Hammer falls on ANVIL Case

European Union
In Anvil Knitwear Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-179/07, September 24 2008), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had rejected an opposition against the registration of the figurative mark APRILE.
In 2004 Aprile e Aprile Srl, an Italian fashion label, filed an application for the registration of a logo consisting of an ornate coat of arms and the motto 'Aprile' in gothic script. The application covered goods in Classes 18 and 25 of the Nice Classification, namely “leather and leather goods” and “clothing including apparel”.
Anvil Knitwear Inc, a New York-based designer and manufacturer of casual clothing, opposed Aprile’s application on the grounds that there was a likelihood of confusion with ANVIL, an earlier word mark registered in Germany. The Opposition Division of OHIM rejected the opposition on the grounds that the marks were not identical or similar. Anvil appealed to the Second Board of Appeal of OHIM.
In one of its more critical judgments, the board concurred with the Opposition Division in its findings and dismissed Anvil’s appeal, holding that “no sane person with sound powers of sight and hearing” would ever confuse the two marks.
Anvil appealed to the CFI, alleging that the board had infringed Articles 8(1)(b), 73 and 74 of the Community Trademark Regulation (40/94) in making its decision.
In particular, Anvil argued that the ANVIL and APRILE marks were similar under Article 8(1)(b) on the following grounds: ­       
  • The word element of Aprile’s mark and the ANVIL mark both consisted of a single word of similar length. They both began with the letter 'A' and had the letters 'il' near the end.
  • Since the marks were attached to fashion items, which may be purchased on the basis of oral recommendations rather than by sight, emphasis should be placed on the word elements.
  • ­The two marks were similar on a phonetic level.
As a result, there was a likelihood of confusion between the marks.
Anvil also argued that the board had breached Article 73 of the regulation because, in rejecting the appeal, it had failed to state the reasons on which its decision was based and did not examine the arguments put forward by Anvil. In addition, Anvil contented that, under Article 74, the board should have considered only the facts, evidence and arguments provided by the parties in this matter. As Aprile did not dispute Anvil’s arguments or facts at any stage during the proceedings, the board should have based its decision solely on the uncontested facts put forward by Anvil.
The CFI considered Anvil’s pleas but rejected the case on all counts.
With regard to the plea under Article 8(1)(b), the CFI held that established case law (see Ruiz-Picasso v OHIM (Case C-361/04 P)) suggested that it was necessary to make a holistic comparison of the marks, taking into account visual and phonetic similarity, among other things. The board had compared both marks as a whole and rightly considered the figurative element of Aprile’s mark. Aprile’s mark consisted of a coloured coat of arms with the word 'aprile' in “small fanciful gothic script” underneath, while Anvil’s mark was the word 'anvil'. OHIM had already compared the word elements of both marks with the conclusion that the two could not be confused with each other. Moreover, the CFI concluded that there was no phonetic similarity between ANVIL and APRILE. Since ANVIL was registered in Germany, the CFI found that the German pronunciation of 'anvil' consisted of two syllables ('an-vil'), while 'aprile' consisted of three syllables ('a-pri-le'), making them very different phonetically.
With regard to the plea under Article 73, the CFI held that the board had given reasons for its decision. It had stated that “the gulf between the two marks is so great that they could hardly be further removed from each other”, adding that “no one would ever confuse the [two] words”.
With regard to the plea under Article 74, the CFI stated that while the board could not examine facts of its own motion, it did not have to accept uncontested points put forward by Anvil. Article 74 was binding on the board in relation to facts, evidence and observations. However, the similarity (or lack of similarity) between the two marks constituted a factual assessment (not a fact) under Article 74(1), and the board was free to make its own assessment in this regard.
Although the case involved some interesting legal reasoning (particularly the CFI’s discussion on the alleged breach of Article 73), the decision was unsurprising because the logo element of Aprile’s mark was dominant and the word elements of the two marks appeared to have little similarity. 
Geoff Chan, Hammonds LLP, London

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