OPPOSITION No B 2 496 001

NHS, Inc., 104 Bronson Street, Suite 9, Santa Cruz, CA 95062, United States (of America) (opponent), represented by Njord Law Firm Advokatpartnerselskab, Pilestræde 58, 1112  Copenhagen K, Denmark (professional representative)

a g a i n s t

HLC SB Distribution, S.L., Polígono Industrial Arretxe – Ugalde Calle Ezurriki E 18, 20305 Irún (Guipúzcoa), Spain, represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 496 001 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 13 528 112. The opposition is based on the following earlier rights:

• European Union trade mark registration No 3 091 279 of the word mark ‘SANTA CRUZ’ (earlier mark 1),
• European Union trade mark registration No 8 990 889 of the figurative mark  (earlier mark 2),
• Spanish trade mark registration No M1 310 666 of the word mark ‘SANTA SKATEBOARDS.’ (earlier mark 3) and
• Non-registered trade mark ‘SANTA CRUZ’ used in the course of trade in Denmark and the United Kingdom (earlier mark 4).

The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case the evidence filed by the opponent, namely the renewal certificate for Spanish trade mark registration No M1 310 666 (earlier right 3), is not in the language of the proceedings.

On 01/04/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit was extended at the opponent’s request and expired on 06/10/2015.

The opponent did not submit the necessary translation.

 

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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:

EUTM No 3 091 279 (earlier mark 1)

Class 28:        Sporting goods, namely, surfboards, winter skates and their parts and accessories therefor; sporting goods, namely, wakeboards, skimboards, body boards, inline skates, wake skates, and their parts and accessories therefor.

EUTM No 8 990 889 (earlier mark 2)

Class 9:        Helmets.

Class 16:        Paper, cardboard and goods made from these materials; printed matter; photographs; printed publications, posters, calendars; decalcomanias, stickers, banners.

Class 25:        Clothing; footwear; headgear; T-shirts, sweatshirts, polo shirts, pullovers, trousers, shorts, hats, caps.

Class 28:        Skateboards, truck sets for skateboards, skateboard parts and accessories; winter skates; surfboards, snow boards; knee pads, elbow pads, cover cuffs; gloves for sporting purposes and games.

The contested goods are the following:

Class 18:        Rucksacks, Gym bags, Baggage, Valises, waist bags.

Class 25:        Clothing, footwear and headgear.

Class 28:        [And] sporting goods; skateboards and their parts.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 18

The opponent’s clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested rucksacks, baggage, valises, waist bags are products used as luggage and/or for carrying things. The nature of these goods is very different from that of clothing, headgear and footwear in Class 25. They serve very different purposes (carrying/storage versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. Even though some fashion designers nowadays also travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. Moreover, the goods are neither in competition nor complementary. Therefore, these goods are considered dissimilar.

The same finding applies in relation to the opponent’s further goods in classes 9, 16 and 28. They serve different needs and do not coincide in their producers, distribution channels or the relevant public.

However, there is a certain point of contact between the remaining contested gym bags which are normally used to carry gymnastic and sporting articles and apparel and the opponent’s various sporting goods in class 28 and clothing, footwear and headgear in class 25. It has to be noted in this regard that clothing, footwear and headgear include sports clothing, footwear and headgear which are items of apparel designed specifically to be worn when doing sport. Although the purpose and nature of these goods are different, nevertheless, market reality shows that undertakings that manufacture gym bags may also manufacture sporting articles or (sports) clothing, (sports) footwear and (sports) headgear. In this case the distribution channels can be the same. Therefore, there is a low degree of similarity between gym bags and the opponent’s goods in classes 25 and 28.

Contested goods in Class 25

Clothing, footwear and headgear are identically contained in both lists of goods.

Contested goods in Class 28

Skateboards and their parts are identically contained in both lists of goods.

The contested sporting goods include, as a broader category the opponent’s skateboards. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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

3. The signs

SANTA CRUZ	CRUZADE
Earlier trade mark 1	Contested sign
Earlier trade mark 2

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 earlier mark 1 and the contested sign are both word marks, the earlier mark consisting of two words (‘SANTA CRUZ’) and the contested sign of one single word (‘CRUZADE’). In the case of word marks it is the word as such that is protected.

The earlier mark 2 is a figurative mark consisting of the word elements ‘SANTA’ and ‘CRUZ’ written in slightly stylized uppercase letters within a circle.

The words ‘SANTA CRUZ’ will be perceived by a significant part of the relevant public as a Spanish city name. It has to be noted that, apart from the Spanish- speaking part of the public, this will also be the case for a significant part of the non Spanish-speaking public, since it is the name of the capital of the well known touristic island of Tenerife. Another part of the public, e.g. the Italian-speaking part, will understand only the word ‘SANTA’ meaning ‘holy’. For the remaining part of the public the words have no meaning.

The earlier mark 1 and the contested sign have no elements that could be considered clearly more distinctive than other elements.

As regards the earlier sign 2, it is composed of distinctive verbal elements and a less distinctive figurative element of a purely decorative nature, namely the circle. Therefore, the verbal elements are more distinctive than this figurative element.

The earlier mark 2 has no elements that could be considered clearly more dominant than other elements.

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.

Visually, the signs coincide in the letters ‘CRUZ’. However, they differ in the additional letters ‘ADE’ of the contested sign and ‘SANTA’ in both earlier marks. As regards, earlier mark 2 the signs also differ in its graphical stylization.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘CRUZ’, present identically in both signs. The pronunciation differs in the sound of the letters ‘ADE’ of the contested sign and ‘SANTA’ in both earlier marks, which all have no respective counterparts.

Therefore, the signs are similar to a low degree.

Conceptually, although a significant part of the public in the relevant territory will perceive the meaning of the earlier marks, 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. As regards the part of the relevant public which will not associate any meaning with any sign, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

According to the opponent the earlier trade marks have a reputation and enjoy a high degree of distinctiveness as result of its long standing and intensive use in the United Kingdom, Italy and Spain in connection with all the goods for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

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:

• An affidavit signed by Mr Robert A. Denike, President and CEO of the opponent, dated 05/08/2015. The statement refers to the various ‘SANTA CRUZ’ marks of the opponent, its sales to the company’s European distributors regarding hard goods, especially skateboards, and the expenditures for advertising world wide (exhibit 2). The affidavit encloses also various registration certificates and the copy of the magazine ‘Transworld Skateboarding’ with an article about the opponent; however, the latter does not refer to the relevant territory and is clear from the price indication in US Dollars that it is an US publication.
• A declaration signed by Mr. Chris Allen, owner and director of the UK company ‘Shiner Ltd’, dated 02/07/2015 (exhibit 3). According to the declaration ‘Shiner Ltd’ is the opponents distributor and the brand ‘SANTA CRUZ’ is the number one selling skateboarding articles in the UK. Furthermore, this company is selling and marketing the brand in Italy, Spain and the UK since 1977, however, no sales and turnover figures are mentioned.
• Print-outs from the website ‘pixelstv.com’ with links to various skateboarding videos and map referring to retailers in the UK, selling ‘SANTA CRUZ’ skateboards (exhibit 4). The print-outs are dated 06/10/2015, but some postings are dated and refer to events in October 2013.
• A declaration signed by Mr. Mathias Broder, owner of the Spanish company ‘Sport 2000 s.l.’, dated 16/07/2015 (exhibit 5). According to it this company is the opponent’s distributor in Spain and ‘SANTA CRUZ’ is the number one brand selling skateboarding articles in Spain. It also refers to turnovers and contains a table regarding marketing expenditures forecasts for the year 2012.
• A declaration dated 16/07/2015 and signed by Mr. Livio Giorgio Scecola, owner of the Italian company ‘S.R.D. S.rr.l’ and the opponent’s distributor in Italy since 1993 (exhibit 6). According to the declaration ‘SANTA CRUZ’ is one of the top brands selling skateboarding articles in Italy. It also refers to turnovers and marketing campaigns.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

First of all it has to be noted that the evidence consists mainly of declarations made either by the opponent itself or by its distributors; however, there is almost no evidence emanating from independent sources.

It is true that Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. However, as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. The same applies in the case of licensees and/or distributors.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish reputation through use, since such statements have to be considered as having less probative value than invoices or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The opponent has not submitted any material from independent parties regarding the reputation of the marks, e.g. market surveys from market research companies which could determine the degree of recognition amongst the relevant public. Furthermore, no single invoice has been filed. For the sake of completeness, the Opposition Division notes in this context that the only invoice filed together with the opponent’s observations refers to rucksacks which have only been claimed in relation to the non registered earlier mark 3 and for which the relevant earlier marks 1 and 2 are not registered.

Although the declarations refer to numbers of sales and turnovers, no further material has been provided, proving the claims of the opponent and its distributors. Finally, the remaining material is either irrelevant (the US magazine) or merely refers to where to buy the opponent’s skateboards in the UK (the retailers map in the website print-outs). As a result, the evidence does not show the degree of recognition of the trade mark or that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

For the sake of completeness the Opposition Division notes that the material submitted on 04/05/2016 in order to proof the use of the earlier trademarks, as requested by the applicant, cannot be taken into account, since it was filed after the relevant time limit for substantiation (06/10/2015).

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 both earlier marks must be seen as normal, despite the presence of a less distinctive figurative element in the earlier mark 2 as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partially dissimilar and partially identical and similar to a low degree. The signs are similar to a low degree.

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).

Generally 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). The same principle applies also in relation to retail shops for sporting goods. Therefore, the considerable visual differences between the signs caused by the different verbal elements are particularly relevant when assessing the likelihood of confusion between them.

The earlier signs coincide with the contested sign only in their last syllable, however, the public focuses more on the beginning of a sign as explained above under part c).  Furthermore, the contested mark has no meaning and must be considered as a whole and cannot be split artificially. Finally, the opponent failed to proof an enhanced distinctiveness of its earlier marks which could contribute to a different finding.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected, insofar it is based on Article 8(1) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

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.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected, as far as it is based on this ground.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent based its opposition also on the non-registered trade mark ‘SANTA CRUZ’ used in the course of trade in Denmark and the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Non registered mark ‘SANTA CRUZ’ used in the United Kingdom

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 04/12/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for Rucksacks, Gym bags, Baggage, Valises, waist bags.

On 06/10/2015 the opponent submitted evidence of use in the course of trade. 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 one document (exhibit 1).

• Screenshot from an online-catalogue of ‘SANTA CRUZ’ bags and rucksacks, titled Spring and Summer collection 2008 2013, depicting bags and rucksacks with the mark.
• One invoice dated 19/08/2014, issued by the UK company ‘AXL Distribution Ltd’. It is accompanied by a table explaining the item codes.

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 43).

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use.

The material consists only of one online catalogue and one invoice. There is no reference to turnovers and sales figures. It is not apparent from the evidence that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) EUTMR. The opponent did not submit any evidence of recognition of the sign by consumers or of business relationships. Likewise, the opponent has not shown that it had developed any advertising activity. Therefore, it cannot be concluded that the non registered mark is of more than mere local significance within the meaning of Article 8(4) EUTMR.

For the sake of completeness it has to be noted that although some of the material, submitted to establish reputation of the registered earlier marks 1 and 2 relates to the relevant territory, namely exhibits 3 and 4, it, nevertheless does not refer to the goods on which the non registered mark is based. Consequently, it cannot be taken into account. Likewise, the material submitted on 04/05/2016 in order to proof the use of the earlier registered trademarks, as requested by the applicant, cannot be taken into account, since it was filed after the relevant time limit for substantiation (06/10/2015).

Therefore, the opposition is not well founded under Article 8(4) EUTMR, insofar it is based on the non registered mark ‘SANTA CRUZ’ used in the course of trade in the United Kingdom.

2. Non registered mark ‘SANTA CRUZ’ used in Denmark

2. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non registered mark ‘SANTA CRUZ’ used in Denmark. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent. In any event, the opponent neither did submit any material showing use of said mark in Denmark.

Therefore, the opposition is not well founded under Article 8(4) EUTMR insofar it is based on the non registered mark ‘SANTA CRUZ’ used in the course of trade in Denmark.

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

Renata COTTRELL

Konstantinos MITROU

Sigrid DICKMANNS

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.