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Victory for Tambrands Inc as third party’s attempt to register TAMPAX mark fails

The Appeal Division of the Lithuanian State Patent Bureau has ruled in favour of Tambrands Inc in opposition proceedings concerning the national word trademark TAMPAX for goods and services in Classes 3, 16, 41 and 44.

Background

On 19 May 2015 the applicant – a natural person residing in Lithuania – applied for registration of the word mark TAMPAX (No 73075) in Lithuania. The application covered goods in Classes 3 (“soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices”) and 16 and services in Classes 41 and 44.

On 4 May 2016 Tambrands filed an opposition with the Appeals Division, requesting a declaration that the trademark registration for TAMPAX (No 73075) was invalid based on its earlier rights in the national trademark TAMPAX (No 6084) and the EU trademarks TAMPAX COMPAK (No 006916191) and TAMPAX (No 006918569), protected in respect of goods in Class 5 (“intimate feminine hygiene products, namely tampons”).

Tambrands stated that the opposed trademark has been registered in breach of Articles 7(1)(2), 7(1)(7) and 7(3) of the Law on Trademarks of the Republic of Lithuania, since:

  • the opposed trademark is confusingly similar to its earlier registered trademarks;
  • the earlier trademarks have a reputation in the European Union, including Lithuania; and
  • the trademark application has been filed in bad faith.

The applicant failed to submit a response, and the opposition was examined without the applicant’s participation.

Appeal Division decision

On 15 January 2019 the Appeal Division satisfied the opposition and invalidated the registration for TAMPAX in its entirety, based on the following arguments.

First, it was established that the disputed trademark TAMPAX is confusingly similar to Tambrands’ earlier trademarks TAMPAX and TAMPAX COMPAK. The marks were found to be identical or highly similar, and part of the goods were also considered to be similar.

The goods in class 3 (“soap”) covered by the opposed mark were considered to be similar to the hygiene goods covered by the earlier marks in Class 5 (“intimate feminine hygiene products, namely tampons”). The Appeal Division found that the purpose of the goods was similar (ie, to maintain cleanliness and hygiene), the consumers were the same and the realisation conditions were the same. The goods in Class 5 covered by the earlier marks were also similar to the goods in Class 16 covered by the opposed mark (“paper towels, tissues, napkins, toilet paper, paper and plastic bags for packaging”), because these goods are related to personal hygiene, share the same producers and final consumers, and are placed next to each other at points of sale. The rest of the goods and services were found dissimilar.

Second, the Appeals Division decided that the entirety of the evidence submitted by Tambrands allowed the conclusion that the trademark TAMPAX has a reputation in the European Union in respect of the hygiene products (tampons).

When determining whether the earlier marks had a reputation, the Appeals Division relied on the 14 September 1999 decision of decision of the Court of Justice of the European Union in General Motors Corporation v Yplon SA (Case C-375/97, Paragraphs 26 and 27), stating that all the important circumstances of the case must to be taken into account; in particular:

  • the market share of the trademark;
  • the frequency, geographical distribution and duration of the use; and
  • the company’s investments in promotion of the trademark.

This list of circumstances is not exhaustive. According to the Appeals Division, the reputation of the mark can be assessed based on other evidence, including:

  • the number, duration, geographical coverage of registrations and/or applications;
  • evidence of successful implementation of the rights in the mark by the competent authorities; and
  • the value of the trademark on the market (“Joint Recommendation Concerning the Provisions on the Protection of Well-Known Marks adopted and the General Assembly of the WIPO on 20-29 September 1999”).

The Appeals Division relied on the evidence submitted by Tambrands (eg, sales figures for the TAMPAX branded tampons, a list of TAMPAX trademark registrations in the EU member states, use and advertising samples, historical extracts from discussions in social networks, and evidence of recognition of the mark by third parties) and concluded that the earlier mark was known among consumers in at least several EU member states.

As it was found that the disputed mark was confusingly similar to a mark with reputation, the use of the disputed mark – even for dissimilar goods – could take unfair advantage of, or be detrimental to, the distinctive character and reputation of the earlier EU trademark. Therefore, the disputed trademark was declared invalid in respect of all goods and services applied for.

Third, taking into account all the circumstances of the opposition, the Appeals Division concluded that the owner of the opposed trademark had filed the application for registration in bad faith. The applicant failed to submit a response to the opposition. No evidence that the applicant was using or intended to use the disputed trademark was provided. The correspondence submitted by Tambrands showed that the applicant knew about Tambrands’ exclusive rights in the mark TAMPAX and that it sought to receive disproportional compensation from Tambrands. The circumstances thus raised serious doubts as to the intensions of the applicant, and allowed the Appeals Division to conclude that the registration and use of the disputed trademark would conflict with the standards of fair commercial conduct.

In the light of the above, the opposition was upheld in its entirety and the disputed trademark TAMPAX was invalidated in respect of all goods and services for which it was registered.

As the decision was not appealed before the court within 6 months term, it became final.

This article first appeared on WTR Daily, part of World Trademark Review, in 03/2019. For further information, please go to www.worldtrademarkreview.com

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