English word held to be inherently distinctive in Spanish

In tesa SE v Office for Harmonisation in the Internal Market (OHIM) (Case T-555/11, November 13 2012), the General Court (Fourth Chamber) has held that the figurative trademark TESA TACK was confusingly similar to the earlier Spanish trademark TACK CEYS. The Community trademark (CTM) application for TESA TACK was thus rejected. 

The issue in this case was restricted to the comparison of the conflicting marks, as:

• there was no dispute as to the identical nature of the goods (primarily adhesives for stationery in Class 16); and
• the earlier Spanish trademark was not subject to proof of use, since it had not been registered for five years at the time the opposed CTM application was published for opposition purposes.

In addition, the opponent did not claim that its mark was well known or reputed, and both parties agreed that the relevant public for the goods at issue consisted of the average Spanish consumer, who was reasonably well-informed and reasonably observant and circumspect (see Lloyd-Schuhfabrik (Case C-342/97)).

The issue was thus solely whether the two figurative marks were confusingly similar, bearing in mind that the goods were identical and that, in line with European case law, this could offset a low degree of similarity between the marks (interdependence between the comparison of the signs and the comparison of the goods (see Canon (Case C-39/97), Paragraph 17, and VENADO (Joined Cases T-81/03, T-82/03 and T-103/03), Paragraph 74)).

It should be noted that the parties had previously been involved in another opposition concerning the word mark TESA TACK and the opponent's Spanish trademark, as well as another earlier mark belonging to the opponent, use of which it elected not to prove, or could not prove. The Opposition Division of OHIM rejected the opposition on the grounds that the figurative Spanish mark TACK CEYS was not similar to the word mark TESA TACK. However, on appeal, the Opposition Division's decision was set aside and the later mark was refused registration on the grounds that it was confusingly similar to the earlier Spanish mark. The matter was not appealed to the court in Luxembourg, and the refusal became final.

In the present case, both the Opposition Division and the Board of Appeal of OHIM deemed the figurative marks to be similar, and this finding has now been upheld by the General Court.

One of the key findings was that the common element 'tack', which is an English word, would have no meaning in Spanish and, hence, was inherently distinctive. In addition, OHIM and the court shared the view that the marks had a certain degree of aural similarity, which was not offset by the additional terms 'tesa' and 'ceys', respectively. Therefore, while there were differences between the marks as perceived by consumers, these would not prevent consumers from confusing the marks or drawing associations between the goods identified by the marks.

The two marks were thus deemed to be similar, and, as is now standard practice, it followed that this could give rise to a likelihood of confusion or association among consumers, bearing in mind that the two marks would often not be compared side by side and that, when making a purchasing decision, consumers must place their trust in the imperfect picture of the marks that they have kept in their mind (see Lloyd Schuhfabrik Meyer, Paragraph 26).

Ramón Cañizares, Elzaburu, Alicante