OPPOSITION No B 2 709 361

Fitnesstwentyfour szellemi alkotas kezelö Kft, Budapest, Magyar u. 36, 1053, Hungary (opponent), represented by Cabinet Nithardt et Associés SA, 14, bd Alfred Wallach, 68071 Mulhouse Cédex, France (professional representative)

a g a i n s t

Adm Wild Europe GmbH & Co. KG, Rudolf-Wild-Str. 107-115, 69214 Eppelheim, Germany (applicant), represented by Grünecker Patent- Und Rechtsanwälte Partg MBB, Leopoldstr. 4, 80802 München, Germany (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 361 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 15 036 205 for the sign . The opposition is based on international trade mark registration No 961 515 for the figurative mark designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 25/01/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 25/01/2011 to 24/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 5: Pharmaceutical and sanitary preparations.

Class 25: Clothing, footwear.

Class 28: Gymnastics articles not included in other classes.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes, eggs, milk and milk products, edible oils and fats.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 35: Advertising, business management.

Class 41: Education, training, entertainment, sporting and cultural activities.

Class 43: Restaurant services.

Class 44: Medical, sanitary and beauty care.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 11/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/10/2016 to submit evidence of use of the earlier trade mark. On 15/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Extracts from the opponent’s web page dated 2014, with information on locations and timetables of fitness clubs in Albury Wodonga and Lavington (Australia).

• Extracts from Instagram’s and Facebook’s web pages with photos of the opponent’s fitness centres. The places and the year in the dates are not indicated.

• Google’s map searches for ‘fitness24seven Denmark’, ‘fitness24seven Finland’, ‘fitness24seven Norway’ and ‘fitness24seven Sweden’ giving three undated results each.

• Extracts from the opponent’s web page in Swedish dated 2015, with information on the opponent’s fitness club in Helsingborg.

• Extracts from the opponent’s web page in Finnish dated 2015.

• Extracts from the opponent’s web page in Norway dated 2015, with information on the opponent’s fitness club in Oslo.

• Extracts from the opponent’s web page in Swedish undated, with information on the opponent’s fitness club in Stockholm.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, the extracts from the opponent’s web pages with country codes corresponding to Sweden and Finland, and cities in these countries, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The extracts from the opponent’s web pages show that, in Europe, the places of use are Sweden and Finland. This can be inferred from the country codes (‘SV’ and ‘FI’ corresponding to Sweden and Finland), the language of the documents (Swedish and Finnish), the currency mentioned (KR or €/KK) or the cities of Helsingborg and Stockholm in Sweden. Therefore, part of the evidence relates to the relevant territory.

The extracts from Instagram’s and Facebook’s web pages do not indicate the year but at least, the extracts from the opponent’s web pages in two European countries, Sweden and Finland, are dated in 2015, within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The photos from Instagram’s, Facebook’s and particularly, the opponent’s web pages prove that the opponent run in 2015 fitness clubs at least in two EU countries (Sweden and Finland), identifying the fitness clubs at issue with its earlier trade mark. Therefore the evidence provides the Opposition Division the minimum information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Use of the mark need not be quantitatively significant for it to be deemed genuine.

The evidence submitted by the opponent in order to prove genuine use of the earlier mark relates exclusively to Sweden and Finland. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the mark is often represented as an Internet address, ‘fitness.24.seven.com’, but its registered form is also visible at the end of the extracts from the opponent’s web pages although the image is very dark.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the relevant documents demonstrate that the opponent runs fitness clubs, but there is no indication whatsoever about other goods and services. It is true that in some fitness centres, users can buy clothing, footwear, gymnastics articles, food and beverages, but the public will normally not think that these goods are produced by the same firm that provides fitness installations. The same can be concluded as regards the services of advertising, business management, education, entertainment, cultural activities, restaurant, medical, sanitary and beauty care. The public can find these services in fitness centres, but they are usually provided by third companies mediating a services provision contract with the owner of the fitness centre. In any case, and more importantly, the evidence does not show use of the sign for these additional goods and services, but only in relation to the fitness centres as such. 

According to case-law, when applying the abovementioned provision the following should be considered: if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories. (14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for fitness clubs, belonging to the following category in the specification: training, sporting activities. As the opponent is not required to prove all the conceivable variations of the category of services for which the earlier mark is registered and as the services for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for training, sporting activities.

Therefore, it is considered that the evidence shows genuine use of the trade mark for the following services:

Class 41: Training, sporting activities.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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 services on which the opposition is based are the following:

Class 41: Training, sporting activities.

The contested goods are the following:

Class 29: Fruit preparations for making pastry and confectionery, sweets and edible ices; Fruit pulp; Fruit paste; Fruit jellies; Fruit-based snack food; Fruit desserts.

Class 30: Coffee, tea, cocoa and chocolate drinks; Iced tea; Edible ices; Preparations for ices for home-freezing; Water ice; Mixtures for making water ices; Fruit syrup; Fruit sauces; Cereal preparations for food; Confectionery and chocolate goods, including the aforesaid goods in bar form; Pastry and confectionery, in particular including filled waffles and biscuits with creme filling; Concentrates and extracts of fruits, vegetables and other plants for food manufacture; Essences and flavourings (other than essential oils) for the food and drink industry.

Class 32: Non-alcoholic beverages; Mineral water [beverages]; Carbonated non-alcoholic drinks; Fruit drinks; Juices; Fruit nectars; Vegetable juices [beverages]; Vegetable juice; Smoothies; Syrups, and bases and essences for making non-alcoholic beverages, included in class 32.

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.

The opponent’s services are rendered by persons or institutions to develop the physical conditions of people.

The contested goods are food (fruits in Class 29 and ices, pastry and confectionery in Class 30) and beverages (coffee, tea, cocoa and chocolate drinks in Class 30 and non-alcoholic beverages, mineral water, carbonated non-alcoholic drinks, fruit and vegetable drinks, juices and nectars in Class 32).

These sets of goods and services differ in nature, intended purpose and method of use. They do not have the same producers, providers or distribution channels and are neither in competition, nor complementary. Consumers will not think that responsibility for the production of the contested food and drinks and the provision of the services of training and sporting activities lies with the same undertaking. Therefore, all the contested goods are dissimilar to the opponent’s services.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Gueorgui IVANOV

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.