OPPOSITION No B 3 004 416

Tambrands Inc., One Procter & Gamble Plaza, 45202-3315, Cincinnati, United States of America (opponent), represented by Deborah Brincat, 163, quai Aulagnier, 92665, Asnières Cédex, France (employee representative)

a g a i n s t

Byron Andres Rosales Conde, Judendorferstrasse 60/3, 8700 Leoben, Austria (applicant).

On 04/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 004 416 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 948 812 . The opposition is based on European Union trade mark registration No 6 915 946 for the word mark ‘TAMPAX’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 5: Feminine hygiene products, namely tampons.

The contested goods are the following:

Class 5: Tampons; tampons; tampons; sanitary wear; sanitary pants; feminine hygiene products.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. This means that the contested goods tampons (listed three times in English as tampons, while in the first language of the application, namely Spanish, they are worded slightly differently, but they are synonyms nevertheless) and the opponent’s goods are identical.

The contested sanitary wear and feminine hygiene products include, as broader categories the opponent’s feminine hygiene products, namely tampons. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested sanitary pants are similar to a high degree to the opponent’s goods as they have the same rather specific purpose and may be complementary. They coincide in the distribution channels, end user and producers.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a high degree are directed at the public at large. The degree of attention is considered to be average.

3. Distinctiveness of the earlier mark and the comparison of signs

TAMPAX
Earlier trade mark	Contested sign

Given that the earlier mark merely consists of one element, it is necessary to examine its distinctive character within the comparison of signs given the high impact that this has on the similarity of the signs.

The relevant territory is the European Union.

The earlier mark ‘TAMPAX’ will be perceived by the relevant public throughout the EU at least as allusive to the kind of the relevant goods (namely tampons). The word ‘tampon’ exists as such or in a very close spelling in all languages of the EU, more specifically, the word for ‘tampon’ starts with ‘tamp’ in all languages while the ending may differ (e.g. tampons in Latvian or tampão in Portuguese). Furthermore, in some languages of the EU the word ‘tampax’ might be used as a generic term, as appears in various dictionary entries, at least in English and Spanish:

• Tampax - a sanitary tampon (extracted on 28/11/2018 from Oxford dictionary online at https://en.oxforddictionaries.com/definition/tampax);

• Tampax - a brand of tampon (for absorbing menstrual blood); sometimes used as a generic name (extracted on 28/11/2018 from Collins dictionary online at https://www.collinsdictionary.com/dictionary/english/tampax);

• támpax - tampón (rollo de celulosa) (extracted on 28/11/2018 from Real Academia Espanola online at http://dle.rae.es/?id=Z3Xs4Ps); translation into English: tampon (roll of cellulose).

In any case, as the earlier word mark is a registered mark, the presumption of its validity applies and therefore the sign ‘TAMPAX’ has at least the minimum degree of distinctiveness (24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41). Nevertheless, due to the above considerations regarding its perception throughout the EU, the degree of its distinctiveness is low. It is also noted that the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

As regards the contested sign, although the typeface used to depict the large dominant verbal element makes the middle part difficult to read, it is likely that a majority of the public would see the word element as ‘Tampis’. The same considerations regarding the meaning and distinctiveness of the part ‘Tamp’ apply as in the case of the earlier mark. Even in relation to the contested sanitary pants the clearly related meaning of ‘tamp’ will be indicative of the purpose of the goods. The other elements of the contested sign are of minor importance, if any. In particular, the underline and the red colour of the dot on the letter ‘i’ are purely decorative while the tiny element ‘TM’ is negligible.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The signs coincide in the letters ‘Tamp’ at their beginnings but differ in their totally different endings (‘AX’ versus ‘is’), typeface (standard typeface of the earlier mark versus rather fanciful one in the contested mark) and the other additional figurative elements of the contested mark of minor importance.

As the relevance of the coinciding part ‘TAMP’ is severely reduced by its low distinctiveness, the signs are visually, aurally and conceptually similar to a low degree.

4. Global assessment, other arguments and conclusion

The goods are identical and highly similar and are aimed at the general public that pays an average degree of attention. The earlier mark has a low degree of distinctiveness and the signs are visually, aurally and conceptually similar to a low degree.

The main coincidence between the signs lies in the element that will be perceived as a reference to the goods and the differences between the marks will be clearly perceived by the relevant public. The different endings of the marks, namely ‘AX’ and ‘is’, differentiate the marks from the description of the goods ‘tampons’ and will therefore attract the consumers’ attention.

Furthermore, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for. The contested mark is depicted in a rather striking typeface that makes the middle letters difficult to read and visually the similarity of signs is very remote.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks (in this case it is low) and between the goods (in this case they are identical or highly similar). Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). The low distinctiveness of the earlier mark is another important factor to be taken into account in the global assessment of likelihood of confusion.

The Opposition Division considers that in spite of the coincidence in ‘TAMP’ and the identity (and high similarity) of the goods, a likelihood of confusion does not exist. The considerations regarding the distinctiveness of the coinciding part of the marks and the distinctiveness of the earlier mark are decisive in this case and outweigh the higher degree of similarity and even identity of the goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Mads Bjørn Georg JENSEN

Vita VORONECKAITE

Vanessa PAGE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.