Likelihood of Confusion: Tesa v OHIM

The opposition filed by Superquímica SA was based on Article 8(1)(b) CTMR and an alleged likelihood of confusion with their earlier Spanish national application for ‘TACK Ceys’ & Device (see below), which was registered for “Bands, strips, sheets and adhesive matters for stationery or the household; plastic sheets for packaging” in Class 16.

Board of Appeal decision

The OHIM Opposition Division found that there was a likelihood of confusion between the marks. Tesa SE appealed to the Board of Appeal, which upheld the OHIM decision. The Board found that the relevant public included, on the one hand, the average, reasonably well-informed and reasonably observant and circumspect Spanish consumer and, on the other, Spanish professionals with a high level of attention. Further, it considered the goods in question to be identical. With regard to the marks, the Board found that there was a certain degree of visual and aural similarity, in particular owing to the presence of the common word “TACK” in both marks. The Board found that the two marks could not be compared conceptually since the signs had no recognised meaning in Spanish but concluded that there was, in any case, a likelihood of confusion for the purposes of Article 8(1)(b) CTMR. Tesa SE appealed the decision to the General Court.

Appeal to the General Court

The General Court first acknowledged the finding by the Board that the goods were identical. Comparing the marks, the Court found that visually the relevant consumer would, in its perception of the earlier mark, consider the word “TACK” to be particularly important because of its size, its red colour, its typeface and its position at the beginning of the sign. By contrast, the word “ceys” was smaller and positioned within a black rectangular arrow which points towards the word “TACK”. The Court found that the applicant’s argument that the two marks were dominated, from a visual point of view, by the distinctive elements ‘tesa’ and ‘ceys’ was unfounded. Further, the fact that the relative positioning of the word “TACK” in each of the marks was reversed was not important enough to affect the finding of a certain degree of visual similarity. Additionally, as the Board observed initially, in both signs, the word “TACK” was written in bold, coloured uppercase letters and, in addition to the common word element “TACK”, the marks at issue also shared other similar visual elements (such as the structure of the marks and the elements “tesa” and “ceys” each containing four letters).

In assessing the relevant public, the Court upheld the finding of the Board that a large proportion of the relevant Spanish public did not understand English and, even for those that did, Tesa SE had failed to show that the common element “TACK” was a familiar word. In fact, according to an EU Commission survey relied on in the opposition, only 27% of the Spanish population had sufficient skills in English to have a conversation in English. Moreover, the Court recognised that the word “TACK” had several meanings in English, while it had no meaning in Spanish. Tesa SE’s argument that the word was considered by the relevant public to be descriptive of the goods at issue, was therefore rejected.

The Court upheld the finding of the Board of Appeal that there was no conceptual similarity, despite the prominence of the word “TACK” in both marks and its position at the beginning of the earlier mark, which contributed to a certain visual similarity of the marks. It therefore concluded that in relation to identical goods, there was a likelihood of confusion between the marks under Article 8(1)(b) CTMR.

Comment

This case highlights the fact that whilst word elements are common (and generic) in some languages of the EU (such as English), they are not always known by the relevant public. In this case, the meaning of the common element “TACK” was not known to the majority of the relevant Spanish public. Therefore, the importance of the comparison shifted to the visual and aural impressions. On this basis, the marks contained a degree of similarity which, in relation to identical goods, was sufficient to reach a finding of a likelihood of confusion.