OPPOSITION No B 2 614 355

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

a g a i n s t

Roman Kälin, Hauptstrasse 38, 79801 Hohentengen a.H., Germany and Roman Kälin, Dorfstrasse 34, 8175 Windlach, Switzerland (applicants).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 614 355 is partially upheld, namely for the following contested goods:

Class 18:        Bags, wallets and other carriers.

Class 25:        Clothing; headgear; footwear; hats.

2.        European Union trade mark application No 14 519 193 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 519 193, URBAN REPUBLIQ. The opposition is based on European trade mark registration No 1 150 465, URBAN OUTFITTERS and European trade mark registration No 4 947 776, URBAN RENEWAL. 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

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

European trade mark registration No 1 150 465

Class 25:        Articles of clothing for men and women; headwear; footwear.

European trade mark registration No 4 947 776

Class 25:        Articles of clothing; footwear; headgear; swimwear.

The contested goods are the following:

Class 9:        Spectacles [optics]; spectacle temples; spectacle cases; spectacle lenses; eyewear pouches; spectacle holders; spectacle frames; eyewear cases; optical glasses; polarizing spectacles; eyewear; prescription eyewear; unmounted spectacle frames; corrective eyewear; frames for spectacles and sunglasses; cases for spectacles and sunglasses; eyeglass cases; bars for spectacles; eyeglass chains; parts for spectacles; spectacle frames made of metal; spectacle frames made of plastic; protective eyewear; spectacle frames made of metal and of synthetic material; spectacle frames made of a combination of metal and plastics; spectacle frames made of metal or of a combination of metal and plastic; sunglasses; cases for sunglasses; chains for sunglasses; frames for sunglasses; lenses for sunglasses; straps for sunglasses; clip-on sunglasses; optical lenses for use with sunglasses; chains for spectacles and for sunglasses; cases adapted for mobile phones; in-ear headphones; headsets.

Class 18:        Luggage, bags, wallets and other carriers; umbrellas and parasols.

Class 25:        Clothing; headgear; footwear; hats.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested goods in Class 9 include corrective eyewear such as glasses, parts and accessories thereof and goods of fashion such as sunglasses. Their nature and main purpose are different from those covered by the earlier marks. The main purpose of clothing is to dress the human body, whereas glasses and sunglasses are for improving and/or protecting eyesight. They do not have the same distribution channels and are neither in competition, nor complementary. The same applies to their parts or accessories (such as lenses or cases). Even though some fashion designers nowadays also sell fashion accessories (such as glasses and sunglasses) under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. Moreover corrective glasses are sold under opticians’ prescription and purchased in specialised business, namely optical stores. The same occurs with sunglasses which are widely sold in optical stores. Therefore, the contested Spectacles [optics]; spectacle temples; spectacle cases; spectacle lenses; eyewear pouches; spectacle holders; spectacle frames; eyewear cases; optical glasses; polarizing spectacles; eyewear; prescription eyewear; unmounted spectacle frames; corrective eyewear; frames for spectacles and sunglasses; cases for spectacles and sunglasses; eyeglass cases; bars for spectacles; eyeglass chains; parts for spectacles; spectacle frames made of metal; spectacle frames made of plastic; protective eyewear; spectacle frames made of metal and of synthetic material; spectacle frames made of a combination of metal and plastics; spectacle frames made of metal or of a combination of metal and plastic; sunglasses; cases for sunglasses; chains for sunglasses; frames for sunglasses; lenses for sunglasses; straps for sunglasses; clip-on sunglasses; optical lenses for use with sunglasses; chains for spectacles and for sunglasses and the opponent's goods are dissimilar.

The rest of the contested goods in Class 9, namely cases adapted for mobile phones; in-ear headphones; and headsets have no relevant connections with the opponent’s goods either. The contested cases adapted for mobile phones are mainly covers for electronic devices used to protect them from scratches, stains, dirt, etc. Headphones and headsets are electrical devices worn over or inside the ears to allow a person to listen to music, radio, etc. without anyone else hearing. The goods have clearly different natures and purposes. Furthermore, such goods are commonly offered in specialised shops and do not originate from the same undertakings. Neither are they in competition. Therefore, they are dissimilar.

Contested goods in Class 18

The contested bags, wallets and other carriers may be related to articles of clothing in Class 25. This is because consumers are likely to consider some of the goods of Class 18 as accessories that complement articles of clothing as the former are closely co-ordinated with the latter. It must be noted that the contested other carriers cover goods such as coin purses, credit card holders or cases for holding keys that are considered as accessories that complement articles of clothing. Furthermore, the applicant’s bags, wallets and other carriers may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market such related goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar to the opponent’s articles of clothing in Class 25 under European trade mark registration No 4 947 776.

The rest of the contested goods in Class 18, luggage; umbrellas and parasols, are dissimilar to the opponent’s goods. The goods under comparison differ in their nature, purpose and producer. They are neither complementary nor in competition.

Contested goods in Class 25

The contested clothing; headgear; footwear are identically contained in the opponent's list of goods under European trade mark registration No 4 947 776.

The contested hats are included in the broad category of the opponent’s headwear (European trade mark registration No 1 150 465) and headgear (European trade mark registration No 4 947 776). Therefore, they are identical.

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 found to be identical or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

URBAN OUTFITTERS European trade mark registration No 1 150 465	URBAN REPUBLIQ
URBAN RENEWAL European trade mark registration No 4 947 776
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused as to origin due to similarities that solely pertain to non-distinctive elements.

The common element ‘URBAN’ of the earlier mark is understood in part of the EU such as by the English-speaking public, as belonging to, or relating to, a town or city. However, this element is not meaningful in certain other territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as Lithuania and Poland (although in Poland it is a male name) where the common element 'URBAN' has no meaning in relation to the relevant goods and is therefore distinctive. This is also the case for the second verbal elements of the earlier marks, 'OUTFITTERS' and 'RENEWAL' which will be perceived as meaningless and distinctive by the part of the public taken into account.

The second verbal element of the contested sign, 'REPUBLIQ' is an obvious misspelling of the English word republic which is a form of government in which the people or their elected representatives possess the supreme power. Considering that the equivalent Lithuanian word is spelled similarly (respublika) a major part of the Lithuanians will understand the meaning of this word. However, the word has no meaning in relation to the relevant goods and is therefore distinctive. For the Polish speaking public this word has no meaning and is equally distinctive.

Visually and aurally, the signs coincide in the distinctive verbal element ‘URBAN’ as the first element of all signs. However, they differ in their respective second verbal elements, ‘OUTFITTERS’ and ‘RENEWAL’ in the earlier marks and ‘REPUBLIQ’ in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the statements made above regarding the meanings of the signs and the elements of which they are composed.

Part of the public in the relevant territory (i.e. the Polish-speaking part of the public) will perceive the first word ‘URBAN’ of the earlier marks and the contested sign as a male name while the  rest of the elements in the marks have no meaning. To that extent, the signs are conceptually similar to an average degree on account of the meaningful element ‘URBAN’.

For the other part of the public (i.e. the Lithuanian-speaking part of the public) only the second verbal element of the contested sign has a meaning, as explained above but the earlier signs have no meaning in that territory. Since the earlier signs will not be associated with any meaning, the signs are not conceptually similar.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous factors and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are partly identical, partly similar and partly dissimilar. The goods are directed at the public at large with an average degree of attention. Furthermore, the earlier marks are considered to enjoy an average degree of distinctiveness. Additionally, the marks in dispute have been found visually and aurally similar to an average degree and, for a part of the public, conceptually similar to an average degree. For the rest of the public the signs are not conceptually similar.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

All signs share the identical verbal element, ‘URBAN’, located in the beginning of all marks. They have different second verbal elements that have no meaning in relation to the relevant goods. Taking into account the consumer’s imperfect recollection and the importance of the beginning of the signs it is likely that consumers will conclude that the goods labelled with the contested sign come from the same undertaking or economically linked undertakings as those labelled with the earlier marks considering that they share identical beginnings, which are independent and distinctive elements in the marks. The differences in their respective endings are not sufficient to outweigh the similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European trade mark registrations. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Benjamin Erik WINSNER

Martina GALLE

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.