, it was stated that the finding would have been the same even if Aldi had proved the enhanced distinctiveness of its word mark.

Aldi appealed the decision to the General Court.

The General Court first recalled that the likelihood of confusion must be assessed globally in accordance with the perception of the relevant public of the signs and goods in question, taking into account all relevant factors.

The court further found that the Board of Appeal was correct in considering all consumers when determining the perception of the relevant public of the signs and goods in question, although the mark DIALDÍ was registered for dietetic preparations, in particular gluten-free preparations. The court conceded that, although gluten-free products can cater to a more attentive consumer group (ie, consumers with particular dietary needs), it was reasonable to assume that any consumer may purchase, at least occasionally, the goods at issue.

However, the court disagreed with the Board of Appeal's assessment regarding the visual and phonetic similarity of the marks.

The General Court found that the Board of Appeal had given exaggerated attention to the graphic differences between the first four and last two letters of the DIALDÍ mark, since:

• all the letters were nearly identical in size and had the same colour;
• no space separated the element 'dí' from the rest of the letters; and
• the mark applied for followed the same horizontal line.

Further, the General Court noted that central elements of relatively short word marks are as important as the elements at the beginning and the end of those marks. On this basis, it ruled that, from a visual point of view, the marks had a medium degree of similarity.

From a phonetic point of view, the General Court found that there was a certain similarity between the marks, which would be only stronger in that part of the relevant public which would possibly treat the prefix 'di' in the mark applied for as an indication of the origin of the goods and would not, therefore, pronounce it in a particularly strong manner.

Moreover, contrary to the Board of Appeal's decision, the General Court held that the more distinctive the earlier mark, the greater the likelihood of confusion. Thus, marks with a highly distinctive character enjoy a more extensive protection than marks with a less distinctive character.

The General Court thus annulled the decision from the Board of Appeal and sent it back to it for revision; in particular, the board must assess all the relevant factors with regard to the visual and phonetic similarity, and determine whether Aldi had demonstrated the enhanced distinctive character acquired through use of the earlier mark.

Mette-Marie Henrichsen, Plesner, Copenhagen