CANCELLATION No 11 028 C (INVALIDITY)

Brooks Sports, Inc., 3400 Stone Way North, Seattle, Washington 98 103, United States of America (applicant), represented by Heuking Kühn Lüer Wojtek, Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Neuer Wall 63, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Trend Tekstil Sanayi ve Ticaret Anomim Sirketi, Demirtas Organize Sanayi Bölgesi, Orkide Sokak No 4, Osmangazi-Bursa, Turkey (EUTM proprietor), represented by Silex IP, C/ Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).

On 07/06/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is partially upheld.

2.        European Union trade mark No 11 755 121 is declared invalid for some of the contested goods and services, namely:

Class 24:        Woven and non-woven textile fabrics for use in the manufacture of clothing, towels, table linen, bed linen, household linen; fiberglass fabrics for textile use; fabric impervious to gases for aeronautical balloons; waterproof fabrics, namely, waterproof fabric for manufacturing clothing, furniture and automobile upholstery, and luggage, gummed waterproof cloth; fabric of imitation animal skins, textile linings, namely, linen lining fabric for shoes, textile linings for garments, textile used as lining for clothing; buckram; filtering materials of textile, namely, chemical fiber fabrics, synthetic fiber fabrics, inorganic fiber mixed fabrics all for use in filtering liquids and powders; curtains of textile; shower curtains of textile; oilcloth for use as table cloths; bed covers, namely, bed blankets, bed sheets, bedspreads, bed linen, diapered linen, pillowcases, quilt covers; furniture coverings of textile, namely, unfitted fabric furniture covers; upholstery fabrics; table napkins of textile; bed covers of paper, bundles of textile, namely, quilts of textile, tapestries of textile; washing mitts; bath linen; flannel; hand towels; face towels of textile; bathing towels, namely, bath towels; handkerchiefs of textile.

Class 35:        The bringing together, for the benefit of others, of textiles and textile goods, bed covers, table covers, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

3.        The European Union trade mark remains registered for all the remaining services, namely:

Class 35:                Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering.

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 11 755 121. The application is based on:

1. European Union Trade mark No 162 313 ‘BROOKS’, registered for goods in Class 25: athletically-related footwear.
2. Benelux trade mark registration No 364 369 ‘BROOKS’, registered for goods in Classes 18 and 25: travelling bags and carrier bags, including carrier bags for sporting articles; footwear, including sports footwear; garments for sports use.
3. Benelux trade mark registration No 518 115 , registered for goods in Classes 18 and 25: leather and imitation of leather, and goods made of these materials and not included in other classes; animal skins, trunks and travelling bags, umbrellas, parasols and walking sticks, whips and saddlery; clothing, footwear, headgear.
4. French trade mark registration No 1 551 741 ‘BROOKS’, registered for goods in Class 25: clothing, including boots, shoes and slippers, in particular those intended for recreations and for sports.

The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR. In relation to Article 8(5) EUTMR, the applicant claims that the trade marks have a reputation for all the goods for which they are registered, mark 1 in the European Union, marks 2 and 3 in Benelux, and mark 4 in France.

The applicant also based its application on several well-known marks ‘BROOKS’ and  in all the Member States of the European Union, in the sense of Article 53(1)(a) EUTMR in conjunction with Article 8(2)(c) EUTMR, and in relation to the following goods: leather and imitations of leather and goods made of these materials, animal skins, trunks and suitcases, umbrellas, parasols and walking sticks, whips and saddlery, clothing, footwear, headgear.

Furthermore, the applicant based its application on non-registered trade marks ‘BROOKS’ and , used in the course of trade in all the Member States in relation to the following goods in Classes 18 and 25: leather and imitation of leather, and goods made of these materials and not included in other classes; animal skins, trunks and suitcases, umbrellas, parasols and walking sticks, whips and saddlery; clothing, footwear, headgear.

Regarding the above-mentioned earlier rights, the applicant invoked Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are very similar and so are the goods and services, as the good and services have very similar natures, purposes, methods of use, relevant publics and/or usual origins, and/or are complementary. In addition, the contested goods in Class 24 are intended for the manufacture of products worn and used by humans including the goods in Classes 18 and 25 for which the earlier trade marks are registered. As for the contested services, they are carried out in relation to the applicant’s goods. Taking into account that the applicant’s trade marks are reputed, there is a likelihood of confusion under Article 8(1)(b) EUTMR. As for its claim under Article 8(5) EUTMR, the applicant puts forward arguments that will be explained and discussed below in the relevant section of this decision. In support of its observations, the applicant filed exhaustive evidence that will be listed and evaluated below.

The EUTM proprietor contends that the case has already been judged in other opposition proceedings between the same parties in relation to the same marks and that therefore the invalidity action has no purpose. At any rate, there cannot be confusion among the relevant public because the goods and services are dissimilar and the inclusion of the elements ‘B’ and ‘R.’ is particularly relevant, as the differences between the signs result from their beginnings. In relation to the action brought under Article 8(5) EUTMR, the EUTM proprietor contends that the applicant has not substantiated its claim sufficiently. Furthermore, the proprietor requests proof of use of the earlier marks.

RES IUDICATA

The EUTM proprietor alleges that the case at issue has already been decided, as there is a prior opposition (B 2237 769) based on the same marks and involving the same parties, as well as partly based on the same claims. In this regard, the Cancellation Division must point out that a prior decision by the Office in opposition proceedings between the same parties and relating to the same mark does not preclude a later cancellation request based on the same earlier rights (14/10/2009, T-140/08, TiMiKinderjoghurt, EU:T:2009:400, § 36, appeal to the Court dismissed; 22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 15; 23/09/2014, T-11/13, Mego, EU:T:2014:803, § 12), since the cause of action is different. In the present case, it must also be mentioned that the actions are not, in fact, completely identical, as the invalidity action, in contrast to the opposition, is also based on Article 8(4) EUTMR, Article 8(5) EUTMR and well-known marks in the sense of Article 8(2)(c) EUTMR. Consequently, this argument of the proprietor must be set aside.

PROOF OF USE

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested that the applicant submit proof of use of the trade marks on which the application is based, as listed above.

The request has been filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 15/06/2015. European Union trade mark No 162 313 was registered on 25/01/1999, Benelux trade mark registration No 364 369 was registered on 10/08/1979, Benelux trade mark registration No 518 115 was registered on 24/07/1992 and French trade mark registration No 1 551 741 was registered on 21/09/1989. The applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in the European Union, Benelux and France, as appropriate, from 15/06/2010 to 14/06/2015 inclusive.

Furthermore, the contested trade mark was published on 24/05/2013 and, as the earlier marks were registered more than five years prior to this date, use of the earlier marks must be shown also for the period from 24/05/2008 to 23/05/2013 inclusive.

The evidence must show use of the trade marks for the goods on which the application is based, namely:

European Union trade mark No 162 313

Class 25:         Athletically-related footwear.

Benelux trade mark registration No 364 369

Class 18:         Traveling bags and carrier bags, including carrier bags for sporting articles.

Class 25:         Footwear, including sports footwear; garments for sports use.

Benelux trade mark registration No 518 115

Class 18:         Leather and imitation of leather, and goods made of these materials and not included in other classes; animal skins, trunks and travelling bags, umbrellas, parasols and walking sticks, whips and saddlery;

Class 25:         Clothing, footwear, headgear.

French trade mark registration No 1 551 741

Class 25:         Clothing, including boots, shoes and slippers, in particular those intended for recreations and for sports.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 07/06/2016 the applicant was given three months to submit proof of use.

On 05/10/2016 the applicant referred back to the documents it had submitted as proof of the reputation of the earlier marks.

In order to prove the reputation of the marks the applicant filed a witness statement and supporting material.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The witness statement, signed by Mr Ralph E. Buehlmaler, Corporate Controller, Secretary and Treasurer for Brooks Sports Inc. (‘Brooks’), on 30/10/2015, contains the following information:

1. History of Brooks

The company is a large US-based international footwear and sports apparel (clothing and garments worn on the body) and accessories supplier. Brooks also has subsidiaries in Canada, Japan and Germany, with representative offices of the Germany subsidiary in the United Kingdom, Italy, France and Spain. The company also distributes its products through third-party distributors in many countries in the European Union, the Czech Republic, Denmark, Finland, France, Hungary, Italy, the Netherlands (Benelux), Spain and Sweden. Brooks has traditionally manufactured shoes, apparel and sporting accessories for various types of sports, but in 2001 its focus shifted to running. This move revived the brand and helped it become a leading specialist running brand in Europe and globally. This is demonstrated by the 41% increase in sales in Europe in 2012, a time when the retail market was still recovering from the 2008 global economic downturn, as stated in an article from forbes.com dated 13/05/2013 (Exhibit REB1). A short summary of the history of Brooks marks is attached as Exhibit REB2 and a list of Brooks’s subsidiaries and distributors in the EU is also attached (Exhibit REB3).

1. Brooks has an international reach and products are bought by customers from all over the world. Exhibit REB4 consists of copies of extracts from various catalogues for the period from autumn 2009 to summer 2016. They were distributed globally, including throughout the European Union. The catalogues contain details of the company’s wide network of distributors in the European Union, including in the United Kingdom, France, Germany, the Netherlands and Belgium. Brooks also produces catalogues that target specific markets, including Italy and the UK, where the brand is particularly popular. Annual turnover figures are provided in Exhibit REB5. Copies of extracts from the Italian and UK catalogues are provided in Exhibit REB6.
2. A list of customers or retailers that hold an account with the company in France is provided in Exhibit REB7. Of these, approximately 350 are retailers that buy the goods for resale. In Italy, there are over 1 000 individual retailers that sell Brooks goods; a list of them is provided in Exhibit REB8.
3. Exhibit REB9 contains photographs showing how the mark was used by UK retailers in store to promote Brooks footwear and apparel between 2013 and 2015:

1. two photographs, one taken on 01/09/2013 and the other taken in March 2014, both at the Jog Shop in Brighton;
2. two photographs taken on 03/06/2014 and 09/06/204 at Up & Running in Leeds Central.

2. Online presence

4. Brooks operates several websites where the products can be ordered directly by consumers. From 01/11/2013 to 01/11/2014, the website www.brooksrunning.co.uk received 1 090 625 pages views from 250 427 unique users. Exhibit REB10 contains Google Analytics reports showing these statistics.
5. Brooks has active Facebook pages. Exhibit REB11 shows the Facebook pages specifically aimed at its French, Italian, Dutch and other European customers. Exhibit REB12 contains statistics on Facebook ‘likes’, which show that on 15/10/2015 ‘BROOKS’ received 8 518 ‘likes’.
6. Brooks also has an active YouTube channel (www.youtube.com/user/brooksrunning). Exhibit REB13 contains a screenshot of the channel’s main page, which shows a total of 6 913 subscribers on 30/10/2015.
7. Brooks has a UK Instagram page at https://instagram.com/brooksrunning, which had 152 000 followers on 30/10/2015 (Exhibit REB13), as well as a Twitter account at https://twitter.com/brooksrunning, which has 173 000 followers (Exhibit REB14).

3. Sales volumes and invoices

Exhibit REB5 contains further financial information in the form of a table detailing Brooks’s yearly sales turnover in the EU, per country, from 2007 to October 2015. Exhibit REB15 contains a selection of invoices for footwear and apparel, dated between 2009 and 2014, which demonstrate large purchases by retailers and resellers across the EU, including from the UK, France, the Netherlands, Spain and Austria. The corresponding catalogues can be found in Exhibit REB4.

4. Promotional activities

Exhibit REB16 contains advertisements placed by the company in print media outlets in the UK, such as Runners World UK, which has total readership of around 298 000, Women’s Running, with a readership of around 150 000, and Athletics Weekly, with a readership of around 27 000. Exhibit REB 17 contains details relating to the readership of these publications. Exhibit REB18 contains advertisements placed by the company in media outlets in Italy. Exhibit REB19 contains advertisements placed by the company in media outlets in the Netherlands. Exhibit REB20 contains copies of invoices dating from 2010 for advertisements in the UK version of Running Fitness magazine. Exhibit REB21 contains copies of invoices dating from 2010 for advertisements in the UK version of Runner’s World. Exhibit REB22 contains copies of invoices for advertisements in French publications between 2008 and 2015. Exhibit REB23 contains copies of invoices for advertisements in Italian publications in 2015. Exhibit REB24 contains copies of invoices showing expenditure on advertising/sponsorship in relation to the London Marathon (2012 and 2013), the London Running Show (2013) and the London Triathlon (2013).

5. Sponsorships and awards

Brooks sponsors a wide range of large events across the EU. Exhibit REB25 contains a list of the events Brooks sponsored in the UK between 2011 and 2014. In 2013, the company sponsored 11 events in France, which were attended by a total of 80 000 runners, as further detailed in Exhibit REB26. A list of examples of events sponsored in the Netherlands is enclosed as Exhibit REB27. Exhibit REB28 consists of photographs and screenshots showing the use of the marks at some events. The company also organises its own events as part of its Brooks HellRunner Series; the first event was held on 16/11/2008 and at least two events have been held each year thereafter. Exhibit REB29 contains photographs showing the use of the marks. Exhibit REB30 contains articles and/or photos documenting sponsorships of leading athletes and competitive runners over many years. Since being established in 1914, and particularly since its relaunch in 2001, Brooks has won numerous awards:

Brooks was also winner of the following prizes at the 2015 Running Awards:

6. Articles in the press or in specialised publications

Brooks receives extensive media coverage in the EU. Exhibit REB31 contains examples of articles from the UK press from 2010 and 2013. Exhibit REB32 contains examples from the Italian press or specialised running publications dating from 2015, including in Running Magazine (Italy), which has a readership of 50 000 (see Exhibit REB17). The company’s products have also featured on the websites of well-known publications around the world, including Marie Claire (Italy), Vanity Fair (Italy), Elle (Italy) and Time Magazine (Italy) (Exhibit REB33 contains examples of these from 2015).

7. Association with famous people

Exhibit REB 34 contains information in relation to celebrities wearing Brooks goods, such as Pippa Middleton (sister-in-law of the Duke of Cambridge), Teri Hatcher (actress) and Jennifer Garner (actress).

8. Market share and brand recognition

Brooks is recognised as a leading specialist running brand across Europe. A market survey conducted in France in 2012 found that the appeal of the Brooks brand ‘remains constant at the best possible level’ (Exhibit REB35) and that Brooks was the third product line among the top five shoe brands in France in 2010 and 2012, and the first in 2011 (Exhibit REB35). Exhibit REB36 shows the results of the same survey in 2013 showing that the Brooks product line ranked third among the top five shoe brands in France, and that Brooks’s brand appeal was 98.7% in 2013 among the retailers surveyed.

A survey by SPORTéco, a French professional sports journal, conducted in 2015 found that Brooks was the ninth best-selling shoe brand in France (see charts in Exhibit REB37). In addition, a survey of the runners taking part in the Reims marathon in France in 2015 found that of the runners surveyed (529 people) who completed the marathon in less than 4.5 hours, 10.4% were wearing Brooks trainers (Exhibit REB38).

An external market survey of French retailers conducted in 2012 ranked the Brooks product line first among the top five shoe brands in Germany in 2010, 2011 and 2012 (Exhibit REB39).

An external market survey of international retailers conducted in 2014 found that 98.6% of retailers in Germany carry Brooks-branded shoes in their stores (Exhibit REB40). In Italy and France, ‘every third retailer ranks Brooks beyond the top three running shoe brands in their sales line’.

In 2014, 100% of the German retailers surveyed rated Brooks as an attractive brand (Exhibit REB40). According to the report, in 2014 end consumers’ awareness of the Brooks brand had risen, and it was highest in Spain and Austria, at 62% each, and was between 50% and 60% in Germany, Italy, the UK, France, Benelux and Denmark.

As is obvious from the descriptions of the abovementioned documents, the applicant submitted ample evidence of the presence of its goods on the market. In relation to the witness statement, it is true that documents that originate from interested parties in principle have less value than those coming from independent sources. In the present case, however, the affidavit is exhaustive and the affirmations contained in it are supported by extensive supporting evidence, such as catalogues, invoices and surveys, some of which originate from third parties. It is obvious that the marks have been used in several countries in the European Union, including Benelux and France (where the national marks are registered), as several documents have been submitted in different languages and the invoices concern various counties. The documents cover many of the years corresponding to both periods for which the use of the marks must be proved, and the documents concern, mostly, the use of the sign, which can be accepted also as use of the mark ‘BROOKS’ if account is taken of the fact that the variations in the figurative sign are in accordance with Article 15 EUTMR. In addition, the selection of invoices contained in Exhibit REB15 support, with sales figures, the statements contained in the affidavit in relation to turnover for the period 2009-2014. Consequently, the parameters of time, place, extent and nature of use have been properly documented. As regards the goods shown in the documents, most of them are sports shoes, but there is also enough evidence of use for sports clothing. In relation to these latter goods, attention must be paid to the fact that, for proof of use of a mark, when it serves a real commercial purpose, even minimal use of the trade mark could be sufficient to establish genuine use, depending on the goods and services, and the relevant market (23/09/2009, T-409/07, acopat, EU:T:2009:354, § 35 and the quoted case-law; 02/02/2012, T-387/10, Arantax, EU:T:2012:51, § 42). In other words, it is sufficient if the evidence of use proves that the trade mark owner has seriously tried to acquire or maintain a commercial position in the relevant market also for sports clothing. There is, however, no proof whatsoever of use for the goods for which some of the earlier marks are registered in Class 18 or for headgear in Class 25.

According to Article 57(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

Therefore, the Cancellation Division will only consider the abovementioned goods (sports footwear and sports clothing) in its further examination of the application.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods on which the application is based, after the assessment of proof of use, are the following:

European Union trade mark No 162 313

Class 25:         Athletically-related footwear.

Benelux trade mark registration No 364 369

Class 25:         Footwear, including sports footwear; garments for sports use.

Benelux trade mark registration No 518 115

Class 25:        Sports clothing and sports footwear.

French trade mark registration No 1 551 741

Class 25:         Sports clothing, footwear for sports.

The contested goods and services are the following:

Class 24:        Woven and non-woven textile fabrics for use in the manufacture of clothing, towels, table linen, bed linen, household linen; fiberglass fabrics for textile use; fabric impervious to gases for aeronautical balloons; waterproof fabrics, namely, waterproof fabric for manufacturing clothing, furniture and automobile upholstery, and luggage, gummed waterproof cloth; fabric of imitation animal skins, textile linings, namely, linen lining fabric for shoes, textile linings for garments, textile used as lining for clothing; buckram; filtering materials of textile, namely, chemical fiber fabrics, synthetic fiber fabrics, inorganic fiber mixed fabrics all for use in filtering liquids and powders; curtains of textile; shower curtains of textile; oilcloth for use as table cloths; bed covers, namely, bed blankets, bed sheets, bedspreads, bed linen, diapered linen, pillowcases, quilt covers; furniture coverings of textile, namely, unfitted fabric furniture covers; upholstery fabrics; table napkins of textile; bed covers of paper, bundles of textile, namely, quilts of textile, tapestries of textile; washing mitts; bath linen; flannel; hand towels; face towels of textile; bathing towels, namely, bath towels; handkerchiefs of textile.

Class 35:        Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering; the bringing together, for the benefit of others, of textiles and textile goods, bed covers, table covers, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

Contested goods in Class 24

The main point of contact between textile goods in Class 24 and sports clothing in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertakings. Therefore, textile goods are considered dissimilar to clothing. The contested goods in Class 24 and sports footwear in Class 25 have even less in common.

Some of the goods in Class 24 can be used in the manufacture of goods in Class 25, such as woven and non-woven textile fabrics for use in the manufacture of clothing, waterproof fabrics, namely, waterproof fabric for manufacturing clothing; textile linings, namely, linen lining fabric for shoes, textile linings for garments, textile used as lining for clothing. However, these goods in Class 24 target professionals who acquire them for the manufacture of the goods in Class 25, meaning that the parts of the public that purchase them are different, so the mere fact that goods are used in the manufacture of others, as the applicant points out, cannot lead to a conclusion that they are similar taking into account that, as explained above, they are different under all the criteria that are used for the comparison of goods (channels of trade, commercial origins, purpose, etc.).

Contested services in Class 35

The contested services in this class are either the terms included in the class heading (office functions, business management, business administration) or they fall within one of these categories, or within the category of advertising, or are services of auctioneering, which does not belong to any of the categories mentioned above or to any of the general categories for which the earlier marks are registered. The contested services also include retail services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

In line with what has been said above, business administration comprises services that help or enable other businesses to perform their function or purpose. Some examples of these activities are personnel recruitment and tax preparations.

Office functions consist of the day-to-day operations that are required by a business to achieve its commercial purpose.

Auctioneering refers to the activity of selling or offering for sale at an auction by announcing the lots and controlling the bidding.

All the above services are dissimilar to the applicant’s goods, even if, as the applicant contends, the services are carried out in relation to the goods. This is because these goods and services have not only a different nature but also different commercial origins and distribution channels. Furthermore, they are neither complementary to nor in competition with each other.

The contested bringing together, for the benefit of others, of textiles and textile goods, bed covers, table covers, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes are not similar to the applicant’s goods in Class 25. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

Conclusion

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

This finding would still be valid even if the earlier trade marks were well known or reputed, as the applicant claims. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the applicant in this respect does not alter the outcome reached above.

The application for invalidity is rejected as far as it is based on Article 53(1)(a) EUTMR in conjunction with 8(1)(b) EUTMR. The examination will continue in relation to the remaining grounds.

ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(2)(c) EUTMR – FOR WELL-KNOWN MARKS (Article 6bis of the Paris Convention)

The applicant based its application on several well-known marks ‘BROOKS’ and in all the Member States of the European Union, in the sense of Article 53(1)(a) EUTMR in conjunction with Article 8(2)(c) EUTMR, and in relation to the following goods: leather and imitations of leather and goods made of these materials, animal skins, trunks and suitcases, umbrellas, parasols and walking sticks, whip`s and saddlery, clothing, footwear, headgear.

According to Article 8(2)(c) EUTMR, for the purpose of paragraph 1, the term ‘earlier trade marks’ means, inter alia, the following:

trade marks which, on the date of application for registration of the [European Union trade mark], or, where appropriate, of the priority claimed in respect of the application for registration of the [European Union trade mark], are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

According to Article 6bis of the Paris Convention, ‘the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.’

Therefore, in order for Article 8(2)(c) EUTMR (in conjunction with Article 8(1)(a) and (b) EUTMR) to be applicable, two conditions must be fulfilled:

1. It has to be established that the earlier mark was well known in the relevant territory on the date when the contested mark was filed.

2. It has to be established that because of the identity or similarity between the contested mark and the earlier well-known mark, as well as between the goods and services covered by the marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

As seen above, one of the conditions for Article 8(2)(c) EUTMR (in conjunction with Article 8(1)(a) and (b) EUTMR) to be applicable is that the goods and services at issue are identical or similar. In the case of the well-known marks claimed by the applicant, the goods for which the marks are allegedly well known are in Classes 18 and 25. The documents filed in relation to the well-known character of the marks are those listed and explained above in the section on proof of use, and concern only some items in Class 25, namely sports clothing and sports shoes. Whether or not both types of goods reach the necessary threshold in relation to their recognition by the relevant public to be considered well known does not need to be discussed here, as they are dissimilar to the contested goods and services, for the reasons given above (in the section on likelihood of confusion). Consequently, even if the marks were to be found to be well known, the application based on Article 53(1)(a) EUTMR in conjunction with Article 8(2)(c) EUTMR must fail.

REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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 shall 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 in invalidity proceedings when the following conditions are met.

• The signs must be either identical or similar.

• The applicant’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 invalidity request 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 invalidity request 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 invalidity request may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor 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. Reputation of the earlier trade marks

According to the applicant, the earlier trade marks have a reputation in the European Union, Benelux and France.

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 19/04/2013. Therefore, the applicant was required to prove that the trade marks on which the invalidity request is based had acquired a reputation in the European Union, Benelux and France prior to that date. The evidence must also show that the reputation was acquired for the goods for which the applicant has claimed reputation. Taking into account that the applicant has filed proof of use only in relation to some of the goods for which the earlier trade marks are registered, namely sports clothing and sports footwear in Class 25, the reputation needs to be established with regard to these goods.

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.

In order to prove the reputation of the marks, the applicant filed a witness statement and supporting material, listed and thoroughly described above.

The Cancellation Division has already stated that the witness statement is exhaustive and that the affirmations contained in it are supported by extensive proof from independent sources. From all the evidence, it transpires that the applicant has a very active and well-established presence on social media, it offers its goods through numerous distributors in France and Italy, it has made an important effort to publicise its trade marks in the print media and by sponsoring sports events, it has been awarded relevant prizes in the field of sporting activities, it receives extensive media coverage in specialised publications and, as the surveys found, and Exhibits REB37-40 state, Brooks is widely known both by retailers in the field of sport shoes and by the general public interested in sports activities. It is, therefore, obvious that the earlier marks have reached a high degree of recognition in the market among the relevant public that practices sports and are reputed, especially in France and Italy. It should be recalled that, according to the judgment of 06/10/2009, C-301/07, Pago, EU:C:2009:611, § 29 and 30, reputation in one Member State may suffice for the whole of the EU territory, taking into account both the size of the geographical area concerned, the proportion of the population and the goods at issue. In the case at issue, it must be recalled that France and Italy are two very important economies in the European Union, with large populations.

However, whereas there is proof of the use of the marks on the market for sports clothing, as acknowledged above, the documents only prove reputation in the sense of a high threshold of recognition of the earlier marks on the part of the relevant public for sports shoes.

2. The signs

BROOKS
Earlier trade marks	Contested trade mark

The relevant territories are the European Union, Benelux and France.

The marks have no elements which could be viewed as more dominant than others and the elements in them are fully distinctive, although the stylisation of the contested mark, as it is not particularly imaginative, will play a lesser role in the evaluation of the similarity of the signs.

The EUTM proprietor contends that the differences between the marks result from their beginnings, and that therefore they will not go unnoticed by consumers. Whereas the first part of the statement cannot be refuted, it must be taken into account that the letters ‘B’ and ‘R’ are very short and not more dominant or distinctive than the coinciding word ‘BROOKS’.

Visually, the signs have in common the word ‘BROOKS’, which in the earlier marks is the sole word element, and in the contested trade mark follows two initials, namely ‘B.’ and ‘R.’, and is placed with them on a white background with a thick black border. The two letters ‘o’ in the middle incorporate a device in the shape of a solid black triangle which, together with the letters below, form what could be viewed as a depiction of a head and two eyes. In spite of the stylisation, the word ‘BROOKS’ will be recognised by consumers and, taking into account that this element is distinctive for the goods at issue and that the rest of the verbal elements are far shorter, it can be stated that the marks are visually highly similar.

Aurally, irrespective of the rules of pronunciation in the territories, the difference between the marks lies solely in the pronunciation of the letters ‘B’ and ‘R’, which, as explained above, are far shorter than the element that the marks have in common; therefore, the degree of aural similarity is high.

Conceptually, many of the relevant consumers will understand the word ‘BROOKS’ as a surname, and they will see in the letters ‘B’ and ‘R’ the initials of two forenames. Therefore, as the contested trade mark can be viewed as the same surname that is contained in the earlier marks, to which two initials have been added, the degree of conceptual similarity is high. Otherwise, for consumers who do not perceive any concept in the elements of the signs, the conceptual aspect does not influence the similarity between the marks.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are considered similar for the purposes of Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are highly 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 has been proven are sports shoes. The contested goods are in Class 24 and the contested services are in Class 35.

The only difference between the signs is in the addition of two letters that most probably will be understood by the public as initials preceding the family name. However, even if this were not the case, the signs have in common the longer of the contested sign’s verbal elements (‘BROOKS’), which is also the sole verbal element of the earlier marks, and the stylisation of the contested mark is not so striking that it creates a significant difference between the signs. Consequently, visually and aurally the marks are very similar. There is, as a result, a possibility of confusion among the public.

The earlier marks have acquired a strong distinctive character through use and a strong reputation for sports shoes, which will be purchased by the general public. Some of the contested goods in Class 24, for example curtains of textile, will also be purchased by the general public, whereas others, for example textile linings, namely, linen lining fabric for shoes, will be purchased by professionals. Some of the services in Class 35, such as retail services, target the general public and a professional public, whereas some others, such as business management services, mainly target a professional public.

Some of the goods in Class 24 are in neighbouring markets to sport shoes; some others, though not necessarily very close, are not particularly distant from them either and also target the general public, and a few, although they target a professional public, are used in the manufacture of sport shoes. The retail services are carried out in relation to goods in Class 24, and target the general public, so, taking into account and weighing up all the relevant factors in the present case, the Cancellation Division concludes that, when encountering the contested mark and on account of the high degree of similarity between the conflicting signs and the strong reputation of the earlier marks, the relevant consumers will be likely to associate the contested sign with the earlier signs, that is to say, establish a mental ‘link’ between the signs in relation to the goods in Class 24 and the retail services in Class 35.

On the other hand, the rest of the services in Class 35 (advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering) target the professional public, and the differences between the goods for which reputation has been proved and the contested services is so great that it is very unlikely that the public would establish a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier marks. It is even less likely that, when intending to purchase advertising services, for example, the relevant public would link those services to a trade mark that is reputed, but for sports shoes.

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 invalidity 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’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the applicant 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 applicant 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 applicant puts forward that consumers would immediately associate the applicant’s brands with one exclusive single source of origin and that, upon encountering the contested mark, they would call to mind the earlier trade marks and, accordingly, in time there would be a dilution of the attraction of the applicant’s brand. In addition, there could be tarnishing of the reputation of the applicant’s goods, which are well known for being high-end, high-quality sports shoes, with key characteristics such as quality and durability, if the contested goods did not live up to the high quality of the applicant’s goods. Furthermore, the contested sign could benefit from the enormous attractiveness and advertising value of the earlier trade marks, allowing the EUTM proprietor to ride on the coat-tails of the applicant’s marks, benefiting from the applicant’s promotional and advertising activities.

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).

The applicant claims that its products are known for quality and durability, that it has made great efforts to advertise its marks, that the earlier marks are highly similar to the contested mark and that the earlier marks have a long-standing reputation and that, given all these conditions, the contested mark could take unfair advantage of the earlier registrations.

The EUTM proprietor alleges that the counterparty has not put forward a cogent line of argument in relation to how this unfair advantage could take place, but the Cancellation Division is of the opinion that it is foreseeable that such injury would ensue from the use that the proprietor might make of its mark, and that this may be established on the basis of logical deductions made from the analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector (10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 54, upheld on appeal (C-320/07 P); 16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78; 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43). As stated above, the goods in dispute overlap partly in the public they target (the general public) and they are offered to this public in neighbouring markets. In addition, as stated above, when they target a different public (only professionals) the contested goods may be used in the manufacture of the goods for which the earlier marks have reputation. Furthermore, the retail services in Class 35 are offered in relation to the contested goods in Class 24, so it is not difficult to foresee that the EUTM proprietor could free-ride on the coat-tails of the earlier marks. For an invalidity request to be well founded in this respect, it is sufficient if only one of the types of injury is found to exist. For these reasons, the application filed under Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR must be upheld for the goods in Class 24 and the services the bringing together, for the benefit of others, of textiles and textile goods, bed covers, table covers, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

On the other hand, it has also been stated above that the relevant consumers would not establish a mental link between the marks on account of the gap between the markets where they are offered/acquired in the case of the services advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering, and, consequently, there would be no unfair advantage or detriment to the distinctiveness of the earlier marks (dilution) or to their repute (tarnishing), as the applicant contends.

The evaluation of the application will continue in relation to the services in Class 35 that are still in dispute.

EARLIER NON-REGISTERED TRADE MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 53(1)(C) EUTMR IN CONJUNCTION WITH ARTICLE 8(4) EUTMR

a) Law governing the earlier rights

According to Rule 37(b)(ii) EUTMIR, an application for a declaration of invalidity pursuant to Article 56 EUTMR must contain, as regards the grounds on which the application is based, in the case of an application pursuant to Article 53(1) EUTMR, particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.

According to Rule 37(b)(iv) EUTMIR, an application for invalidity must also contain an indication of the facts, evidence and arguments submitted in support of the grounds of invalidity.

According to Rule 39(3) EUTMIR, if the Office finds that the application does not comply with Rule 37, it will invite the applicant to remedy the deficiencies found within such period as it may specify. If the deficiencies are not remedied before expiry of the time limit, the Office will reject the application as inadmissible.

Nevertheless, an important distinction should be drawn between admissibility and substantiation requirements. Even though in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant’s entitlement to them have to be submitted together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. If, for instance, an applicant clearly identifies the earlier mark on which the application is based (Rule 37(b)(ii) EUTMIR) and indicates the evidence in support of those grounds (Rule 37(b)(iv) EUTMIR), the application will be admissible. If the evidence submitted is later found insufficient to substantiate the earlier right (e.g. the certificate is not from an official source or not translated into the language of proceedings), the application will be rejected as unfounded (by analogy, Rule 20(1) EUTMIR), and not as inadmissible (12/07/2013, R 1306/2012-4, URB EUROPE, § 21;12/07/2013, R 1310/2012-4, URB Bearings, § 21; 12/07/2013, R 1309/2012-4, URB, § 20).

According to Article 76(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows from the law as interpreted by the Court that the invalidity applicant must provide the relevant national law and show that it would succeed under that national law in preventing the use of a subsequent trade mark.

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the EUTM proprietor to exercise the right of defence.

As regards national law, the invalidity applicant must provide (i) the provisions of the applicable law (i.e. the text of the relevant law) and (ii) particulars proving fulfilment of the conditions of acquisition and of the scope of protection of the earlier right.

As far as the second prerequisite is concerned, apart from providing appropriate evidence of acquisition of the right invoked, the invalidity applicant must submit evidence that the conditions of protection vis-à-vis the contested mark are actually met and, in particular, put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the applicable law.

The applicant did not submit any provisions whatsoever regarding the national laws that are applicable in the case at issue or put forward any arguments as to why the earlier rights would succeed in preventing the use of the contested mark under the applicable law. Consequently, the invalidity application is found to be unsubstantiated and must be dismissed insofar as it is based on Article 53(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

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.