OPPOSITION No B 2 701 699

OTCF S.A., ul.Grottgera 30, 32-020 Wieliczka, Poland (opponent), represented by Anna Maja Sokołowska-Ławniczak, ul. Twarda 4, 00-105 Warszawa, Poland (professional representative)

a g a i n s t

Viola-Melisande Ambrosius, Kamener Str. 110, 59425 Unna, Germany (applicant), represented by Kalkoff & Partner Patentanwälte, Martin-Schmeisser-Weg 3a-3b, 44227 Dortmund, Germany (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 699 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 651 095 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 651 095. The opposition is based on, inter alia, European Union trade mark registration No 11 715 513. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark and on more than one ground. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark No 11 715 513 on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM 11 715 513, for which the opponent claimed reputation in Poland.

The goods on which the opposition is based and for which reputation is claimed are the following:

Class 1:        Leather-impregnating chemicals; Leather-impregnating chemicals; Leather-waterproofing chemicals; Vulcanising preparations; Textile-brightening chemicals.

Class 3:        Antiperspirants [toiletries]; non-medical stimulating lotions for the skin; Moisturising body lotion [cosmetic]; Sun block lotions; After sun lotions; Self-tanning lotions (cosmetics); Balms other than for medical purposes; Cleaning preparations; Deodorants for human beings or for animals; Deodorants for personal use in the form of sticks; Roll-on deodorants [toiletries]; Deodorant soap; Soap for foot perspiration; Soaps for household use; Disinfectant soap; Antiperspirant soap; Antiperspirant soap; Deodorant soap; Soaps for the hand; Soaps; Anti-bacterial soap; Deodorant soap; Disinfectant soap; Shaving soap; Shaving preparations; Cosmetic preparations for baths; Eau de Cologne; Eau de Cologne; Leather preservatives [polishes]; Cosmetics; Cosmetic preparations for slimming purposes; Cosmetic kits; Cosmetics for skin tanning; Sun barriers (cosmetics); Cosmetics, sun creams; Skin balms (cosmetic); After-sun gels (cosmetics); Cosmetics in the form of gels; After-sun oils (cosmetics); Tanning oils [cosmetics]; Cosmetic creams; Cleansing milk for toilet purposes; Cleansing milk for toilet purposes; Detergent liquid for cosmetic purposes; Cakes of soap; Medicated soap; Shoe polish; Perfumes; Laundry preparations; Dry shampoos; Shampoos; Shampoos for the hair; Toiletries; Astringents for cosmetic purposes; Lipsticks; Toilet water; Toilet water; Sun-tanning preparations [cosmetics]; Sun tan oils; Hydrogen peroxide for cosmetic purposes; Scented water; Scented water; Stain removers; Cosmetic kits; Sunscreen preparations.

Class 4:        Grease for boots; Grease for boots; Spray lubricants.

Class 9:        Eyeglass cases; Sunglass cases; Goggles for sports; Swimming goggles; Glacier glasses; Protective helmets for sports; Riding helmets; Riding helmets; Protection helmets for sports; Crash helmets for cyclists; Diving suits; Teeth protectors; Divers' masks; Protective masks; Swim masks; Goggles for sports; Sunglasses; Snow goggles; Cyclists' glasses; Swimming goggles; Protective goggles for diving; Polarizing spectacles; Sports glasses; Spectacle frames; Personal stereos; Sleeves for laptops; Speed checking apparatus for vehicles; Portable media players; Bags adapted for laptops; Cell phone straps; Speed indicators; Bags for sports adapted (shaped) for protective helmets; Diving suits; Gloves for divers.

Class 18:        Covers (bags) for sports equipment; Key cases; Hiking poles; Travelling sets [leatherware]; Travelling bags; Travelling trunks; Trunks [luggage]; Straps for skates; Beach bags; Beach bags; Beach umbrellas; Backpacks; Backpacks; Bags for campers; Purses; Chain mesh purses; School bags; School bags; School bags; School bags; School bags; School book bags; Briefcases; Pouches, of leather, for packaging; Travelling bags; Garment bags for travel; Garment bags for travel; Net bags for shopping; Travelling bags; Shopping bags; Bags; Bags for sports; Bum-bags; shoulder bags; Suit cases; Suitcase handles; Cases, of leather or leatherboard; Net bags for shopping; Net bags for shopping; Shoe bags; Hiking sticks; Suitcases; Trunks and travelling bags; Attaché cases; Attaché cases; Briefcases; Haversacks; Haversacks; Sling bags for carrying infants; Pouch baby carriers; Leather strips; Pouches, of leather, for packaging; Wheeled shopping bags; Bags for climbers; Bags for campers; All purpose sports bags; All-purpose athletic bags; Carry-on luggage; Bags for hikers; Rucksacks for mountaineers; Pocket wallets; Umbrella or parasol ribs; Parasols; Handbags; Valises.

Class 24:        Lingerie fabric; Bath linen, except clothing; Diapered linen; Towels of textile; Face towels of textile; Sleeping bags [sheeting]; Elastic woven material; Fabric; Plastic material [substitute for fabrics].

Class 25:        Wet suits for water-skiing; Ski bibs; Ski suits for competition; Snow boarding suits; Wrist warmers; Ankle warmers; Hiking boots; Beach shoes; Beach clothes; Beach shoes; Underwear; Anti-sweat underwear; Non-slipping devices for footwear; Non-slipping devices for footwear; Bandanas [neckerchiefs]; Brassieres; Smocks; Sports jumpers; Hooded sweatshirts; Football jerseys; Track suit tops; Boots; Shoes; Ski boots; Football boots; Ski boots; Studs for football boots; Lace boots; Boots for sports; Boots for snowboarding; Footwear uppers; Boot uppers; Bathing caps; Bathing caps; Cap peaks; Visors [headwear]; Peaked headwear; Wooden shoes; Knitwear [clothing]; Spats; Galoshes; Hats; Rain hats; Bathing trunks; Pockets for clothing; Smocks; Swimsuits; Studs for football boots; Shirts; Short-sleeve shirts; Casual shirts; Casual shirts; Singlets; Singlets; Jackets [clothing]; Parkas; Water proof jackets; Ski jackets; Quilted coats; Cagoules; Stuff jacket (clothing); Sports jackets; Wind-cheaters; Leg warmers; Pants; Babies' pants [clothing]; Gymnastic shoes; Football boots; Footwear; Gymnastic shoes; Athletic shoes; Sports shoes; Shoes for casual wear; Sneakers [footwear]; Muffs [clothing]; Gloves [clothing]; Belts [clothing]; Combinations [clothing]; Ear muffs [clothing]; Hoods [clothing]; Motorists' clothing; Headbands [clothing]; Clothing of leather; Clothing for gymnastics; Clothing of imitations of leather; Money belts [clothing]; Waterproof clothing; Outerclothing; Cyclists' clothing; Nightshirts; Jogging tops (clothing); Jogging suits (clothing); Jogging sets [clothing]; Denim clothing; Articles of sportswear; Exercise wear; Footmuffs, not electrically heated; Topcoats; Topcoats; Bath slippers; Slippers; Pelerines; Bath robes; Soles for footwear; Tee-shirts; Vests; Inner soles; Half-boots; Ski gloves; Mittens; Bath sandals; Sandals; Socks; Sports socks; sweat socks; Underpants; Bathing trunks; Trousers; Water proof pants; tracksuit trousers; Jogging pants; Cycling pants; Cloth ski bibs; Sports pants; Skirts; Skorts; Camisoles; Swimsuits; Beach clothes; Dresses; Tennis dresses; Sweaters; Shawls; Scarfs; Teddies [undergarments]; Tee-shirts; Loungewear; Articles of clothing for casualwear; Infantwear; Cyclists' clothing; Footwear; Caps [headwear]; Headgear for wear; Sweatbands; Headbands against sweating; Headbands [clothing].

Class 27:        Gymnasium mats; Gymnasium mats; Mats.

Class 28:        Pads for use in sports; Protectors for the knees for use when skateboarding (sports articles); Athletic protective wrist pads for skateboarding; Leg guards for sports use; Athletic protective wrist pads for skating; Athletic protective wrist pads for cycling; Shins pads for sports use; Hand protectors adapted for sporting use; Wrist guards for sports use; Shaped covers for ski poles; Tennis racket covers; Shaped covers for skis; Covers (not fitted) for table tennis rackets; Covers for rackets (for tennis or badminton); Stationary exercise bicycles; Ice skates; Skating boots with skates attached; Beach balls; Bags especially designed for skis and surfboards; Bags especially designed for skis and surfboards; Golf bags, with or without wheels; Swimming pools [play articles]; Boxing gloves; Boxing gloves; Surf boards; Snowboards; Swimming kick boards; Sailboards; Bags especially designed for skis and surfboards; Surfboard leashes; Harness for sailboards; Skateboards; Bladders of balls for games; Exercisers [expanders]; Body-building apparatus; Body-building apparatus; Bar-bells; Hockey sticks; Hockey pucks; Swimming jackets; Rackets; Golf clubs; Rackets; Golf clubs; In-line roller skates; Rackets; Strings for rackets; Snowshoes; Gut for rackets; Tennis rackets; Squash racket covers; Squash rackets; Shin guards [sports articles]; Knee guards [sports articles]; Wax for skis; Ski bindings; Sole coverings for skis; Skis; Surf skis; Edges of skis; Waterskis; Ski cases; Elbow guards [sports articles]; Protective paddings [parts of sports suits]; Balls for games; racquet balls; Volley balls; European footballs; Basket balls; Flippers for swimming; Flippers for swimming; Water wings; Weight lifting belts [sports articles]; Boxing gloves; Baseball gloves; Golf gloves; Boxing gloves; Batting gloves [accessories for games]; Golf gloves; Fencing gloves; Fencing gloves; Football gloves; Weight lifting gloves; bowling gloves; Hockey gloves; Water wings; Ring games; Roller skates; Sleighs [sports articles]; Nets for sports; Sole coverings for skis; Tables for table tennis; Stationary exercise bicycles; Stationary exercise bicycles; Stationary exercise bicycles; Punching bags; Wax for skis; Masts for sailboards; Gut for rackets; Exercise treadmills.

The contested goods and services are the following:

Class 14:        Precious metals and their alloys, included in class 14; Works of art of precious metal or works of art coated therewith, imitations of works of art of precious metal; Jewels; Paste jewellery [costume jewelry (Am.)]; Precious stones; Horological and chronometric instruments; Watchstraps; Bracelets [jewelry].

Class 18:        Leather and imitations of leather (included in class 18); Bags, handbags, vanity cases, not fitted, briefcases, trunks and travelling bags, travelling sets (leatherware), travel bags, bags for sports, backpacks, document cases, slings for carrying infants, beach bags, pocket wallets, bags for campers, bins and cases of leather or leatherboard, boxes of leather or leatherboard, net bags for shopping, shopping bags, purses (money pouches), hat boxes of leather, sling bags for carrying infants, garment bags for travel, umbrellas, parasols, key cases, school satchels, leather shoulder straps, walking sticks, wheeled shopping bags, haversacks, pouches, of leather, for packaging, tool bags of leather, empty; Animal skins, hides; Clothing for pets.

Class 24:        Fabrics, Textile products, Substitutes for fabrics, Household linen (included in class 24); Bed and table covers; Screening fabrics.

Class 25:        Clothing, footwear, headgear.

Class 27:        Mats; Carpets; Mats.

Class 35:        Bringing together, for the benefit of others (excluding the transport thereof), of a variety of goods for presentation and sales purposes, enabling consumers to view and purchase those goods, wholesaling and retailing, including via the internet, relating to precious metals and their alloys, works of art of precious metal or works of art coated therewith, imitations of works of art of precious metal, jewellery, costume jewellery, precious stones, horological and chronometric instruments, watch straps, bracelets (jewellery), leather and imitations of leather, bags, handbags, vanity cases, not fitted, briefcases, trunks and travelling bags, travelling sets (leatherware), travel bags, bags for sports, backpacks, document cases, slings for carrying infants, beach bags, pocket wallets, bags for campers, bins and cases of leather or leatherboard, boxes of leather or leatherboard, net bags for shopping, shopping bags, purses (money pouches), hat boxes of leather, sling bags for carrying infants, garment bags for travel, umbrellas, parasols, key cases, school satchels, leather shoulder straps, walking sticks, wheeled shopping bags, haversacks, pouches, of leather, for packaging, tool bags of leather, empty, animal skins, hides, clothing for pets, textiles, textile goods, textile substitutes, household linen, bed covers, table covers, screening fabrics, clothing, footwear, headgear, carpets, rugs, mats and matting; Arranging and conducting of advertising events; Marketing, marketing studies and market analysis; Updating of advertising material; Distribution of products for advertising purposes; On-line advertising on a computer network; Exhibitions for commercial or advertising purposes; Presentation of companies on the Internet and other media; Organisation of trade fairs for commercial or advertising purposes; Public relations services; Arranging of contracts, for others, for the buying and selling of goods or the providing of services, in particular via networks, including the Internet; Presentation of goods and services on websites accessed via networks; Presentation of goods and services, for others, on the Internet; Arranging contracts, for others, for the selling of goods, including via the Internet, online shops or teleshopping channels; Organizational and business advice for franchise concepts.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The Opposition Division will first examine the reputation claimed by the opponent for the earlier mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Poland.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 06/10/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely for the goods covered by the earlier trade mark in Classes 1, 3, 4, 9, 18, 24, 25, 27 and 28. That includes the following goods in Class 25:

Wet suits for water-skiing; Ski bibs; Ski suits for competition; Snow boarding suits; Wrist warmers; Ankle warmers; Hiking boots; Beach shoes; Beach clothes; Beach shoes; Underwear; Anti-sweat underwear; Non-slipping devices for footwear; Non-slipping devices for footwear; Bandanas [neckerchiefs]; Brassieres; Smocks; Sports jumpers; Hooded sweatshirts; Football jerseys; Track suit tops; Boots; Shoes; Ski boots; Football boots; Ski boots; Studs for football boots; Lace boots; Boots for sports; Boots for snowboarding; Footwear uppers; Boot uppers; Bathing caps; Bathing caps; Cap peaks; Visors [headwear]; Peaked headwear; Wooden shoes; Knitwear [clothing]; Spats; Galoshes; Hats; Rain hats; Bathing trunks; Pockets for clothing; Smocks; Swimsuits; Studs for football boots; Shirts; Short-sleeve shirts; Casual shirts; Casual shirts; Singlets; Singlets; Jackets [clothing]; Parkas; Water proof jackets; Ski jackets; Quilted coats; Cagoules; Stuff jacket (clothing); Sports jackets; Wind-cheaters; Leg warmers; Pants; Babies' pants [clothing]; Gymnastic shoes; Football boots; Footwear; Gymnastic shoes; Athletic shoes; Sports shoes; Shoes for casual wear; Sneakers [footwear]; Muffs [clothing]; Gloves [clothing]; Belts [clothing]; Combinations [clothing]; Ear muffs [clothing]; Hoods [clothing]; Motorists' clothing; Headbands [clothing]; Clothing of leather; Clothing for gymnastics; Clothing of imitations of leather; Money belts [clothing]; Waterproof clothing; Outerclothing; Cyclists' clothing; Nightshirts; Jogging tops (clothing); Jogging suits (clothing); Jogging sets [clothing]; Denim clothing; Articles of sportswear; Exercise wear; Footmuffs, not electrically heated; Topcoats; Topcoats; Bath slippers; Slippers; Pelerines; Bath robes; Soles for footwear; Tee-shirts; Vests; Inner soles; Half-boots; Ski gloves; Mittens; Bath sandals; Sandals; Socks; Sports socks; sweat socks; Underpants; Bathing trunks; Trousers; Water proof pants; tracksuit trousers; Jogging pants; Cycling pants; Cloth ski bibs; Sports pants; Skirts; Skorts; Camisoles; Swimsuits; Beach clothes; Dresses; Tennis dresses; Sweaters; Shawls; Scarfs; Teddies [undergarments]; Tee-shirts; Loungewear; Articles of clothing for casualwear; Infantwear; Cyclists' clothing; Footwear; Caps [headwear]; Headgear for wear; Sweatbands; Headbands against sweating; Headbands [clothing].

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents (for ease of reference, the Opposition Division is using the numerical order as marked on the evidence submitted by the opponent):

Document 1:        Corporate documents,

Documents 2-4:        Trade mark certificates of the Polish trade marks No 189 075,

No 249 750 and No 265 762,

Document 5:        4F brand presentations, which show inter alia Polish professional athletes wearing 4F sportswear articles and show examples of advertising campaigns,

Document 6:        OTCF statement with regard to income of OTCF generated from the sales of goods bearing the 4F trademarks in Poland in the years 2006 -2015,

Document 7:        OTCF statement regarding 4F shops and photographic documentation from stores opening across Poland,

Document 8-10: Press releases ‘4F continues to grow in Poland’, ‘Remodelling and new openings. The May sport store offensive’ and ‘A new 4F store’, all dated 04/05/2016 (after the filing date of the contested mark),

 Document 11:        Sample sales invoices Europe 2006-2015,

 Document 12:        The opponent claimed to have submitted an OTCF statement with regard to annual turnover of the 4F online store in the years 2012, 2013 and 2014, However, the folder was empty and such material was not submitted.

Document 13:        OTCF statement with regard to income of OTCF generated from the sales of goods bearing the 4F trademarks outside Poland in years 2006-2015,

Document 14:        Presentation of the overseas 4F brand stores in Latvia, Czech Republic, Romania and Slovakia,

Document 15:        Press release ‘Romanian Chic with a Polish Label’ about 4F entering the Romanian market OTCF company profile presentations,

Document 16:        OTFC company profile presentations,

Document 17:        Presentation on 4F sponsorship activity and cooperation with professional athletes,

Document 18:        Sample advertising, promotional, marketing and sponsor videos all in relation to articles of sportswear,

Document 19:        Press release ‘Polish outfits at the opening ceremony of the Summer Olympic Games in Rio de Janeiro’, dated 09/08/2016,

Document 20:        Press release ‘Polish company clothes three Olympic teams’, dated 08/08/2016,

Document 21:        The Polish Olympic Team Rio de Janeiro 2016 collection event video report,

Document 22:        The Polish Olympic Tram Rio de Janeiro 2016 collection clippings report,

Document 23:        The Latvian Olympic Team Rio de Janeiro collection event clipping report,

Document 24: Summary of the Olympic Rio de Janeiro collection media presence,

Document 25:        Press releases media reports 2007-2016 about that the Polish Olympic Athletes are equipped by 4F,

Document 26:        Decision of the EUIPO dated 12/12/2016 concluding reputation of the earlier mark 4F EUTM No 11 715 513,

Document 27:        Excerpts of Pentagon survey reports ‘Sportswear Market in Poland – 4F Brand’, dated 20/02/2015 according to which, inter alia, the spontaneous sportswear manufacturers’ brand recognition lies at 35% in Poland. The methodology that was used for the survey is also provided.

Document 28:        Pentagon survey report ‘Sportswear Market in Poland. 4F against its Competitors’, dated 23/04/2013, the methodology that was used for the survey is also provided.

Document 29:        Sample marketing, advertising, promotion and sponsorship invoices – sponsorship of the Polish Olympic Committee, ski jumper Adam Malzsz, ski jumper Kamil Stoch and the Polish National Television,

Document 30:        OTCF statement on marketing, advertising and promotional expenditure for the years 2006-2014,

Document 31:        Prints screens from: Instagram profile, Youtube channel, website 4F.onet.pl,

Document 32:        4F on Facebook – 4F fanpage book,

Document 33:        Press release ‘Fashion Show for the 4F Rio Olympic Collection’, dated 05/06/2016,

Documents 34-36: ‘4F. Start. Persevere’ (‘4F. Zacznij. Wytrwaj’) brand image campaign analysis February/August 2016, leaflets and Facebook reports of the campaign,

Document 37:        Press release ‘New Face of the 4F ad campaign’ referring to the ‘4F. Start. Persevere’ campaign, dated 12/07/2016,

Document 38:        ‘PLAYERS OF THE YEAR 2015’ ranking by the FORBES magazine,

Document 39:        List of honorees of the Superbrands 2015/2016, according to which 4F is listed as the ‘created in Poland Superbrand’ in the field of sports fashion articles.

Document 40:        Fashion retailer of the Year 2015 certificate,

Document 41:        Awards of the year 2016: Nomination for the Polish President’s Economic Award in the National Success category (November 2016), Award in the Polish Brand category presented by business daily paper (October 2016),

Document 42:        Winter and summer product catalogues from the years 2006-2014,

Document 43:        Sample sales invoices for the years 2006-2015 in Poland,

Document 44:        Google analytics data on the 4F online store visits in the years 2012, 2013 and 2014,

Document 45:        Promotional spots of 4F Brand (Olympic Games London 2012).

On the basis of the above the Opposition Division concludes that the earlier trade mark, as being among the leading brands for sportswear articles in Poland, has a reputation in Poland, at least, for articles of sportswear in Class 25. Due to reasons for procedural economy, the Opposition Division finds it appropriate to not further examine whether reputation has been proven also for the other goods for which reputation was claimed.

Even though some of the documents mentioned postdate the filing date of the contested sign, they are relevant. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. In the present case the independent articles, the media coverage of the ongoing sponsorship of Olympic athletes, the prices the brand ‘4F’ was awarded with, were only available, launched respectively handed out after the relevant period but demonstrate a sufficiently high degree of recognition in combination with the rest of the evidence, sale figures, the marketing expenditure and the brand awareness shown, all unequivocally show that the mark enjoys a high degree of recognition among the relevant public in Poland at least for articles of sportswear in Class 25.  

The applicant did not dispute the reputation of the earlier trade mark.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is European Union.

However, as pointed out above, for the earlier EU trade mark to benefit from the protection provided by Article 8(5) EUTMR, it is sufficient for the reputation to be proven in a substantial part of the relevant territory. Therefore, and as reputation has been proven for the territory of Poland, the analysis below (in the current section and the following sections) will focus on that territory, as fulfilment of the conditions of Article 8(5) EUTMR for this territory will suffice for the opposition based on the earlier EUTM to succeed and the contested sign to be rejected.

The contested sign consists of a heart symbol and the number ‘4’ and the capital letter ‘F’, which will be associated respectively with these meaning by the relevant public. All are depicted in a bold light pink stylised typeface. All elements are distinctive in relation to the relevant goods.

The earlier sign consists of the number ‘4’ and the capital letter ‘F’, both are depicted in a bold black stylised typeface which will be associated respectively with these meaning by the relevant public. Both elements are distinctive in relation to the relevant goods.

Visually, the signs are similar to the extent that they coincide in ‘4F’. However, they differ in their slightly different typefaces, in their colours and in the heart symbol‘’ of the contested sign.

However, bearing in mind 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).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the number ‛4’ and the letter ‛F’ present identically in both signs. The public will not pronounce the heart symbol of the contested sign. Therefore, the signs are aurally identical.

Conceptually, the signs coincide in the concept of the number ‘4’ and the letter ‘F’ and differ in the concept of the heart. Therefore, the signs are conceptually similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of the opposition on the ground of Article 8(5) EUTMR will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The goods for which reputation was proven are the following:

Class 25:        Articles of sportswear.

The contested goods and services are the following:

Class 14:        Precious metals and their alloys, included in class 14; Works of art of precious metal or works of art coated therewith, imitations of works of art of precious metal; Jewels; Paste jewellery [costume jewelry (Am.)]; Precious stones; Horological and chronometric instruments; Watchstraps; Bracelets [jewelry].

Class 18:        Leather and imitations of leather (included in class 18); Bags, handbags, vanity cases, not fitted, briefcases, trunks and travelling bags, travelling sets (leatherware), travel bags, bags for sports, backpacks, document cases, slings for carrying infants, beach bags, pocket wallets, bags for campers, bins and cases of leather or leatherboard, boxes of leather or leatherboard, net bags for shopping, shopping bags, purses (money pouches), hat boxes of leather, sling bags for carrying infants, garment bags for travel, umbrellas, parasols, key cases, school satchels, leather shoulder straps, walking sticks, wheeled shopping bags, haversacks, pouches, of leather, for packaging, tool bags of leather, empty; Animal skins, hides; Clothing for pets.

Class 24:        Fabrics, Textile products, Substitutes for fabrics, Household linen (included in class 24); Bed and table covers; Screening fabrics.

Class 25:        Clothing, footwear, headgear.

Class 27:        Mats; Carpets; Mats.

Class 35:        Bringing together, for the benefit of others (excluding the transport thereof), of a variety of goods for presentation and sales purposes, enabling consumers to view and purchase those goods, wholesaling and retailing, including via the internet, relating to precious metals and their alloys, works of art of precious metal or works of art coated therewith, imitations of works of art of precious metal, jewellery, costume jewellery, precious stones, horological and chronometric instruments, watch straps, bracelets (jewellery), leather and imitations of leather, bags, handbags, vanity cases, not fitted, briefcases, trunks and travelling bags, travelling sets (leatherware), travel bags, bags for sports, backpacks, document cases, slings for carrying infants, beach bags, pocket wallets, bags for campers, bins and cases of leather or leatherboard, boxes of leather or leatherboard, net bags for shopping, shopping bags, purses (money pouches), hat boxes of leather, sling bags for carrying infants, garment bags for travel, umbrellas, parasols, key cases, school satchels, leather shoulder straps, walking sticks, wheeled shopping bags, haversacks, pouches, of leather, for packaging, tool bags of leather, empty, animal skins, hides, clothing for pets, textiles, textile goods, textile substitutes, household linen, bed covers, table covers, screening fabrics, clothing, footwear, headgear, carpets, rugs, mats and matting; Arranging and conducting of advertising events; Marketing, marketing studies and market analysis; Updating of advertising material; Distribution of products for advertising purposes; On-line advertising on a computer network; Exhibitions for commercial or advertising purposes; Presentation of companies on the Internet and other media; Organisation of trade fairs for commercial or advertising purposes; Public relations services; Arranging of contracts, for others, for the buying and selling of goods or the providing of services, in particular via networks, including the Internet; Presentation of goods and services on websites accessed via networks; Presentation of goods and services, for others, on the Internet; Arranging contracts, for others, for the selling of goods, including via the Internet, online shops or teleshopping channels; Organizational and business advice for franchise concepts.

There is a clear similarity between the signs in the present case because they coincide in the distinctive element ‘4F’.

As far as the goods and services are concerned, it is evident that the contested goods in Class 25 and the reputed goods overlap and are found in the market of fashion. Articles of sportswear are being used already for decades also as fashion articles foremost by younger people and are often not merely bought for their intended purpose of doing sports but because of their design.

The same applies to all the contested precious metals and their alloys, included in class 14; works of art of precious metal or works of art coated therewith, imitations of works of art of precious metal; jewels; paste jewellery [costume jewelry (Am.)]; precious stones; horological and chronometric instruments; watchstraps; bracelets [jewelry] in Class 14 which are likely to be considered as accessories that complement the reputed goods of the opponent and are furthermore found on the same market of fashion articles. It could, therefore, be considered that the producer of the opponent’s reputed goods could undergo a natural brand extension and produce these contested goods as well.

As far as the contested bags, handbags, vanity cases, not fitted, briefcases, trunks and travelling bags, travelling sets (leatherware), travel bags, bags for sports, backpacks, document cases, slings for carrying infants, beach bags, pocket wallets, bags for campers, bins and cases of leather or leatherboard, boxes of leather or leatherboard, net bags for shopping, shopping bags, purses (money pouches), hat boxes of leather, sling bags for carrying infants, garment bags for travel, umbrellas, parasols, key cases, school satchels, leather shoulder straps, walking sticks, haversacks, pouches, of leather, for packaging, tool bags of leather, empty; Clothing for pets in Class 18 are concerned, it is noted that as all these goods are subject to design and are used for travelling and outdoor activities and found on the same market of fashion articles. All these contested goods are subject to design and can be chosen thereafter in order to complete someone’s chosen style of fashion. These goods can be found in the same place and often offered by the same entity. In regards to the contested wheeled shopping bags it can be considered that the producer of the opponent’s reputed goods could undergo a natural brand extension and produce these contested goods as well.

Although the contested leather and imitations of leather (included in class 18); animal skins, hides in Class 18 are raw materials and may not be immediately linked to the opponent’s reputed goods (the contested goods are mainly aimed at professional public while the opponent’s goods are aimed at the public at large), nevertheless a certain connection cannot be denied. The contested raw materials are often used to enhance durability of those parts sportswear articles that are especially exposed to wear. Furthermore, they are used frequently on sportswear articles in order to highlight their images of good quality. Weighing up all the relevant factors of the case at hand, the Opposition Division concludes that the gap between the contested goods and the reputed goods is not so large and consequently there exists, at least, prima facie a possibility that when encountering the contested mark the relevant consumers will establish a mental ‘link’ between the signs in relation to the mentioned goods.

The contested fabrics, textile products, substitutes for fabrics, household linen (included in class 24); bed and table covers; screening fabrics in Class 24 and mats; carpets; mats in Class 27 are all subject to design and are chosen, inter alia, in order to extend the personal taste of choice of clothing to the decoration of someone’s living space. These goods can be found in the same place and are often offered by the same entity as it is common that under the same brand outerwear also home decoration is provided. It could, therefore, be considered that the producer of the opponent’s reputed goods could undergo a natural brand extension and produce these contested goods as well.

Finally, the contested bringing together, for the benefit of others (excluding the transport thereof), of a variety of goods for presentation and sales purposes, enabling consumers to view and purchase those goods, wholesaling and retailing, including via the internet, relating to precious metals and their alloys, works of art of precious metal or works of art coated therewith, imitations of works of art of precious metal, jewellery, costume jewellery, precious stones, horological and chronometric instruments, watch straps, bracelets (jewellery), leather and imitations of leather, bags, handbags, vanity cases, not fitted, briefcases, trunks and travelling bags, travelling sets (leatherware), travel bags, bags for sports, backpacks, document cases, slings for carrying infants, beach bags, pocket wallets, bags for campers, bins and cases of leather or leatherboard, boxes of leather or leatherboard, net bags for shopping, shopping bags, purses (money pouches), hat boxes of leather, sling bags for carrying infants, garment bags for travel, umbrellas, parasols, key cases, school satchels, leather shoulder straps, walking sticks, wheeled shopping bags, haversacks, pouches, of leather, for packaging, tool bags of leather, empty, animal skins, hides, clothing for pets, textiles, textile goods, textile substitutes, household linen, bed covers, table covers, screening fabrics, clothing, footwear, headgear, carpets, rugs, mats and matting; arranging and conducting of advertising events; marketing, marketing studies and market analysis; updating of advertising material; distribution of products for advertising purposes; on-line advertising on a computer network; exhibitions for commercial or advertising purposes; presentation of companies on the internet and other media; organisation of trade fairs for commercial or advertising purposes; public relations services; arranging of contracts, for others, for the buying and selling of goods or the providing of services, in particular via networks, including the internet; presentation of goods and services on websites accessed via networks; presentation of goods and services, for others, on the internet; arranging contracts, for others, for the selling of goods, including via the internet, online shops or teleshopping channels; organizational and business advice for franchise concepts in Class 35 are all services consisting of activities around the contested goods’ actual sale and the promotion thereof. Therefore, all these services may be offered, at least from the perspective of the relevant public, by the same companies, especially taking into account the exceptionally high reputation of the mark for the reputed goods.

The earlier mark ‘4F’ is inherently distinctive. Furthermore, it transpires from the evidence that the degree of reputation of the earlier trade mark for articles of sportswear is exceptionally high in Poland, being one of the leading brands on the market.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims in its submission, among other things, that:

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against a range of goods and services in Classes 14, 18, 24, 25, 27 and 35 (see the above list of goods and services). The earlier trade mark was found to have a reputation for articles of sportswear in Class 25.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and „free-riding on the coat-tails‟ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

As mentioned above, the opponent claims that the use of the contested EUTM would result in a misappropriation of the attractive powers of the earlier trade mark or an exploitation of its image and prestige. In other words, it claims that this is a case of ‘free-riding’.

Taking into account the similarity between the marks, the high degree of reputation of the earlier mark and the link in consumers’ minds between the signs in relation to all the relevant goods and services as examined in detail above, it is concluded that the contested EUTM would indeed benefit from the attractiveness of the earlier mark and would misappropriate its advertising value by receiving an unfair ‘boost’ as a result of its being linked in the mind of the consumers to the opponent’s reputed mark. This ‘boost’ would make it easier when marketing the goods and services offered under the contested mark, as contested sign will be immediately recognised by the relevant public because of the link with the reputed mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The applicant also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark. As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and neither the other earlier rights on which the opposition was based.

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

Irina SOTIROVA

André Gerd Günther BOSSE

Judit NÉMETH

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.