OPPOSITION No B 2 738 469

Ansa NV, Wannegem-Ledestraat 36, 9772 Wannegem-Lede, Belgium (opponent), represented by Bureau De Rycker, Arenbergstraat, 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

The Makers B.V., Liesboslaan 291, 4838 EV Breda, The Netherlands, (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 738 469 is upheld for all the contested goods, namely:

Class 25: Clothing, footwear, headgear.

2.        European Union trade mark application No 15 162 911 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 162 911 in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 36 079. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 36 079.

1. The goods

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

Class 25: Clothing, headgear; all these products of Belgian origin.

The contested goods are the following:

Class 25: Clothing, footwear, headgear.

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 25

The contested clothing, headgear include, as broader categories the opponent’s clothing, headgear; all these products of Belgian origin respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Footwear of the contested goods serves the same purposes as clothing of the goods of the earlier mark: both are used for covering and protecting parts of the human body and as fashion items. They are often found in the same retail outlets. Consumers looking for clothes will often expect to find footwear in the same department of shop and vice versa. Moreover, many manufacturers and designers design and produce both clothing and footwear. Therefore, the goods are similar.

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 and similar, are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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.

The common element of the signs ‘ANVERS’, which is the name of the Dutch city Antwerp in French, is not meaningful in certain territories of the European Union, for example, for the English-speaking part of the public. Consequently, as this represents scenario where the word ‘ANVERS’ is distinctive, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark comprises the word ‘ANVERS’ in upper case and standard font. The contested sign contains the expression ‘Couture D’ANVERS’, written in two lines and a stylized image of horizontally positioned scissors.

Even though the word ‘Couture’ of the contested sign is of French origin, the relevant public will associate it with the expression ‘haute couture’ due to its widespread use in fashion industry. Moreover, the word ‘couture’ has been incorporated into numerous languages, including among others into English language. It has the meaning of ‘the design and manufacture of fashionable clothes to a client’s specific requirements and measurements’; ‘fashionable made-to-measures clothes’ (Oxford English Dictionary). Accordingly, this element of the contested signs will be directly associated by consumers with the characteristics of the goods and namely that these are high-fashion design clothes, footwear or headgear. In view of this the element would be directly descriptive of characteristics of the goods of Class 25 and therefore – non-distinctive (25/10/2016, R 550/2016-4, COUTURE BY KRANZ & ZIEGLER (fig.) / TISSOT COUTURIER, § 14).

The common element of the signs ‘ANVERS’ will be meaningless for the English-speaking part of the public. The Opposition Division does not support the argument of the applicant that the word ‘ANVERS’ is of a low degree of distinctiveness because it will be associated by the public with the city of Antwerp, which is famous for centuries with its fashion industry. In view of the differences in the name of the city in the different languages (e.g. ‘Anvers’ in French, ‘Antwerp’ in English, ‘Antwerpen’ in Dutch), it is not likely and the applicant has not submitted any evidence to prove this, that consumers coming from non-French speaking countries know as a rule the name of the city in French. Accordingly, the word ‘ANVERS’ is considered to be with normal degree of distinctiveness with respect to the goods in question.

The element ‘D’ before ‘ANVERS’ in the contested sign will be meaningless for the English-speaking consumers and will not lead to any associations as to characteristics of the goods. The stylised image of scissors in the contested sign will create associations with cutting and artisanal work and will therefore be allusive of the goods in question. It is to be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). This premise fully applies to the contested sign.

Given the above considerations, it is the expression ‘D’ANVERS’ that is the most distinctive part of the sign. In view of its position and the size of the letters, together with the scissors device ‘D’ANVERS’ further dominates the overall impression created by the contested mark.

Visually, the signs coincide in the element ‘ANVERS’, written in upper case. The marks differ in the additional elements in the contested sign, and in particular the non-distinctive word ‘Couture’ written with smaller letters, the element ‘D’ followed by an apostrophe before ‘ANVERS’ and the image of scissors, which is allusive of the relevant goods. The identified differences are not sufficient to outweigh the similarities of the signs, triggered by their common element, which comprises the earlier mark and is entirely contained in the co-dominant and distinctive element of the contested sign. Therefore, the signs are similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters of their common element ‘ANVERS’. The pronunciation differs in the remaining word elements of the contested sign ‘Couture D’, which have no counterparts in the earlier sign. Therefore, the signs are similar to an average degree.

Conceptually, although the contested signs would be associated with a meaning of some of its elements by the relevant public, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Furthermore, the concepts pertinent to the meaningful elements of the contested sign have a diminished impact due to their low distinctiveness.

Since 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. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

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).

It was established that ‘ANVERS’, which alone constitutes the earlier mark, is entirely contained in the most distinctive and co-dominant element of the contested sign. The signs were found to be visually similar to a high degree, aurally similar to an average degree and conceptually not similar. The relevant goods are identical and similar and are targeted at the public in general, which shows an average degree of attention. The earlier sign has a normal degree of distinctiveness.

It is to be taken into account that, in clothes shops customers can themselves either choose the clothes 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). Therefore, the established high degree of visual similarity between the signs is particularly relevant when assessing the likelihood of confusion between them and this premise also extends to the related retail services.

In view of the above, the relevant factors support the finding that a likelihood of confusion may exist on the part of the English-speaking part of the public if the two signs are used for identical and similar goods. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 36 079. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 36 079 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.