BRABO | Decision 2508862 – BRAKO GLOBAL, S.L. v. HANDELSONDERNEMING KUBUS BV

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OPPOSITION No B 2 508 862

Brako Global, S.L., Polígono Industrial El Raposal, s/n, 26580 Arnedo (La Rioja), Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Handelsonderneming Kubus BV, Amsterdamsestraatweg 19, 1411 AW Naarden, the Netherlands (applicant), represented by Antonius den Herder, Vierhuysen 30, 1111 SC Diemen, the Netherlands (professional representative).

On 13/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 508 862 is partially upheld, namely for the following contested goods:

Class 18:         Sports bags not included in other classes; school bags; beach bags; portfolios; bags of leather and artificial leather.

Class 25:         Clothing; footwear; headgear, including sports apparel, footwear and headgear; hockey pants, hockey shirts and hockey sweaters; sports underwear.

2.        European Union trade mark application No 13 298 575 is rejected for all the above goods. It may proceed for the remaining contested and non-contested goods in Classes 18 and 28, namely:

Class 18:         Suitcases of leather and artificial leather; Beauty cases (empty); animal skins; umbrellas and walking sticks.

Class 28:         Hockey sticks and accessories for practicing hockey; hockey gloves, hockey balls; hockey sport articles not included in other classes, including hockey blocks, hockey sleeves; elbow guards and leg protectors; hockey sports bags; protective gloves, knee pads and shinbone guards being sports requisites; sports equipment not included in other classes including equipment for hockey; grip straps for hockey sticks and other sporting goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 298 575, namely against some of the goods in Class 18 and all the goods in Class 25. The opposition is based on Spanish trade mark registration No 1 561 412. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 1 561 412 for the word mark ‘BRAKO’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 14/01/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 14/01/2010 to 13/01/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25:        Ready-made clothing for women, men and children, including footwear.

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

On 24/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/01/2016 to submit evidence of use of the earlier trade mark. This term was extended at the request of the opponent until 29/03/2016. On 29/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence consists of the following:

  • Document 1: Product catalogues, namely:

– Summer Catalogue 2013;

– Winter Catalogue 2012;

– Spring/Summer Catalogue 2012;

 Winter Catalogue 2014.

The catalogues are in English and Spanish and show various items of women’s footwear, such as shoes and boots, as well as the company’s address details. The goods are identified as ‘BRAKO’ and have product codes, product line names (such as ‘KARU’, ‘ROCK’, ‘LOLA’, ‘DANDY’, ‘MISTIC’, ‘MEI’, etc.) and colour identification.

  • Document 2: Twelve invoices dated in the period 20/07/2012 to 30/12/2014 issued by the Spanish company Calzados Evori, S.A. to various companies in Germany, Sweden, Spain, Belgium, France and Iceland. The invoices are for significant quantities and amounts and itemise various shoe items that correspond to the product codes identified in the catalogues.

  • Document 3: Invoice dated 11/09/2010 issued to Calzados Evori, S.A. by a Belgian company in relation to the publication of an advertisement for ‘BRAKO’ shoes in a Belgium publication. A copy of the advertisement is enclosed.

  • Document 4: Invoice dated 31/08/2012 issued to Calzados Evori, S.A. by a German company in relation to the publication of an advertisement for ‘BRAKO’ shoes in the 02/2012 issue of the German magazine ‘Schuhe & Wellness’. A copy of the advertisement is enclosed.

  • Document 5: Invoice dated 19/02/2013 issued to Calzados Evori, S.A. by a Belgian company in relation to the publication of ‘BRAKO’ shoes advertisement in the 02/2013 issue of the magazine ‘Shoes’. A copy of the advertisement is enclosed.

  • Document 6: Invoice dated 01/03/2012 issued to Calzados Evori, S.A. by a German company in relation to the publication of ‘BRAKO’ shoes advertisement in ‘ACC Season’s guide for accessories fall/winter 2012/13’. A copy of the advertisement is enclosed.

  • Document 7: Invoice dated 15/03/2013 issued to Calzados Evori, S.A. by a German company in relation to the publication of ‘BRAKO’ shoes advertisement in the 01/2013 issue of the German magazine ‘Schuhe & Wellness’. A copy of the advertisement is enclosed.

  • Document 8: Price list in relation to Winter season 2014 referring to ‘BRAKO’ shoes. The prices are in relation to various shoe models and in relation to Spain, France, Belgium, Germany/Sweden and the Scandinavian region.

  • Document 9: Advertisement in German published in the shoe guide ‘STEP, autumn/winter 2012/13’.

  • Document 10: Printout from the website www.brako.com showing the company’s history.

  • Document 11: Printout from the section ‘Where to buy’ of the website www.brako.com showing numerous points of sales of ‘BRAKO’ shoes in Spain and Europe (http://brako.com/en/where-to-buy).

  • Document 12:  Extracts from BRAKO’s blog displaying posts in relation to different ‘BRAKO’ shoe collections:

http://brako.com/en/blog/57_Floral-Print.html

http://brako.com/en/blog/51_Trend-Polka-dot.html

http://brako.com/en/blog/49_Sporty-Chic.html.

  • Document 13: Picture from BRAKO’s stand at GDS Trade Fair held in Dusseldorf, Germany in August 2014.

  • Document 14: Report entitled ‘Shoes from Spain’ issued by the Spanish Federation of Shoes in relation to the Spanish participant companies in the GDS Trade Fair in Dusseldorf, Germany in 30 July – 1 August 2014. ‘BRAKO’ by Calzados Evori, S.A. is amongst the listed 22 brands which participated in the event.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, the Opposition Division considers that there is no need to request a translation.

In fact, it must be noted that the opponent actually provided partial translation and explanation in relation to the relevant parts of the evidence and of nearly all items of the evidence. The several pieces of evidence that were not translated such as the advertisements and some invoices are self-explanatory (because they contain pictures and product codes corresponding to the catalogues) and there is no need for a translation. Finally, the applicant does not seem to complain that it does not understand the evidence – it only states that the evidence is not translated and should be dismissed. Consequently, for the above reasons, the Opposition Division considers that there is no need to request any additional translation.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

According to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

The evidence shows that the goods were manufactured in Spain and sold in various EU countries, including in Spain. This clearly shows that the goods were sold in, and exported from the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

All of the evidence is dated within the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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

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

In the present case, the applicant argues that the sign is not used as registered, as it contains additional figurative elements and/or is used together with other verbal elements. While it is true that there are instances where the sign ‘BRAKO’ appears in different colours, font or together with other words, this is not the case with all the evidence. In addition, the disputed by the applicant ‘different’ uses are acceptable variations in this case. This is because the additional figurative elements (where present) are placed as a background to the word element ‘BRAKO’. The stylisation of the letters is not unusual or striking and does not detract the attention from the verbal element. Therefore, these figurative elements are less important than the verbal element ‘BRAKO’ and are likely to be seen as decorative.

The applicant claims that the invoices show names such as ‘rock sabb’, ‘rock artic’, ‘surf jean’ or ‘rock negro’. These words do not alter the distinctive character of the sign, as they are either weak for the goods (‘negro’ or ‘jeans’ indicate colour and/or material) or designate a separate line/sub-brand/model of goods, as it is clear from the catalogues. It is quite common in the specific market area for the goods to bear not only their individual mark, but also the mark of the business or product group or the specific model name or sub-brand.

Consequently, the Opposition Division concludes that nature of use of the earlier trade mark complies with the requirements of Article 15(1) EUTMR and the mark is used as registered.

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

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

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

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 25:        Footwear for women.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition, as that there is no proof of use in relation to any of the remaining goods in Class 25.

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:

Class 25: Footwear for women.

The contested goods are the following:

Class 18: Sports bags not included in other classes; school bags; beach bags; portfolios; suitcases and bags of leather and artificial leather.

Class 25: Clothing; footwear; headgear, including sports apparel, footwear and headgear; hockey pants, hockey shirts and hockey sweaters; sports underwear.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, this term introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 footwear for women in Class 25 are goods used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested sports bags not included in other classes; school bags; beach bags; portfolios; bags of leather and artificial leather include various types of bags (such as handbags, sports bags, briefcases, purses, etc.). These goods are related to articles of footwear for women in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of footwear to directly produce and market related goods, such as bags. Moreover, these goods can be found in the same retail outlets. Therefore, these sets of goods are considered similar.

However, the contested suitcases of leather and artificial leather are considered dissimilar to footwear. Suitcases are large packing cases that clasp shut, used as luggage or for storage and for carrying things when travelling. They do not satisfy the same needs as footwear. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Contested goods in Class 25

The contested footwear, including sports footwear includes, as a broader category, the opponent’s footwear for women. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested clothing; headgear, including sports apparel and headgear; hockey pants, hockey shirts and hockey sweaters; sports underwear are similar to the opponent’s footwear for women. This is because footwear serves the same purpose as clothing and headgear: both are used to cover and protect various parts of the human body against the elements and are also articles of fashion. They are often found in the same retail outlets. Consumers, when seeking to purchase clothes and headgear will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and headgear and the contested footwear for women. Taking all these factors into account, the mentioned contested goods are considered similar to the opponent’s goods.

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

  1. The signs

BRAKO

BRABO

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).

Both marks are word marks consisting of one verbal element each, ‘BRAKO’ and ‘BRABO’, respectively. None of these elements has any descriptive/weak meaning in relation to the relevant goods and their inherent distinctiveness is normal. The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide nearly in full, namely in the sequence of letters ‘BRA*O’. They differ in their fourth letter (‘K’ in the earlier mark versus ‘B’ in the contested sign). Given the same length of the signs (five letters), the same beginning and ending of the signs and the fact that they coincide in four letters appearing in the same sequence, it is considered that they are visually similar to a high degree.  

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BRA*O’, present identically in both signs. The only difference in the pronunciation of the signs is in the sound of their fourth letter, namely ‘K’ in the earlier mark versus ‘B’ in the contested sign. Taking into account the considerable number of coincidences between the signs, they are aurally highly similar.

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 have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  1. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 the earlier mark must be seen as normal.


  1. Global assessment, other arguments and conclusion

The contested goods are partly identical and similar and partly dissimilar to the opponent’s goods. The relevant goods are directed at the public at large with an average degree of attention.

The earlier trade mark and the contested sign are visually and aurally similar to a high degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In addition, 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).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the imperfect recollection principle and the interdependence principle between the relevant factors, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 1 561 412. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition 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 Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

Gueorgui IVANOV

Liliya YORDANOVA

Andrea VALISA

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.

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