In Case T-555/11, Tesa SE (Germany) filed for CTM ‘TESA TACK’ opposed successfully by Superquímica, SA (Spain) for identical goods in Class 16 on the basis of earlier Spanish mark ‘Tack Ceys’:

The relevant public includes the average, reasonably well-informed and reasonably observant and circumspect Spanish consumer as well as the Spanish professionals with a high level of attention.

Next, it found that the goods covered by the marks at issue were identical. As regards the comparison of the signs, the Board of Appeal found, as confirmed by the General Court, that there was a certain degree of visual and aural similarity, in particular owing to the presence of the word ‘tack’ in both marks at issue.

Further, according to the EU Commission survey referred to by the applicant, knowledge of English is less widespread in Spain than in other EU countries. According to that survey, only 27% of the Spanish population has sufficient skills in English to have a conversation in that language.

Moreover, the fact that the word ‘tack’ is used for adhesive products in other national or Community marks or on internet sites in no way proves that the relevant public, in so far as it understands English, understands the meaning of that word. The applicant has failed to demonstrate that ‘tack’ is part of the basic English vocabulary with which the relevant public is likely to be familiar.

It should also be noted in that regard that the word ‘tack’ has several meanings in English and that most of those meanings do not concern adhesive properties, as is apparent from the dictionary extracts appended as Annex1 to the application lodged with OHIM by the applicant.

Thus, as regards the distinctive character of the word ‘tack’ and the conceptual comparison, the applicant’s argument that the word is considered by the relevant public to be descriptive of the goods at issue, was rejected by OHIM and the Court.

Therefore, since the marks at issue are to a certain extent similar and that the earlier mark has an inherent distinctive character, there is a likelihood of confusion for the purposes of Article8(1)(b) of CTMR.