CANCELLATION No 42 785 C (REVOCATION)

Mariano Ganduxer Valldeperas and Alejandro Mallart Cebrian, C/ Joaquim Molins, 5‑7, Planta 6, 08028 Barcelona, Spain (applicants), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Champion Products Europe Limited, Suite 8, Plaza 212, Blanchardstown Corporate Park 2, 15 Blanchardstown, Dublin, Ireland (EUTM proprietor), represented by Bugnion S.P.A., Largo Michele Novaro, 1/A, 43121 Parma, Italy (professional representative).

On 28/05/2021, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 11 298 312 are revoked as from 07/04/2020 for all the contested services, namely:

Class 41: Organising sporting events; education, providing of training, entertainment and sporting activities.

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

Class 9: Optical, weighing and measuring apparatus and instruments; eyeglass; sunglasses; sports glasses; goggles for swimmers; spectacle cases and frames.

Class 24: Textiles and textile goods, not included in other classes; towels and cloths; bath towels and beach towels.

Class 35: Management, organisation and administration in retail outlets, in particular of clothing, footwear and sporting articles; retailing of optical, weighing and measuring apparatus and instruments, horological and chronometric apparatus and instruments, textiles and textile goods, bags, garments and sporting articles; electronic commerce services, namely providing information about products via telecommunication networks for advertising and sales purposes; business services relating to providing sponsorship.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 07/04/2020, the applicants filed a request for revocation of European Union trade mark No 11 298 312 (figurative mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely:

Class 41: Organising sporting events; education, providing of training, entertainment and sporting activities.

The applicants invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicants argue that the contested EUTM has not been put to genuine use in the last five years in connection with its services in Class 41, without due cause. Therefore, it should be revoked.

The EUTM proprietor describes its business trajectory and development. It declares that ‘Champion’ is a famous and widely known international leader in the sports apparel industry, and is specialised in selling branded clothing, sporting clothing and accessories. It also sponsors athletes and events, federations and teams. The ‘Champion’ trade marks are displayed on the garments and accessories of the sponsored teams. It provides the figures for the total sales and advertising investments for the period 2003-2018 in the EU. It refers to an opposition decision (20/09/2019, B 3 057 802) in which the reputation of the ‘Champion’ trade mark was confirmed by the Office. It also provides, as exhibit 0, a list of the proprietor’s trade marks containing the word ‘Champion’. The EUTM proprietor argues that the contested mark has been used for services in Class 41 in the framework of cultural and entertainment initiatives. Indeed, the EUTM proprietor organised a worldwide cultural and entertainment event to celebrate its centennial under the name ‘100 years for the team’ (exhibits 1‑2). In 2018, it helped ‘London Youth’, a charity mission, and organised the educational campaign ‘Champion x London Youth’ (exhibits 3‑4). In 2019, it created a short film to celebrate its sponsorship deal with the British boxing star Josh ‘Pretty Boy’ Kelly (exhibits 5‑6). In March 2020, because of the pandemic lockdown, the EUTM proprietor organised online training, entertainment, and sporting activities under its trade mark (exhibits 7‑12). Moreover, in June 2019, it organised, together with the online radio station NTS and the Major League Baseball (MLB), the musical event ‘Old Rivalry New Sounds London’, which took place from 25/06/2019 to 30/06/2019 in London (exhibits 13‑15). The evidence provided will be listed and analysed below.

The applicants claim that none of the documents submitted by the EUTM proprietor prove use of the contested EUTM in connection with the relevant services. The turnover and advertising investment figures do not relate to the contested services, but to sports clothing and accessories. The fact that the contested mark appears in relation to sporting, training, educational and entertainment activities does not mean that it is used to identify services, but only that the branded products (sportswear) are used in sponsoring these activities. The appearance of the contested mark in relation to these activities does not demonstrate that these activities are organised or provided by the EUTM proprietor. Sponsorship is not organisation of events, but only and exclusively an advertising measure, the purpose of which is to give visibility to the products labelled with the sponsor’s brand.

The EUTM proprietor claims that the evidence submitted clearly shows that it organised the educational event ‘Champion x Youth London’, produced a film and a short film, organised a worldwide cultural and entertainment event, online training, entertainment and sporting activities, and a musical event. Therefore, genuine use of the contested mark in relation to the relevant services is proven.

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark 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 requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37 and 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicants cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non-use.

In the present case, the EUTM was registered on 27/03/2015. The revocation request was filed on 07/04/2020. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 07/04/2015 until 06/04/2020 inclusive, for the contested services listed in the section ‘Reasons’ above.

On 07/08/2020 the EUTM proprietor submitted evidence as proof of use. The evidence to be taken into account is the following:

Exhibit 1 – Videos

Exhibit 1a: video entitled ‘Champion 100’, published on YouTube on 29/01/2019 (https://youtu.be(0xjIKHn5X2k) for the promotion of Champion sport clothing;

Exhibit 1b: video entitled ‘The Dream Team C‑100’, published on YouTube on 21/03/2019 (https://youtube.com/watch?v=oBaS1XyPRug), to promote the campaign ‘100 years for the team’;

Exhibit 1c: video entitled ‘The Crew’, published on YouTube on 15/09/2019 (https://youtube.com/watch?v=nJki_ExOQ7c), to promote ‘Champion’ sports clothing and footwear;

Exhibit 1d: video entitled ‘Champion 100-VC London’, published on YouTube on 18/02/2019 (https://youtube.com/watch?v=7qnGf54u518) to promote the campaign ‘100 years for the team’;

Exhibit 1e: video entitled ‘Champion 100-Urban Dove’, published on YouTube on 08/02/2019 (https://youtube.com/watch?v=GdzJUCothY) to promote the campaign ‘100 years for the team’;

Exhibit 1f: video entitled ‘Champion 100 years for the team’, published on Facebook on 02/03/2020 (https://facebook.com/champion/videos/1192745204226556);

Exhibit 2 – Articles

Exhibit 2a: article entitled ‘Champion celebrates 100 years of Global Collectives for the team Campaign’, published in the online magazine Hyperbeat on 18/12/2019, and the videos included in the article;

Exhibit 2b: article entitled ‘Champion Launch 100 years for the Team to celebrate their latest anniversary’, published in the UK magazine Pause on 29/01/2019;

Exhibit 2c: article entitled ‘Magic Johnson Joins Champion to celebrate 100 years for the team’, published in June 2019 in the online edition of the German magazine Highsnobiety;

Exhibit 3: video entitled ‘Champion x London Youth’, published on YouTube on 23/11/2018 (https://youtube.com/watch?=XVt9h9xv1vs);

Exhibit 4 – Articles

Exhibit 4a: article entitled ‘Watch our new campaign video: Champion London Youth’ published on the website of the UK charity ‘London Youth’ on 27/11/2018, and the video contained in that article (already submitted as exhibit 3);

Exhibit 4b: article entitled ‘Champion launches t-shirt capsule collection with London Youth’, published in the UK online edition of the magazine Fashion Network on 27/11/2018;

Exhibit 4c: article published in the UK online magazine GUAP on 17/12/2018;

Exhibit 4d: article entitled ‘Champion and London Youth reveal new charity capsule’, published in the magazine Hyperbeast on 26/11/2018;

Exhibit 5: video entitled ‘Champion x Josh Kelly’, published on YouTube on 05/04/2019;

Exhibit 6: article entitled ‘Boxer Josh Pretty Boy Kelly signs sponsorship deal with Champion’, published in the online magazine Hyperbeast on 05/04/2019, and the video contained in that article (already submitted as exhibit 5);

Exhibit 7: printout from the Instagram profile ‘championeurope’, dated 01/04/2020, related to yoga activities;

Exhibit 8: printout from the Instagram profile ‘championeurope’, dated 01/04/2020, related to a music session with a DJ;

Exhibit 9: printout from the Instagram profile ‘championeurope’, dated 31/03/2020, related to a basketball and fitness activity with the basketball player Myles Hesson;

Exhibit 10: printout from the Instagram profile ‘championeurope’, dated 30/03/2020, related to a boxing and fitness activity with the boxer Michael Conlan;

Exhibit 11: printout from the Instagram profile ‘championeurope’, dated 29/03/2020, related to a fitness activity with the basketball player Jesse Chuku;

Exhibit 12 printout from the Instagram profile ‘championeurope’, dated 26/03/2020, related to a music session with a DJ;

Exhibit 13: screenshots from the website www.nts.com showing information about the event ‘Old Rivalry New Sounds’;

Exhibit 14: promotional video of the event ‘Old Rivalry New Sounds’, published on the NTS’s Facebook page, allegedly on 24/06/2020;

Exhibit 15: printout from the Instagram profile ‘championeurope’, dated 25/06/2020, with reference to the musical event ‘Old Rivalry New Sounds’.

PRELIMINARY REMARKS

The EUTM proprietor has submitted, inter alia, evidence relating to the United Kingdom (UK) with a view to demonstrating use of the contested mark, and that evidence relates to a period prior to 01/01/2021.

On 01/02/2020, the UK withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. Therefore, use in the UK prior to the end of the transition period constituted use ‘in the EU’. Consequently, the evidence relating to the UK and to a period prior to 01/01/2021 is relevant with a view to maintaining rights in the EU and will be taken into account.

ASSESSMENT OF GENUINE USE – FACTORS

Use in relation to the registered services and extent of use

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

In view of the number of marks registered and potential conflicts between them, it is essential that the rights conferred by a mark for a given class of goods or services are maintained only where that mark has been used on the market for goods or services belonging to that class (15/01/2009, C‑495/07, Wellness, EU:C:2009:10, § 19).

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

Furthermore, the Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It must be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the EUTM proprietor has seriously tried to acquire a commercial position in the relevant market.

The condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

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 smaller the commercial volume of the exploitation of the mark, the more necessary it is for the EUTM proprietor to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37).

As the applicants claimed, all the videos and articles included in exhibits 1‑6 refer to advertising of ‘Champion’ branded clothing and accessories, and to promotion of the campaigns ‘100 years for the team’ (exhibits 1 and 2), ‘Champion x London Youth’ (exhibits 3‑4) and the sponsorship deal with Josh ‘Pretty Boy’ Kelly (exhibits 5‑6). There is no reference in those documents to the contested services being rendered under the contested mark.

Exhibits 7‑15 show the participation of the EUTM proprietor in the organisation of online training, entertainment and sporting activities, and the musical event ‘Old Rivalry New Sounds London’. However, there is no information as to the commercial volume, territorial scope, duration or frequency of use of the contested mark in relation to those services.

The turnover and advertising investment figures provided by the proprietor do not specify to what extent they refer to the contested services. They are not supported by any other evidence as regards the extent of use in relation to the relevant services. The EUTM proprietor could have filed relevant evidence – such as invoices for the provision of the services, catalogues or extracts from its website – to show the extent of use of the contested mark in relation to the relevant services. Furthermore, these figures, which come from the interested party itself, have less probative value than evidence from independent sources. Without further information from the EUTM proprietor and more documentation in support of the figures provided, the Cancellation Division cannot ascertain the extent to which they refer to the relevant services protected by the contested EUTM.

Therefore, the Cancellation Division has no solid or objective indications relating to the extent of use (the commercial volume, territorial scope, duration and frequency of use) and it cannot be deduced from the evidence submitted that the EUTM proprietor had seriously tried to acquire a commercial position in the relevant market during the relevant period in relation to the relevant services.

Although the proprietor is free to choose its means of proving the extent of use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to demonstrate the reality of the commercial use of the mark in the relevant territory, at least to an extent that is sufficient to dispel any possible belief that this use might be merely internal, sporadic or token. The materials listed above, taken as a whole, do not enable the Cancellation Division to determine genuine use of the trade mark for any of the relevant services.

For the sake of completeness, the list of the proprietor’s marks (submitted as exhibit 0) does not call this conclusion into question, since this document does not provide any indications whatsoever on the extent of use of the contested EUTM for the relevant services.

Overall assessment

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant services (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

It follows from the above that, even taken as a whole, the evidence submitted by the EUTM proprietor is insufficient to demonstrate use of the contested EUTM, since none of the documents prove the extent of use of the contested mark in relation to the relevant services.

The factors of time, place, extent and nature of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions will lead to the evidence of use being rejected as insufficient and, as the extent and/or nature of use (use in relation to the registered services) have not been established, it is not necessary to enter into the other requisites.

In its observations, the EUTM proprietor referred to an opposition decision (20/09/2019, B 3 057 802), where the reputation of the ‘Champion’ trade mark was confirmed by the Office. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the decision referred to by the EUTM proprietor is not relevant as in that case the Office analysed the reputation of the earlier mark (and not its genuine use). Moreover, it concluded that EUTM No 122 630 ‘Champion’ (word mark) had a certain degree of reputation in relation to sport apparel (and not in relation to the relevant services in Class 41).

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested services. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested services, namely:

Class 41: Organising sporting events; education, providing of training, entertainment and sporting activities.

The EUTM remains on the register for all the uncontested goods and services.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 07/04/2020.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicants in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicants are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Ana MUÑIZ RODRIGUEZ

Frédérique SULPICE

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 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.