Pants!..Similar Marks Causing Confusion?

Similar Marks Causing Confusion? Trade Mark Opposition Case

Protecsom made an application to register the word DIGNITUDE as a Community Trade Mark for the following:

Class 5

  • Menstruation knickers/tampons.
  • Sanitary napkins.
  • Bandages for hygienic use.

Class 24

  • Textiles and textile goods for medical and veterinary use.

Class 25

  • Hosiery.
  • Underpants.
  • Underwear.
  • Underclothing.

The application to register was opposed by Hartmann based on a earlier CTM registration of the word mark DIGNITY that was registered for the some of the following :

Class 5

  • Sanitary preparations for medical use.
  • Â Plasters.
  • Materials for dressings.
  • Napkins.
  • Disinfectants.
  • Napkin pants and absorbent pads mainly consisting of material that is disposable.

Class 10

  • Orthopaedic articles.
  • Suture materials.
  • Draw sheets for sick beds and incontinence sheets.Â

Hartmann claimed based on the similarity of the marks and the goods for which they were registered there existed a likelihood of confusion on the part of consumers. The opposition was upheld regarding classes 5 and 24 in which Protecsom had attempted to register the DIGNITUDE mark, however the Opposition Division concluded the opposition was invalid against DIGNITUDE for class 25 as it considered the goods were not similar to those covered by the DIGNITY trademark.Â

Hartmann got its knickers in a twist over this decision and appealed to the Fourth Board of Appeal and the General Court however was unsuccessful, as it was decided that the goods at issue were not targeted to a specific group of consumers but to the public at large. Although the DIGNITUDE and DIGNITY marks were similar, a likelihood of confusion did not exist as the goods in Class 25 within the application to register the DIGNITUDE mark were different from the goods previously covered by the DIGNITY trademark, namely the goods in Classes 5 and 10

How the court came to their decision…..

Likeness of the goods

Hartmann was unable to suggest that the purpose of the goods was identical, as the goods in Class 25 covered by Protecsoms mark were simply for covering the lower part of the body. Conversely, the goods covered by Hartmanns trademark were specifically designed to deal with urinary and faecal leakages, therefore the goods would be perceived by consumers as serving different purposes.

The similar nature of the goods in dispute

The goods covered by the DIGNITY trademark consisted of absorbent pads (for leakages) and were generally composed of disposable material, not durable material, so not suitable for continued use. Whereas the goods covered by the DIGNITUDE trademark were composed of durable material and were items of fashion resistant to continued use and not at all absorbent of fluid leakages.

Distribution channels

The distribution channels of the goods were different. Namely the goods covered by the DIGNITY trademark would be distributed via pharmacies and medical supply outlets whereas the goods covered by the DIGNITUDE trademark would be circulated amongst clothing sections in department or super stores or clothing shops in general.

Goods in competition?

It could not be concluded that the goods were in competition as a consumers informed choice between the goods at issue would be based on their health requirements.

Were they complementary to each other?

Goods are only complementary where they are closely linked in the sense that one is important for using the other, leading consumers to believe that the same person manufacturers the goods. Such a relationship could not be established in this case.

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