Opposition proceedings before the EUIPO remain one of the most effective tools for enforcing earlier trademark rights and preventing the registration of conflicting signs. The decision rendered by the EUIPO Opposition Division in the case concerning the word marks TAMMY and TOMMY offers a detailed and highly instructive example of how likelihood of confusion is assessed under Article 8(1)(b) EUTMR, particularly where word marks differ by only a single letter.

Beyond its immediate procedural outcome, this case is of considerable practical relevance for businesses seeking trademark registration not only at EU level, but also in Romania, where OSIM practice is closely aligned with EUIPO jurisprudence.

Procedural Background and Scope of the Opposition

The opposition was filed by Tommy Hilfiger Licensing B.V., a well-established proprietor of EU trademark rights, against European Union trademark application No. 18 638 348 for the word mark TAMMY, filed by BHS International Limited. The contested application sought protection for an extensive range of consumer goods in Classes 3, 18 and 25, covering cosmetics, personal care products, leather goods, bags, luggage, clothing, footwear and headgear.

The opponent relied primarily on its earlier EU trademark registration No. 1 147 396 – TOMMY (word mark), invoking Article 8(1)(b) EUTMR, which requires refusal of a trademark registration where there exists a likelihood of confusion on the part of the relevant public. In addition, the opponent also relied on Article 8(5) EUTMR, claiming protection based on reputation. However, as frequently occurs in EUIPO opposition proceedings, the Office found it unnecessary to examine the latter ground once likelihood of confusion had been established on the basis of the earlier registration alone.

The opposition was directed against all goods covered by the application, significantly increasing the commercial and legal stakes of the proceedings.

Detailed Comparison of the Goods

A central pillar of the EUIPO’s reasoning was the comparison of the goods, carried out in accordance with the criteria established in the Canon case law, including nature, purpose, method of use, distribution channels, and whether the goods are in competition or complementary.

For Class 3, the EUIPO found that the goods covered by the contested trademark, such as perfumes, cosmetics, soaps, essential oils, hair lotions and dentifrices, were identical to those protected by the earlier TOMMY registration. The Office expressly noted that the identity extended to both identical wording and synonymous terms, leaving no room for differentiation at product level.

The findings in Class 18 were equally unequivocal. The contested goods, including leather handbags, wallets, purses, briefcases, bags, trunks, umbrellas, skins and hides, were all found to fall within the broad categories protected by the earlier mark. Where the applicant used restrictive language such as “namely”, the EUIPO clarified that this wording did not remove the overlap, as the specifically listed items remained fully covered by the opponent’s earlier trademark rights.

Even in relation to Class 25, where the earlier trademark did not expressly cover clothing, footwear and headgear, the EUIPO confirmed a finding of similarity. The Office emphasized that fashion items, leather goods and accessories often originate from the same undertakings, are marketed through the same retail networks, and target the same consumers. This approach is particularly familiar in trademark disputes before the Romanian IPO, especially in the fashion, cosmetics and lifestyle sectors.

Relevant Public and Degree of Attention

The relevant public was identified as the general public within the European Union. Given the nature of the goods, everyday consumer products rather than specialized or high-end professional goods, the EUIPO held that the level of attention was average.

This assessment played an important role in the overall analysis, as average consumers are less likely to notice minor differences between trademarks and tend to rely on their imperfect recollection when encountering signs in the marketplace.

In-Depth Comparison of the Signs

The comparison of the signs TOMMY and TAMMY lay at the heart of the dispute. Both signs consist of a single word of five letters, share the same initial letter “T”, and end with the identical sequence “MMY”, which the EUIPO considered visually and aurally dominant. The only difference between the signs is the second letter “O” in the earlier trademark and “A” in the contested sign.

From a visual perspective, the EUIPO found the signs to be highly similar, emphasizing their identical length, structure and overall appearance. The minor difference in a single internal vowel was insufficient to significantly alter the visual impression conveyed to consumers.

From an aural perspective, the Office reached the same conclusion. Both marks share the same number of syllables, the same rhythm and stress pattern, and are pronounced in an almost identical manner. The difference in the vowel sound of the second letter was deemed negligible in the context of the overall phonetic similarity.

Regarding the conceptual comparison, the EUIPO deliberately focused on that part of the EU public which would not associate either sign with a specific meaning. For a substantial portion of consumers, particularly non-English-speaking consumers, both TOMMY and TAMMY would be perceived as invented word marks. As a result, the conceptual comparison was considered neutral and incapable of offsetting the strong visual and aural similarities.

Distinctiveness of the Earlier Trademark

While the opponent argued that the TOMMY trademark enjoys enhanced distinctiveness due to extensive use and market presence, the EUIPO chose to base its assessment solely on the inherent distinctiveness of the earlier mark. The Office found that TOMMY, as a word mark with no descriptive meaning for the goods at issue, possesses a normal degree of inherent distinctiveness.

The EUIPO made clear that even without considering any enhanced distinctiveness or reputation, the earlier trademark was sufficiently distinctive to support a finding of likelihood of confusion in light of the identity and similarity of the goods and the strong similarity between the signs.

Global Assessment and Likelihood of Confusion

In its global assessment, the EUIPO brought together all relevant factors, stressing the principle of interdependence between them. The Office recalled that consumers rarely have the opportunity to compare trademarks directly and instead rely on imperfect memory.

Given the identity of the goods in Classes 3 and 18, the similarity of goods in Class 25, the average level of consumer attention, and the high degree of visual and aural similarity between TAMMY and TOMMY, the EUIPO concluded that consumers could reasonably believe that the goods originated from the same undertaking or from economically linked undertakings.

The Office further emphasized the unitary character of the EU trademark. A likelihood of confusion affecting only a part of the EU public is sufficient to justify refusal of registration. On that basis, the contested trademark was refused in its entirety.

This decision provides several important lessons for businesses and brand owners seeking trademark registration in Romania or at EU level: minor differences in spelling may not be sufficient to avoid refusal where the overall impression of the marks is similar. EU trademarks enjoy strong blocking effects in national proceedings before OSIM, particularly for consumer goods. Fashion, cosmetics and accessories are frequently considered identical or closely related across multiple classes. Comprehensive trademark clearance searches and professional legal assessment are essential prior to filing.

Leave us a message: