Conceptual difference with D mark rescues DDS registration

In D SpA v DDSc SpA (Case 3984, February 27 2004), the Italian Supreme Court has held that the mark DDS did not infringe the mark D registered for the same type of goods because they were conceptually different. The decision is in line with Mülhens GmbH & Co KG v Office for Harmonization in the Internal Market, in which the European Court of First Instance ruled that conceptual differences between marks may counteract any phonetic similarity.

Italian company DDSc SpA owns a registration for the trademark DDS in Class 18 of the Nice Classification for leather accessories, bags and cases. On May 25 1992, it filed an action seeking a declaratory judgment that its use of the DDS mark did not infringe D SpA's D mark, also registered for goods in Class 18.

Both the Court of Milan and the Court of Appeal upheld DDSc's claims. D appealed to the Supreme Court, alleging that its trademark, which consists of the letter 'd' and figurative elements, was strong and should therefore be protected against any similar sign.

The Supreme Court dismissed D's claims, reasoning that there was no risk of confusion. This, said the court, was because although the trademarks (i) shared some graphical and phonetic similarities (ie, the letter 'd'), and (ii) were used in connection with the same type of goods, they were conceptually different. The court observed that the 'd' in the D mark evoked hunting and the countryside ('d' standing for 'Diane', the mythological goddess of hunting), while the 'd' in DDS referred exclusively to the first letter of the mark owner's name.

Pietro Pouchè, McDermott Will & Emery/Carnelutti Studio Legale Associato, Milan