OPPOSITION No B 2 434 283

Urban Outfitters, Inc., 5000 South Broad Street, Philadelphia, PA 19112, United States of Amerika, (opponent), represented by Elzaburu, S.l.p., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Apologie, 8 Rue Georges Lardennois, 75019 Paris, France, (applicant), represented by Schmidt Brunet Litzler, 9 rue Alfred de Vigny, 75008 Paris, France (professional representative).

On 15/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 434 283 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 107 917. The opposition is based on European Union trade mark registration No 3 786 051. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 18: Handbags and accessories therefor, leather goods included in class 18.

Class 25: Articles of clothing, footwear and headgear.

Class 35: Retail services in the field of clothing, footwear, headgear, accessories, home decor and gifts.

The contested goods are the following:

Class 14: Jewellery; Jewellery, precious stones; Horological and chronometric instruments; Alloys of precious metal; Works of art of precious metal; Jewellery cases [caskets]; Watch cases, watch straps, watch chains, watch springs or watch glasses; Key rings [trinkets or fobs]; Statues or figurines (statuettes) of precious metal; Medals.

Class 18: Leather and imitations thereof; Animal skins, hides; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks; Whips, harness and saddlery; Baggage; Coin purses; Handbags, rucksacks, wheeled shopping bags; Bags for climbers, bags for campers, travelling bags, beach bags, school bags; Vanity cases (not fitted); Collars and covers for animals; Net shopping bags and shopping bags; Bags or sachets (envelopes, pouches) of leather, for packaging.

Class 25: Clothing, footwear, headgear; Shirts; Clothing of leather or imitations of leather; Belts (clothing); Furs for clothing; Gloves [clothing]; Scarves; Ties; Hosiery; Socks; Slippers; Beach shoes, skiing or sports shoes; Underwear.

Some of the contested goods are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods deemed to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ANTHROPOLOGIE	APOLOGIE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The conflicting signs are both word marks.

The earlier mark consists of 13 letters, forming the word Anthropologie. The contested sign consists of 8 letters, forming the word Apologie.

‘Anthropologie’ or Anthropology is a word of Latin and Greek origin. It means the science of human beings; especially the study of human beings and their ancestors through time and space and in relation to physical character, environmental and social relations, and culture (see Merriam-Webster.com). As an academic discipline, Anthropologie or Anthropology is a subject of studies at schools and universities as well.Because of this origin and since it is a scientific term it found its way in all the contemporary European Union languages in the same or very similar orthographical form and it will be perceived everywhere in the European Union with the same meaning.

It is used and understood in almost all the European languages in this meaning, namely the science of human beings, see for instance Anthropologie in German, Dutch, Romanian, Latvian, Estonian and French, Anthropology in English, Antropologia in Italian, Portuguese, Finnish, Polish and Spanish, antropologi in Danish, antropológia in Hungarian and Slovak, antropologija in Lithuanian, antropologi in Swedish, антропология (to be transliterated as antropologiya) in Bulgarian, and antropologija in Croatian.

In relation to the goods and services concerned it has no meaning at all for these goods and services and possesses at least a normal, if not a high intrinsic distinctive character.

The contested sign ‘Apologie’ means in the German and French language a speech in one’s defence, in the English language as apology it means a piece in defense of or in praise of someone or of something, apologia in Italian and Spanish mean the same. In other European Union languages such as Bulgarian, this word has no meaning. In relation to the relevant goods it has no meaning and therefore enjoys a normal distinctive character.

Neither the earlier nor the contested marks have an element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘A*****POLOGIE’’ and they differ in the letters ‘NTHRO’ of the earlier mark. The earlier sign is considerably longer than the contested sign, and those additional letters are at the beginning of the sign – with the exception of the letter ‘A’, which is the very first letter of both signs.

Furthermore the different five letters follow immediately after the letter ’A’, are mainly consonants and the four consonants do not exist at all in the contested sign.

The first parts of the conflicting marks are therefore different, apart from the letter ‘A’ which bearing in mind the limited number of letters in the alphabet and the common use of vocals, in particular ‘A’, is seen as a rather occasional coincidence. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore the first visual impression of the signs will be that of a considerable difference in total length, and those differences are even more striking as four of those letters do not exist in the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘A’ and ‘POLOGIE’ , present identically in both signs. The pronunciation differs in the sound of the letters ‛NTHRO’ of the contested mark, which have no counterparts in the contested mark. In total, the earlier sign is composed of five syllables, whereas the contested sign only has four syllables. The first syllables of the earlier right are ‘AN –THRO’ whereas the contested sign begins with ‘A - PO’. Especially the letters ‘THRO’ produce quite a different sound as ‘PO’. Even if the first letter and the last syllables might be pronounced identical, this cannot override the strong phonetical differences caused by the letters ‘NTHRO’ resp. the syllables ‘AN-THRO’ and the different intonation due to the fact that one sign is composed of five syllables whereas the contested sign only has four syllables.

Therefore, the signs are similar to a low degree.

Conceptually, while the public in the relevant territory will perceive the earlier sign, regardless of some small differences in orthography, as ‘the science of human beings’, the other sign is partially understood as ‘a piece in defense of or in praise of someone or of something’ and partially it lacks any meaning in that territory. For those countries where the contested sign is understood, both signs have different meanings and are therefore conceptually dissimilar. Where the contested sign does not have a meaning, one of the signs will not be associated with any meaning, and therefore the signs are not conceptually similar.

Therefore the signs either are conceptually dissimilar or not conceptually similar. It follows that the signs will be clearly distinguished on conceptual level since at least one will be perceived with a clear and evident meaning (see judgment of 22/06/2004, Case T-185/02 ‘Picaro’, ECLI:EU:T:2004:185, paragraph 56 and those cited therein).

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Furthermore it is highly original and unusual for goods in Class 25 (see 26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative) and hence possess at least a normal, if not a high intrinsic distinctive character.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The conflicting goods and services were assumed to be identical. They target the public at large. The marks are visually and aurally similar to a low extent in that they coincide in the sequence of letters ‘A*****POLOGIE’. The signs differ visually and aurally in the additional letters ‘NTHRO’’ placed in second, third, fourth, fifth and sixth position in the earlier mark.

The differences between the marks will not go unnoticed and are clearly perceivable by the relevant consumer, given the eye-catching sequence of the mainly consonants ‘NTHRO’ in the earlier sign and bearing in mind that the earlier right is almost twice as long as the contested sign.

The identical letters are contained at the beginning – the letter ‘A’ - and then at the end of the earlier sign, namely ‘POLOGIE’. Therefore the contested sign is not identically contained in the earlier right. Consumers will not artificially dissect the conflicting signs into individual letters and then ‘search’ for similarities by putting the letters in different orders together again. On the contrary, they will perceive each sign as a whole and will not examine its individual details. The overall impression of the signs is therefore quite different.

Furthermore, concerning the goods in Class 25 – and also those in Class 18 which are often sold together with cloth - customers can themselves either choose the clothes or goods they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Hence, the considerable visual differences between the signs caused by the additional and different letters are particularly relevant when assessing the likelihood of confusion between them.

Additionally, as set out in the conceptual comparison of the signs, the term ‘ANTHROPOLOGIE’ of the earlier mark will convey a clear concept to the relevant public. As the General Court has held, conceptual differences may be such as to counteract to a large extent the visual and aural similarities between marks. For this to happen, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other trade mark must not have such a meaning or mean something completely different (see judgment of 22/06/2004, Case T-185/02 ‘Picaro’, ECLI:EU:T:2004:185, paragraph 56 and those cited therein). In the case at hand, the consumer will grasp the clear and specific meaning of the earlier mark ‘ANTHROPOLOGIE’, while the contested sign either lacks any meaning or has a completely different meaning for the relevant public. Bearing in mind also the high inherent distinctiveness of the earlier mark this is sufficient to prevent the consumers from mistakenly believing that the goods bearing the conflicting signs are of the same origin.

Considering all the above, even assuming that the goods and services are identical, the Opposition Division considers that the similarities between the signs are not sufficient to outweigh the differences between them. As a consequence, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

In the present case, the previous cases referred to by the opponent are also not relevant. In all the cases mentioned by the opponent, the signs are different to the ones in conflict in the current case. Furthermore, B 26 346 for instance concerns conflicting signs where the dominant part of earlier sign was identically contained in the contested sign – (TRANSHAIR International./.TRANSHAIR Medical Hair Clinics) and this is clearly not the situation in the case at hand (see above). And contrary for instance to T-172/05, ARMAFOAM ./. NOMAFOAM, in the case at hand the conflicting signs are not of the same length and do not have the same number of syllables.

Furthermore, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division were to some extent factually similar to the present case, the outcome may not be the same.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of proof or use filed by the opponent.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Plamen IVANOV

Karin KLÜPFEL

Ana MUÑIZ RODRIGUEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.