OPPOSITION Nо B 755 290

Brooks Sports, Inc., 3400 Stone Way N, 5^th Floor, Seattle, Washington 98103, United States of America (opponent), 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

Brooks England Ltd, Downing Street, Smethwick, West Midlands B66 2PA, United Kingdom (applicant), represented by Avvocati Associati Feltrinelli & Brogi, Corso Palladio, 54, 36100 Vicenza, Italy (professional representative).

On 19/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 755 290 is partially upheld, namely for the following contested goods:

Class 25: Clothing accessories for cyclists including gloves, socks, shoes, caps.

2. European Union trade mark application No 3 298 321 is rejected for all the above goods. It may proceed for the remaining 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 3 298 321 (figurative mark), namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 162 313 ‘BROOKS’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 43(2) and (3) CTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The publication date of the contested application is 16/08/2004. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the relevant territory from 16/08/1999 to 15/08/2004 inclusive.

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 relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Athletically-related footwear.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 19/12/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent a time limit to submit evidence of use of the earlier trade mark, which was further extended until 24/04/2019. On 24/04/2019, the opponent submitted some preliminary documents and requested a further extension of the time limit. The Office rejected the request for an extension but granted the opponent, on the grounds of equity, a further six-day period, expiring on 01/05/2019. The opponent failed to submit the required evidence within the given time limit. However, on 25/06/2019, within two months of the expiry of the unobserved time limit pursuant to Article 105 EUTMR, the opponent submitted a request for continuation of proceedings, together with evidence of use. The opponent’s request was accepted by the Office on 27/06/2019, and the proof of use submitted was sent to the applicant on the same date.

The evidence to be taken into account is the following.

 Exhibits 1A-1H: five distribution and licensing agreements between the opponent and European entities for all or part of the relevant period (exhibits 1A-1E), and three agency agreements between the opponent’s German affiliate, Brooks Sports GmbH, for part of that period (exhibits 1F-1H). Details of this evidence is as follows:

o Exhibit 1A: a distribution/licensing agreement, dated 01/02/1998, for athletic, sports and outdoor footwear, apparel and accessories under, inter alia, the trade mark ‘BROOKS’ for the period 01/01/1999-31/12/2003 in the Benelux countries.

o Exhibits 1B and 1C: a distribution/licensing agreement, dated 01/01/1998, for footwear, apparel, bags and accessories, under, inter alia, the trade mark ‘BROOKS’ in Sweden for the period 01/01/1998-31/12/2002. Also, an amendment thereof, dated June 2000, to include Denmark.

o Exhibit 1D: a distribution/licensing agreement, dated 26/07/2000, for athletic, sports and outdoor footwear, apparel and accessories, under, inter alia, the trade mark ‘BROOKS’, in the territories of Estonia, Latvia, Lithuania and Finland, for the period 01/01/2000-31/12/2004.

o Exhibit 1E: a distribution/licensing agreement, dated 08/12/1999, for athletic, sports and outdoor footwear, apparel and accessories, under, inter alia, the trade mark ‘BROOKS’, in the territory of the Ireland and the UK for the period 31/07/1999-31/12/2004.

The aforementioned distribution and licensing agreements also refer to other trade marks of the opponent, such as , and .

o Exhibit 1F: an agency agreement, dated 29/05/2000, for the task of negotiating sales contracts on the opponent’s behalf, in relation to ‘BROOKS’ running shoes and apparel in the territories of France, DOM TOM, and Andorra.

o Exhibit 1G: an agency agreement, dated 15/07/2003, for the task of negotiating sales contracts on the opponent’s behalf, in relation to ‘BROOKS’ running shoes and apparel in the territory of Spain.

o Exhibit 1H: an agency agreement, dated 15/10/2003, for the task of negotiating sales contracts on the opponent’s behalf, in relation to ‘BROOKS’ running shoes and apparel for the territory of Italy.

 Exhibit 2: 16 purchase orders issued by the opponent’s distributor for the United Kingdom and Ireland for footwear between 30/09/1999 and 08/07/2003. The first 14 purchase orders are addressed to the opponent, and the last two are addressed to its Germany-based affiliate Brooks Sports GmbH. All purchase orders indicate the number of pairs; whether they are men’s, women’s or unisex; the price per pair; and the total price in USD. The description of the products refers not to the earlier mark, ‘BROOKS’, but to the specific model in each case (e.g. ‘Addiction 4’, ‘Adrenaline GTS’, ‘Trance’, ‘Vapor’, ‘Hyperion II’, ‘Beast’, ‘Mach 5.0’, ‘Hyperion Racer’, ‘Glycerin’, ‘Trespass’, ‘Illusion 2’ and ‘Dyad’).

 Exhibit 3: 18 invoices issued by the opponent’s distributor for Ireland and the United Kingdom for ‘BROOKS’ footwear between 19/10/1999 and 28/08/2003 to sport retailers in the United Kingdom. The invoices mention the number of pairs, the price per pair and the total price in GBP, as well as the models (e.g. ‘Beast’, ‘Adrenaline GTS’, ‘Vapor’, ‘Radius IV/257’, ‘Addiction 4’, ‘Coyote’, ‘Argon’, ‘GTS’, ‘Triton’, and ‘Trance NXS’).

 Exhibits 4A-4G: seven price lists for ‘BROOKS’ shoes. All the lists have the sign at the top on the left-hand side.

o Exhibits 4A and 4B: price lists in German and English from the opponent’s distributor Brooks Sports GmbH corresponding to several seasons (‘Herbst 2001’, ‘Herbst/Winter 2002’, and ‘Herbst/Winter 2004’). The prices appear in DEM in one of the lists, and in EUR in the rest. Some of the models indicated in the purchase orders and invoices of exhibits 2 and 3 appear in the price lists under the following categories: ‘running’ (‘Trance’, ‘Beast’, ‘Hyperion’, ‘Adrenaline GTS’, ‘Addiction IV’, ‘Vapor’, ‘Glycerin’), ‘trail running’ (‘Trespass’) and ‘racing’ (‘Mach 5.0’).

o Exhibit 4C: a price list in German and English from an Austrian distributor, for the ‘Herbst/Winter 2002’ season (prices in EUR). Some of the models indicated in the purchase orders and invoices of exhibits 2 and 3 appear in the price list under the following categories: ‘running’ (‘Trance’, ‘Beast’, ‘Hyperion’, ‘Adrenaline GTS’, ‘Addiction IV’, ‘Vapor’, ‘Glycerin’), ‘trail running’ (‘Trespass’) and ‘racing’ (‘Mach 5.0’ and ‘Hyperion Racer’).

o Exhibits 4D-4G: price lists from Brooks Sports GmbH for the Austrian market – season ‘HW 2003’ (in German with some terms in English); the Spanish market, ‘otoño/invierno 2004’ (in Spanish with some terms in English); the Italian market, ‘autunno/inverno 2004’ (in Italian with some terms in English); and the French market ‘Automne/Hiver 2004’ (in French with some terms in English). Some of the models indicated in the purchase orders and invoices of exhibits 2 and 3 appear in the price lists either under the ‘running’ category (e.g. ‘Vapor’) or under headings usually employed for running shoes, such as ‘cushion’, ‘pronación’, ‘anti pronazione’ (e.g. ‘Trance/Trance NXS’, ‘Beast’, ‘Adrenaline GTS’, ‘Glycerin’, ‘Illusion 2’, ‘Addiction IV/V’, ‘Dyad’, ‘Radius’). It is noted that the price list for Italy includes a decontextualised table with some references that suggest clothing items for men (e.g. ‘AIRPLEX Pant/ VEST’).

 Exhibit 5: customer turnover lists from the opponent’s distributor for Ireland and the United Kingdom, printed on 16/11/2005, indicating customer (sports shops) turnover for the years 1999-2003 by customer and calendar year. There is no reference to the earlier mark.

 Exhibit 6: an email, dated 24/06/2019, sent to the opponent’s representative by a former sales representative of the opponent’s distributor for Ireland and the United Kingdom, according to the opponent, in respect of ‘Brooks Evidence 1999-2003’. It includes a table of sales by year (1999-2003), which indicates product group (‘footwear’ and ‘apparel’), total sales, and units sold (in GBP). It is not evident which trade mark the sales correspond to.

 Exhibit 7: an extract from a presentation, in German, given at a sales meeting in 2002 in Münster, as can be deduced from the title (‘Willkommen zum Herbst 2002 Salesmeeting in Münster’) and as indicated by the opponent. The sign appears on the first slide. The second slide indicates bestsellers of the opponent’s Germany-based distribution company since 1998, as indicated by the opponent. The third slide specifies the average retail price in EUR for certain models under the category ‘Running’, namely: ‘Einsteiger’, ‘Vapor’, ‘Glycerin’, ‘Hyperion’, ‘Adrenaline’, ‘Addiction’, ‘Trance’ and ‘Beast’.

 Exhibits 8A and 8B: extracts of internal presentations, in English, including data corresponding to 2003 and 2004. The presentations include sales data, market trends in Germany (exhibit 8A), and in Austria, France, Germany, Italy, Spain and Switzerland (exhibit 8B), and comments about, inter alia, ‘Brook Shoes’; models (e.g. ‘Adrenaline’); ‘Brooks Sports’ / ‘Brooks products’ (in particular in the running sector); and references to competitors in the market.

 Exhibit 9: a presentation entitled ‘2003 International Sales Meeting – Fall 2002’. The presentation includes pictures of references to models of running footwear. Many of the references that appear in the purchase orders and invoices of exhibits 2 and 3 appear also in this presentation. Some of them bear the earlier sign on the rear section, on one side of the shoe, and/or on the sole, as shown below. The presentation shows the sign on each slide.

(Beast) (Addiction V) (Mach 5.0 & Mach 6.0 Spike)

, , , .

 Exhibit 10: a document entitled ‘History of Brooks Sports Inc.’, from www.fundinguniverse.com, which refers, inter alia, to the opponent as a ‘small yet well-recognized athletic footwear and apparel manufacturer, best known for its running shoes’. The document indicates as its source the International Directory of Company Histories, Vol. 32. St. James Press, 2000.

 Exhibit 11: a summary of the opponent’s history in English, available at www.brooksrunning.com/en_de/meetbrooks/our-history (‘Brooks Running – Our History: Over 100 years of thinking of our feet’). According to the document, while the company started in 1914 manufacturing ballet slippers and bathing shoes, it later turned to mainstream sports, starting to focus on running shoes in 1972 and being fully devoted to running since 2001. The ‘Beast’ model was first released in 1992. Together with ‘Addiction’ and ‘Adrenaline’, these shoes are said to have been some of the bestsellers ever since. ‘Adrenaline GTS 4’ was launched in 2002, winning the Runner’s World’s Best Update Award and Running Network’s Best Renovation Gold Medal, and becoming Brooks’ best-selling shoe. The final pages identify Brooks Sports BV of Amsterdam, the Netherlands, as the website operator and Brooks Sports GmbH in Münster, Germany, as the contact.

 Exhibits 12A-12J: 10 reviews of ‘BROOKS’ running shoes from www.runnersworld.com/uk between 2000 and 2004, namely reviews of ‘Brooks Beast/Ariel’ published on 16/06/2000; ‘Brooks Vapor’ published on 16/06/2000; ‘Brooks Hyperion 2’ published on 16/06/2000; ‘Brooks Addiction 5’ published on 09/10/2000; ‘Brooks Dyad’ published on 24/01/2003; ‘Brooks Illusion’ published on 24/01/2003; ‘Brooks Adrenaline GTS’ published on 25/04/2003; ‘Brooks Alta’ published on 20/10/2003; ‘Brooks Glycerin’ published on 21/08/2003; and ‘Brooks Epiphany’ published on 01/03/2004. Most of the models coincide with those shown in the purchase orders and invoices of exhibits 2 and 3.

 Exhibit 13: a presentation about RUNNER’S WORLD, which, according to the information provided, is the world’s best-selling / the UK’s largest running magazine (total circulation 94 456 in 2008 with approximately two thirds of these being subscribers; total readership 298 000).

 Exhibit 14: an article in German from the German magazine test, Issue 6/2002 (‘Nicht für alle gut gelaufen’), with a comparison of running shoes for men and women. ‘Brooks Adrenaline GTS II’ is one of the models that can be seen.

 Exhibit 15: an extract from an article published on www.running-magazin.de Special April 2003. Even though the article is in German, it is easy to see that it compares running shoes of different trade marks. Among the shoes compared are various ‘BROOKS’ models, namely ‘Brooks Adrenaline GTS 4’, ‘Brooks Vapor V’, and ‘Brooks Glycerin’, which appear in the purchase orders and invoices of exhibits 2 and 3.

 Exhibits 16A-16H: screenshots of several of the opponent’s websites from the Wayback Machine internet archive, showing images of runners / running shoes, and summaries of the company’s history and shoe features, all under the signs ‘BROOKS’, and (exhibits 16A-16C are extracts from the opponent’s German website at http://www.brookssports.de dated 15/06/2000, 14/10/2000 and 28/09/2001, respectively; exhibits 16D, 16G and 16H are extracts from the opponent’s British website at http://brooksrunning.co.uk dated 31/05/2002, 20/03/2003 and 02/10/2003, respectively; exhibit 16E is an extract from the opponent’s home page at http://www.brooksrunning.com dated 24/05/2002, showing ‘Germany’ as an option in the dropdown menu; exhibit 16F is an extract from www.brooksrunning.com dated 29/11/2000, showing ‘U. Kingdom’ as an option in the drop-down menu).

 Exhibit 17: an affidavit signed by the opponent’s Corporate Responsibility and Legal Analyst on 24/06/2019, summarising the company’s history and including data in respect of the trade mark ‘BROOKS’ (e.g. that ‘BROOKS’ is the opponent’s ‘house mark’, used mainly for running shoes). The declaration includes a table corresponding to sales figures in respect of Germany, Ireland and the United Kingdom for the relevant period, as well as images of running shoes / soles bearing the earlier mark ‘BROOKS’ (images from the presentation also attached as exhibit 9).

Assessment of the evidence

The applicant contests the evidence of use submitted by the opponent on several grounds, such as the absence of translations of some of the items. This, in the applicant’s view, renders them irrelevant. However, the opponent is not obliged to translate the proof of use, unless specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, such as the product reviews in exhibits 14 and 15, which present pictures and a product identification of a self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant also 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. However, this argument is based on an individual assessment of each item of evidence regarding all the relevant factors, whereas, 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.

As far as the affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence, as the applicant highlights, since the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The invoices and purchase orders in exhibits 2 and 3, as well as other items, such as the magazine reviews in exhibits 12A-12J, 14 and 15, and, to a lesser extent, the price lists (exhibits 4A-4G) (as the applicant noted, these latter items lack verifiable objective context), show that the place of use is the relevant territory. This can be inferred from the language of the documents (mostly English and German) and the addresses on the invoices and purchase orders.

However, use in the European Union does not imply use in each and every Member State. As the Court has indicated (19/12/201228/03/2011, C‑149/11, Onel / Omel, EU:C:2012:816), it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 58). Use of an EUTM in the United Kingdom (15/07/2015, T‑398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57) or even in London and its immediate surroundings may be geographically sufficient (30/01/2015, T‑278/13, now, EU:T:2015:57). Therefore, taking into account that evidence of use has been filed in respect of, at least, Germany and the United Kingdom, use has been made of the mark in the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, in particular the invoices and purchase orders in exhibits 2 and 3, in combination with the information provided in other items, such as the product reviews and the price lists (exhibits 4A-4G, 12A-12J, 14 and 15), show sufficiently widespread and long-lasting use of the mark in the relevant territory. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that 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 47(2) and (3) EUTMR, Article 18 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.

The applicant argues that the evidence does not show public use of the earlier mark, particularly taking into account the distribution and licensing agreements (exhibits 1A-1H), which include other trade marks of the opponent; the invoices/purchase orders issued by distributors (exhibits 2 and 3), which do not include the sign ‘BROOKS’ within the product descriptions; and the internal documents and presentations submitted (e.g. exhibits 7-9). The applicant also considers that ‘BROOKS’ has only been used during the relevant period as a company name.

In this respect, it is noted that the mark must indeed be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). Outward use does not necessarily imply use aimed at end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to which the intermediary sells products it has had manufactured by original producers (21/11/2013, T‑524/12, RECARO, EU:T:2013:604, § 25-26).

Relevant evidence can also validly come from a distribution company that forms part of a group. Distribution is a method of business organisation that is common in the course of trade and implies use of the mark that cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32).

In the present case, the evidence shows use of the sign mainly as ‘BROOKS’ (on the goods themselves and in product reviews), and (in particular in internal documents and on web pages) and also as part of a company name and of a domain name (‘brooksrunning.com’).

The signs and differ from the sign as registered in their figurative depictions. However, the typeface is still in rather standard upper-case letters; the addition of the registered trade mark symbol ® is an informative indication that the sign is purportedly registered and is not part of the trade mark as such, for which reason it is not taken into consideration for the purposes of comparison between conflicting signs; and the figurative element would have less impact than the verbal element ‘BROOKS’, considering also that (i) using word marks together with figurative devices is a common practice in the sports market, and (ii) in the present case, the use of the sign this way is mainly reduced to internal documents (presentations, price lists) and web pages.

Since the additions concern elements that will, in any case, have less impact on the overall impression of the sign than the element ‘BROOKS’, they cannot substantially affect the distinctive character of the earlier mark as registered.

The fact that the distribution and licensing agreements (exhibits 1A-1E) also refer to other trade marks belonging to the opponent has an impact on determining the specific goods traded under the relevant mark, but cannot call into question the fact that the mark ‘BROOKS’ was also included in those agreements. Also, even if some of the items (e.g. invoices and purchase orders) refer to ‘BROOKS’ as a company name and other pieces of evidence show ‘brooks’ as part of a domain name, it should be noted that use or reference of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56). In addition, a depiction of the mark on advertising material relating to the goods in question constitutes direct evidence that the mark has been put to genuine use. Furthermore, even if the use of a sign as a domain name primarily identifies the website, such use may also constitute use of a registered mark, since it connects to a site on which the goods appear.

Furthermore, the abovementioned items of evidence are supplemented by the affidavit (exhibit 17), which indicates that ‘BROOKS’ is the opponent’s ‘house mark’ and reproduces pictures included in some of the internal documents (exhibit 9) of goods (running shoes) bearing the sign ‘BROOKS’. It is in fact common in the sports industry to have a ‘house mark’ together with other signs that identify specific models. Even if the pictures that show the sign ‘BROOKS’ on running shoes come from internal sources, when they are combined with other independent items – such as the product reviews (exhibits 12A-12J, 14 and 15), which identify the products under the sign ‘Brooks’ followed by the specific model name – they allow the conclusion that the sign has been used as registered and with the intention of identifying goods in the marketplace.

Therefore, the Opposition Division considers that the evidence does show use of the sign as registered, within the meaning of Article 18(1), second subparagraph, point (a), EUTMR, and in accordance with its function, which is to guarantee the identity of the origin of the goods for which it is 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, 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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although it is not particularly exhaustive, it does reach the minimum level necessary to establish 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 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for running shoes, which can be considered to form an objective subcategory of athletically-related footwear in Class 25. The Opposition Division therefore considers that genuine use of the trade mark has been proven only in relation to running shoes in Class 25, and will only consider these goods in its further examination of the opposition.

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.

a) The goods

The goods on which the opposition is based and in relation to which genuine use has been proven are the following:

Class 25: Running shoes.

The contested goods are the following:

Class 18: Bags, handbags, rucksacks, small rucksacks, bumbags, all for cyclists.

Class 25: Jackets, shorts, trousers, jerseys, dungarees, tops, bodysuits, all for cyclists; clothing accessories for cyclists including gloves, socks, shoes, caps.

An interpretation of the wording of the applicant’s list of goods (clothing accessories for cyclists including gloves, socks, shoes, caps) is required to determine the scope of protection of these goods.

The term ‘including’ usually 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, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107). However, since the applicant has expressly indicated that this specification includes goods such as shoes, the broad category of clothing accessories for cyclists must, in this case, be considered to include these specific goods.

Furthermore, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

As the applicant highlights, all the contested goods are for cyclists. This specification is very relevant, since the market reality shows that running and cycling are different segments within the sports industry.

Against this background, it can be held that the opponent’s running shoes have something relevant in common with the contested clothing accessories for cyclists including gloves, socks, shoes, caps. These goods explicitly refer to (cycling) shoes, which are similar to a low degree to the opponent’s goods, because they have the same nature and method of use, and target the same public.

The rest of the contested goods in Classes 18 (bags, handbags, rucksacks, small rucksacks, bumbags, all for cyclists) and 25 (jackets, shorts, trousers, jerseys, dungarees, tops, bodysuits, all for cyclists) are dissimilar to the opponent’s running shoes, since they have nothing relevant in common, given their different market segments. Indeed, the contested goods in Class 18 concern types of bags tailored to the practice of cycling, while the rest of the goods in Class 25 are various articles of clothing for cycling. These goods have different natures, purposes and methods of use than the opponent’s running shoes. They do not necessarily target the same public and do not share distribution channels, since although many sport-related articles can be found in large outlets, the goods at issue are not placed in close proximity to each other, contrary to the opponent’s arguments. These goods are neither complementary nor in competition, and their manufacturers are usually different (given the specific know-how and particularities involved in their production).

b) 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 similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise (professional sporting public). The degree of attention is deemed to be average.

c) The signs and distinctiveness of the earlier mark

BROOKS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The coinciding element ‘BROOKS’ is meaningful in some countries, such as those where English is understood, where it will be perceived as meaning ‘small streams’ (see Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/brook). This element is meaningless in other countries, such as in Spain, Italy and Portugal, although it cannot be excluded that it could be perceived throughout the relevant territory as a surname of Anglo-Saxon origin. In any event, since this element does not convey any meaning in respect of the relevant goods, it is distinctive.

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se, which, taking into account the above, must be seen as normal.

The element ‘BROOKS’ is slightly stylised in the contested sign, due to its intertwined ‘O’s. However, this does not prevent consumers from immediately grasping the verbal element and its meaning, if any is perceived. The element ‘ENGLAND’, depicted in much smaller upper-case typeface, is placed underneath. This second element will be understood throughout the territory as the name in English of the largest constituent country of the United Kingdom, because it is a basic English word, widely used in trade. This element conveys obvious and direct information regarding the geographical origin of the goods, and as such it has a limited degree of distinctiveness, at most (13/09/2018, R 2580/2017‑1, HOMES ENGLAND). Furthermore, the verbal element ‘BROOKS’ is clearly the dominant (eye-catching) element in the contested sign due to its size and position.

Visually, the signs coincide in the element ‘BROOKS’, constituting the whole of the earlier mark, and the first and most distinctive element in the contested sign. The signs differ in the contested sign’s secondary element ‘ENGLAND’ and graphic stylisation, which also plays a secondary role.

It is relevant to note that the coincidences between the signs are located at the beginning of the contested sign, which is the part of the sign that first catches the attention of the reader, since the public reads from left to right and from top to bottom (25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30; 21/01/2010, T‑34/07, DSBW, EU:T:2010:21, § 43-45).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘BROOKS’, present in both signs. The pronunciation differs in the sound of the element ‛ENGLAND’ of the contested sign, which has no counterpart in the earlier mark and is of limited distinctiveness, at most.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that perceives a meaning in the coinciding element ‘BROOKS’, the signs are conceptually highly similar; while for that part of the public that only perceives a meaning in ‘ENGLAND’, one of the signs lacks any meaning, and the signs are not similar. However, this conclusion has to be put into perspective since it derives from the presence in the contested sign of an element that has a limited degree of distinctiveness, at most.

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

d) Global assessment, other arguments and conclusion

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).

The goods are partly similar to a low degree and partly dissimilar. The contested sign is visually and aurally highly similar to the earlier mark, because the only element of the latter is fully reproduced in the contested sign as its first, and most distinctive and dominant, element. Conceptually, the signs are either highly similar or not similar depending on how the coinciding element ‘BROOKS’ is perceived. The similarities found between the signs clearly offset the low degree of similarity found between some of the goods on account of the aforementioned interdependence principle. This leads to the conclusion that consumers will not be able to safely distinguish between them. This conclusion holds true irrespective of the average degree of attention paid and the normal inherent distinctive character of the earlier mark.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, it is very likely that the relevant consumers will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that its brand ‘BROOKS’/ has immense reputation and fame, with almost 150 years of tradition and expertise. It submitted various items of evidence to substantiate this claim.

However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 162 313 ‘BROOKS’.

It follows from the above that the contested trade mark must be rejected for the goods found similar to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to goods that are similar to a low degree. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Marta GARCÍA COLLADO

Alicia BLAYA ALGARRA

Michal KRUK

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.