OPPOSITION DIVISION
OPPOSITION No B 2 096 116
Adidas AG, Adi-Dassler-Str. 1, 91074 Herzogenaurach, Germany (opponent),
represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain
(professional representative)
a g a i n s t
Shoe Branding Europe BVBA, Meersbloem – Melden 42, 9700 Oudenaarde,
Belgium (applicant), represented by Løje, Arnesen & Meedom
Advokatpartnerselskab, Øster Allé 42 6, 2100 København Ø, Denmark
(professional representative).
On 10/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 096 116 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 10 983 658 for the figurative sign for clothing in Class 25.
The opposition is based on the following rights:
Spanish trade mark registration No 1 784 709 for the figurative sign
and goods in Class 25;
international trade mark registration No 300 805 designating Benelux, Czech
Republic, Hungary, Italy, Portugal, Romania, Slovenia, Slovakia and Spain for
the figurative sign and goods in Classes 18, 25 and 28;
Decision on Opposition No B 2 096 116 page: 2 of 10
French trade mark registration No 1 574 962 for the figurative sign
and goods in Classes 18, 25 and 28;
international trade mark registration No 300 803 designating Benelux, Czech
Republic, Hungary, Italy, Portugal, Romania, Slovenia, Slovakia and Spain for
the figurative sign and goods in Classes 18, 25 and 28;
French trade mark registration No 1 574 960 for the figurative sign
and goods in Classes 18, 25 and 28;
international trade mark registration No 300 802 designating Benelux, Czech
Republic, Hungary, Italy, Portugal, Romania, Slovenia, Slovakia and Spain for
the figurative sign and goods in Classes 18, 25 and 28;
French trade mark registration No 1 574 959 for the figurative sign and
goods in Classes 18, 25 and 28;
German non-registered trade mark used in the course of trade for
footwear and clothing;
German non-registered trade mark used in the course of trade for
footwear and clothing;
German non-registered trade mark used in the course of trade for
footwear and clothing;
German non-registered trade mark used in the course of trade for
footwear and clothing.
The opponent invoked Article 8(1)(b), Article 8(4) and Article 8(5) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s Spanish trade mark registration No 1 784 709.
Decision on Opposition No B 2 096 116 page: 3 of 10
Firstly, the opponent refers to previous national decisions to support its arguments.
However, it must be noted that decisions of national courts and national offices
regarding conflicts between identical or similar trade marks at national level do not
have a binding effect on the Office since the European Union trade mark regime is an
autonomous system, which applies independently of any national system
(13/09/2010, T-292/08, Often, EU:T:2010:399).
Also, the opponent in its observations refers to previous decisions of the Office to
support its arguments.
Nevertheless, the Office is not bound by its previous decisions, as each case has to
be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case.
While the Office does have a duty to exercise its powers in accordance with the
general principles of European Union law, such as the principle of equal treatment
and the principle of sound administration, the way in which these principles are
applied must be consistent with respect to legality. It must also be emphasised that
each case must be examined on its own individual merits. The outcome of any
particular case will depend on specific criteria applicable to the facts of that particular
case, including, for example, the parties’ assertions, arguments and submissions.
Finally, a party in proceedings before the Office may not rely on, or use to its own
advantage, a possible unlawful act committed for the benefit of some third party in
order to secure an identical decision.
In particular, in its observations of 05/03/2012, the opponent has made reference to
various legal proceedings in which it was directly involved regarding […] “the
registration and use of two equidistant parallel stripes on footwear by Shoes
Branding Europe/Patrick Holding Aps” […].
However, in the present case, it is of crucial importance to underline the fact that the
application is not, like in the cases cited by the opponent, concerning a position mark
applied on footwear, but a figurative mark applied for goods in Class 25, namely
clothing.
In view of the all the above, it follows that, even if the previous decisions submitted to
the Opposition Division are to some extent factually similar to the present case, the
outcome may not be the same.
Decision on Opposition No B 2 096 116 page: 4 of 10
a) The signs
Earlier trade mark Contested sign
The relevant territory is Spain.
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 is a figurative mark consisting of three parallel identical black stripes
inclining towards the left side. The distance between them is almost equivalent to
their breadth.
The contested sign is also a figurative sign. It consists of two parallel stripes inclining
towards the left side, although in a rather smaller degree when compared to the
inclination of the earlier sign. The stripe on the right is depicted in red while the one
on the right is in blue. In this case, the distance between the stripes is about a third
the size of the breadth of the two stripes.
The signs in dispute have no element that could be considered clearly more
dominant than other elements.
The position and number of the stripes are, in the present case, a highly relevant fact
considering that stripes are very banal elements applied on many types of footwear
and clothing. It is only the particular configuration and position of the stripes that may
be seen as an indication of origin. Thus, inherently, the marks at issue, with two or
three stripes, are only weakly distinctive.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, the evidence filed by the opponent to prove
this claim does not have to be assessed in the present case in the light of the
comparison of the signs. The examination will proceed on the assumption that the
earlier mark has enhanced distinctiveness.
Visually, the contested sign and the earlier mark contain simple geometrical
elements. The visual impression created by them is different. The only similarities
which are to be found between the marks are the fact that they share straight stripes.
The differences mainly lie in the number of stripes and in their positioning, which
contrarily to what has been stated by the opponent in its observations of 05/03/2013,
constitute a major issue in the present comparison. In fact, a difference in the
absence or presence of additional stripes in signs which are only made of stripes is a
circumstance of capital relevance. The same is valid as concerns their shapes, colour
and other characteristics.
In the contested mark not only the stripes are two, as opposed to three, in the earlier
mark but they also display a particular colour. Moreover, they have a different degree
of thickness and a different inclination and the distance between them is significantly
Decision on Opposition No B 2 096 116 page: 5 of 10
reduced when compared to the distance between the stripes that form the earlier
mark.
Both marks will be perceived as wholes and there is no reason to assume that the
public will merely remember the fact that they are signs “with stripes” and will pay no
attention to their different shapes, orientation, positions as well as the additional
colours of the contested mark.
Bearing in mind the above, there are significant visual differences between the signs.
Therefore, despite sharing the presence of stripes, in their overall visual impression
the signs are not similar.
Purely figurative signs are not subject to a phonetic assessment. As both signs are
purely figurative, it is not possible to compare them aurally.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
As the signs merely coincide in irrelevant aspects, they are dissimilar.
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a
finding of likelihood of confusion. Since the signs are 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 signs
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.
The opponent has also based its opposition on the following earlier trade marks:
international trade mark registration No 300 805 designating Benelux, Czech
Republic, Hungary, Italy, Portugal, Romania, Slovenia, Slovakia and Spain for
the figurative sign and goods in Classes 18, 25 and 28;
French trade mark registration No 1 574 962 for the figurative sign
and goods in Classes 18, 25 and 28;
international trade mark registration No 300 803 designating Benelux, Czech
Republic, Hungary, Italy, Portugal, Romania, Slovenia, Slovakia and Spain for
the figurative sign and goods in Classes 18, 25 and 28;
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French trade mark registration No 1 574 960 for the figurative sign and
goods in Classes 18, 25 and 28;
international trade mark registration No 300 802 designating Benelux, Czech
Republic, Hungary, Italy, Portugal, Romania, Slovenia, Slovakia and Spain for
the figurative sign and goods in Classes 18, 25 and 28;
French trade mark registration No 1 574 959 for the figurative sign and
goods in Classes 18, 25 and 28;
The other earlier rights invoked by the opponent are less similar to the contested
mark. This is because they contain further figurative elements such as a black
background or they display different characteristics such as a different orientation of
the three stripes, which are not present in the contested trade mark. Moreover, they
cover the same scope of the goods. Therefore, since these signs are also dissimilar
one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled even as
regards these remaining earlier marks. The opposition cannot be successful insofar
as it is based on these remaining earlier rights. The consideration above explained
on the claim of enhanced distinctiveness is also valid for these other trade marks on
which the opposition is based.
The examination of the opposition will then continue on the basis of the remaining
grounds and earlier rights.
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 for 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: 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.
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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.
a) 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.
As seen above, similarity between the signs is a requirement for the opposition to be
successful under Article 8(5) EUTMR. Since the signs are not similar, one of the
necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the
opposition must be rejected also insofar as it is based on Article 8(5) EUTMR and
there is no need to examine the other conditions laid down by Article 8(5) EUTMR
(24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).
The Opposition Division will now examine the oppositions insofar as it is based on
other four rights claimed under Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
The opposition is also based on the following rights:
German non-registered trade mark used in the course of trade for
footwear and clothing;
German non-registered trade mark used in the course of trade for
footwear and clothing;
German non-registered trade mark used in the course of trade for
footwear and clothing;
German non-registered trade mark used in the course of trade for
footwear and clothing.
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:
Decision on Opposition No B 2 096 116 page: 8 of 10
(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.
a) The right under the applicable law
According to Article 95(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 (in the version in force at the time when the
adversarial part of the proceedings started), 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
Decision on Opposition No B 2 096 116 page: 9 of 10
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 sufficient information on the legal
protection granted to the type of trade signs invoked by the opponent, namely as
concerns the German non-registered trade marks listed above.
In its observations the opponent has referred to the national law, namely the German
Trade Mark Act, also providing the text of some of its articles in English. However, the
opponent has not provided the text of the relevant law in the original language.
b) Conclusion
In view of what has been explained in the previous paragraph, it is clear that the
opponent has not met one of the requirements to which the grounds of refusal of
Article 8(4) EUTMR are subject.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 096 116 page: 10 of 10
The Opposition Division
Francesca CANGERI
SERRANO
Andrea VALISA Edith Elisabeth
VAN DEN EEDE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.