PAM-PAM decision at odds with trademark comparison principles

European Union

In Meric v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision finding that the mark PAM-PIM'S BABY-PROP for disposable napkin-pants (diapers) was confusingly similar to the older PAM-PAM word and device marks.

Gérard Meric applied to register PAM-PIM'S BABY-PROP as a Community trademark for disposable napkin-pants. Arbora & Ausonia (A&A) opposed the application on the basis of (i) two national Spanish word trademarks PAM-PAM and PAM-PAM SERVICIO DE MERCHANDISING SA, and (ii) a Spanish figurative trademark containing the name Pam-Pam and covering, among other things, napkin-pants and sanitary pants. The trademarks covered three different classes of the Nice Classification, namely Classes 5, 16 and 25. The trademark PAM-PIM'S BABY-PROP also covered napkin-pants, but in Class 16 only. A&A's only trademark covering Class 16 showed a very distinctive design.

The OHIM Opposition Division upheld the opposition, finding that Meric's mark was confusingly similar to A&A's PAM-PAM figurative mark registered in Class 16. It disregarded A&A's word marks. Meric appealed.

The Board of Appeal upheld the opposition, basing its decision mainly on the older word mark PAM-PAM covering "any ready-made clothing, in particular napkin-pants, footwear" in Class 25. It reached the conclusion that the products covered by the contested trademark application, namely "napkin-pants made out of paper or cellulose (disposable)" were to be considered as similar to A&A's products, even though the two parties' goods were in different classes.

On appeal, the CFI confirmed the board's decision.

Meric argued before the court that A&A's trademarks related to napkin-pants for adults only, whereas Meric's mark intended to cover napkin-pants for children, which was inferred by the word 'baby' contained in his trademark. However, the court found that the list of goods covered by Meric's application was in no way restricted to napkin-pants for children. It also noted that A&A originally applied for its word mark PAM-PAM to be registered in Spain for children's napkin-pants. Moreover, the CFI considered that napkin-pants for adults and for children would have the same function and would be marketed through the same points of sale. Accordingly, the court concluded that the goods at issue were similar.

The CFI then examined whether the trademarks themselves should be considered as confusingly similar. It held that certain elements may be attributed different importance. It found that (i) the word combination 'Pam-Pim's' was the dominant element of Meric's trademark, and (ii) the additional words 'Baby-Prop' would only "occupy a secondary position within the sign as a whole". Accordingly, the court held that the marks were confusingly similar and rejected Meric's appeal.

This decision seems to be at odds with the general principle that trademarks have to be examined in their entirety and cannot be split into particular parts to be compared with other trademarks. It is certainly possible to hold that the elements 'Pam-Pam' and 'Pam-Pim's' have many features in common and that the difference of one vowel as well as the apostrophe and the final 's' would not suffice to differentiate sufficiently these trademark elements. However, the addition of the words 'Baby-Prop' is definitely recognizable for the average consumer. It is interesting to note that the CFI did not address the probably more convincing argument that the contested trademark could also be understood by the average consumer as a variation of the older trademark, although the consumer would perceive the differences between the trademarks and at least those created by the additional two words 'Baby-Prop'. This may have led to a more consistent approach, which could have been useful for future cases.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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