DD DIVO DIVA and DIVA CRAVATTE held to be confusingly similar

The Swiss Federal Administrative Court has upheld an opposition filed by the owner of the trademark DIVA CRAVATTE (and design) against the registration of the mark DD DIVO DIVA (and design) for goods in Class 25 of the Nice Classification (Case B-7500/2006, December 19 2007).

The opponent is the owner of the earlier registered trademark DIVA CRAVATTE for goods in Class 25 of the Nice Classification (including ties and scarves). The Swiss Federal Institute of Intellectual Property (IGE) upheld the opposition. The applicant appealed to the Federal Administrative Court.

The court considered the following issues:

• whether the DIVA CRAVATTE mark was in use;
  
  
• whether there was a likelihood of confusion between DD DIVO DIVA and DIVA CRAVATTE.

First, the court found that the opponent used its mark only in the form of the word 'diva'. Moreover, the court held that the elements of the trademark DIVA CRAVATTE were not of equal importance: the word 'diva' is the characteristic element of the mark, while 'cravatte' is descriptive of ties ('cravatte' is the Italian for 'tie'). The court considered that the figurative element of the mark was not dominant. However, the court concluded that the mark was used in a manner that was not essentially different from its registered form.

In addition, the opponent provided evidence that it had sold more than 3,000 ties over a period of five years. The court thus found that the trademark DIVA CRAVATTE met the quantitative requirement of genuine use.

Finally, the court stated that the characteristic element 'diva' is present in both marks. The additional element in the mark applied for ('divo') is only a slightly altered form of the characteristic element 'diva'. According to the court, Italian-speaking consumers will recognize immediately the word 'divo' as the male form of 'diva' (ie, a star or divine person). The court thus held that DIVA CRAVATTE and DD DIVO DIVA were confusingly similar.

Accordingly, the court dismissed the appeal and upheld the opposition.

Peter Heinrich, Staiger Schwald & Partner AG, Zurich