On July 11, 2013 Division 3 of the Federal Court of Appeals in Civil and Commercial Matters in re "Tommy Hilfiger Licensing LLC v. Ciudadela S.R.L." decided that the reputation of two similar brands with simultaneous presence in the market and without complaints of confusion determined that there was no likelihood of confusion between them.
Tommy Hilfiger, owner of a trademark family with the common element "Tommy", a well-known trademark for clothing, had sued requesting that the defendant’s opposition based on trademark "Tom" be declared groundless, arguing that these two marks could be distinguished from each other.
Division 3 understood that, in this particular case, the trademark confrontation should be decided using a “benign”, i.e. loose criterion, as the names involved were prestigious and had coexisted side-by-side in the market without complaints of confusion. The Court thus held that the trademarks were not confusingly similar, as the awareness of consumers ruled out any possible relationship between the two names.
This interpretation suggests the advisability of prosecuting a potential infringer quickly, as the decision based its reasoning on the lack of reports of confusion between the two marks which eventually faced each other in a trademark opposition case.