OPPOSITION No B 2 232 190

OPPOSITION DIVISION

OPPOSITION No B 2 232 190

SDI (Wigan) IP Limited, Unit A, Brook Park East, Shirebrook NG20 8RY, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue London, EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

Travel Fox International Incorporation, 18F-1 No. 510, Sec. 5, Chung-hsiao E. RD. Taipei, Taiwan (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 10/10/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 232 190 is partially upheld, namely for the following contested goods:

Class 18: All-purpose carrying bags, backpacks, bands of leather, beach bags, belt bags, gym bags, handbags, haversacks; key bags, leather bags, purses, rucksacks for mountaineers, shopping bags made of skin, string bags for shopping, textile shopping bags, waist bags, wallets.

Class 25: Clothing, namely, belts, camisoles, coats, dresses, gloves, hosiery, jackets, layettes, neckties, overcoats, pajamas, pants, pantyhose, pullovers, scarves, shirts, shoulder wraps, singlets, skirts, socks, sports jerseys, stockings, stuff jackets, suits, T-shirts, topcoats, trousers, vests; footwear, namely, boots and shoes; headgear, namely, caps and hats.

2. European Union trade mark application No 11 772 811 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

Preliminary remark:

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 11 772 811 for the figurative mark , namely against all the goods in Classes 18 and 25. The opposition is based on the European Union trade mark registration No 437 533 for the figurative mark , the United Kingdom trade mark registration No 1 399 292 for the figurative mark and the non-registered word trade mark ‘TRAVEL FOX’ used in the course of trade in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland. The opponent invoked Articles 8(1)(b), 8(4) and (5) EUTMR.

I. PRELIMINARY REMARKS

In the notice of opposition the opponent indicated that the opposition is based on all goods of European Union trade mark registration No 437 533, namely all the goods in Classes 18, 25 and 28.

However, by decision rendered in Cancellation proceedings No 9269 C of 09/09/2015, confirmed by decision R 2164/2015-5 of 05/12/2016 by the Boards of Appeal, the European Union trade mark registration No 437 533 has been partially revoked, namely for all the goods in Classes 18 and 28 and some of the goods in Class 25. As both decisions became final and binding, the earlier European Union trade mark registration remains registered only for clothing, footwear in Class 25.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the above mentioned European Union trade mark registration No 437 533.

II. PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (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 marks on which the opposition is based, i.a. the European trade mark registration No 437 533.

The contested application was published on 28/05/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based was put to genuine use in the European Union from 28/05/2008 to 27/05/2013 inclusive.

The request was submitted in due time and is admissible as 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 (after the above mentioned partial cancellation of the earlier European Union trade mark registration No 437 533) for the following goods:

Class 25: Clothing, footwear.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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 20/08/2014, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 01/11/2014 to submit evidence of use of the earlier trade mark. Upon the opponent’s request this time limit has been extended until 01/01/2015. On 02/01/2015, within the time limit (01/01/2015 being a bank holiday), the opponent submitted evidence of use. Already before that, on 27/05/2014, within the time limit given to the opponent to substantiate the earlier rights and to submit any relevant material, the opponent provided several documents in order to prove the reputation of its earlier trade marks.

The evidence to be taken into account is the following:

Evidence submitted on 27/05/2014

A witness statement of 27/05/2014 made and duly signed by Mr Fernando Cesaretti, of the Cesaretti family, explaining creation, history and development of the brand ‘Travel Fox’.
A witness statement of Mr David Michael Forsey, who is since 03/03/2009 the director of SDI (Wigan) IP Limited (the opponent), dated 22/05/2014. Mr Forsey explains i.a. that the ‘Travel Fox’ brand became prominent in the European Community in the 1980s and has been sold a number of times over the years. The witness statement is accompanied by the following attachments (Exhibits DMF-1 to DMF-34):
Exhibit DMF-1: Online article from 16/02/2012 with the title Travel Fox Trainers published on the website www.doyouremember.co.uk, which does mention that the Travel Fox trainers were known in 80s and 90s. However, it also mentions the following: ‘….wore them in the 90s until the brand became see as uncool and the brand spent the next few years trying to remarket Travel Fox trainers….’ and ‘In 2007, the chain JJB Sports bought the Travel Fox label and the rest, as we can safely say is history.’
Exhibit DMF-2: Extract from an online blog post on www.vice.com mentioning again the popularity of the Travel Fox trainers in the 90s. The title of this article is ‘Forgotten sneaker brands’.
Exhibit DMF-3: Blog post from 06/08/2009 from the website www.kickgamedvd.blogspot.co.uk which according to the opponent mentions i.a. the following ‘back in the mid 80s to early 90s…Travel Fox was the ultimate alternative to your average old kicks combining sneakers, shoes and boots in one trendy shoe.’ The Opposition Division notes, that it cannot find the cited text there.
Exhibit DMF-4: A copy of an article from the New York Times, dated 06/01/1988 which refers to the advertising of Travel Fox sneakers.
Exhibit DMF-5: Extracts from the website www.uomoclassico.com providing examples of advertising for Travel Fox sneakers for the Spring/Summer 1987 and Fall/Winter 1988 seasons.
Exhibit DMF-6: Extracts from the website www.vissinternational.com, including text what seems to be Taiwanese.
Exhibit DMF-7: Extracts from, according to the opponent, a Travel Fox brochure, which includes examples of advertisement for Travel Fox sneakers in 1986, 1987, 1989 as well as for the period between 1990-1994
Exhibit DMF-8: Copy of an article from Footwear News dated 05/08/1996 referring to the Travel Fox sneakers and their popularity in the 90s.
Exhibit DMF-9: Copy of an article from ‘The Independent’ dated 14/03/1997, that lists a model of TRAVEL FOX branded footwear as being the tenth in the top ten bestsellers in the prior week at Offspring, a shoe outlet in London’s Covent Garden.
Exhibit DMF-10: A copy of an article from Daily Mail dated 12/05/1990 mentioning inter alia that Kylie Minogue ‘…prefers Italian-made Travel Fox trainers…’.
Exhibit DMF-11: Copy of an article from ‘Footwear News’ dated 07/05/1990 mentioning a few celebrities which wore TRAVEL FOX footwear. The article was published in the United States.
Exhibit DMF-12: An extract from the lyrics of song by the US-rapper ‘Raekwon’, mentioning Travel Fox.
Exhibit DMF-13: Copy of a few articles from ‘Footwear News’ from 1992 mentioning TRAVEL FOX footwear. These articles were published in the United States.
Exhibit DMF-14: A copy of an article published in ‘Sunday Times’, a London based newspaper, dated 12/08/2012, in which TRAVEL FOX footwear is mentioned, as popular trainers back then (referring to 90s).
Exhibit DMF-15: An extract from the ‘Annual Report and Accounts 2009’ of the company JJB Sports Plc (‘JJB’) showing in the section ‘Other intangible assets’ that JJB acquired the ‘TRAVEL FOX’ brand in 2008 for £2,150,000. Mr. Forsey explains that the rights to the ‘TRAVEL FOX’ marks, including the ‘TRAVEL FOX’ EUTM registrations, were sold by JJB Sports to the opponent following JJB's entry into administration on 24 September 2012.
Exhibit DMF-16: An article from ‘Birmingham Post’ dated 17/04/2008 entitled ‘Chain’s Strategy to re-energize sales’ that refers to the introduction of high-end own-brands, such as ‘TRAVEL FOX’, as being part of the strategy for reenergising JJB's stores.
Exhibit DMF-17: An article from ‘The Independent’ dated 17/04/2008 entitled ‘JJB Sports’ axes 72 shops after profits dive 28%’ in which JJB was described as increasing the focus on own-brand products, including the recently purchased Champion and Travel Fox labels, which deliver a significant higher margin.
Exhibit DMF-18: An extract from Yahoo Finance online of 07/03/2014 about the company JJB. It identifies it as one of UK’s largest sporting goods chains operating about 185 stores in England and Ireland with 5,105 employees (2012). In addition, ‘Travel Fox’ is mentioned as one of JJB’s own brands sold at the stores.
Exhibit DMF-19: Extracts from the product archive website www.productwiki.com dated 12/09/2012 which show various items bearing the ‘TRAVEL FOX’ brand, including product information, pictures and prices in GBP. The supplier is identified as JJB Sports and it is mentioned, in relation to all the product entries, that This product is no longer available on out network. It was last seen on 03/07/2013. In particular, the footwear and clothing shown are identified as ‘Travel Fox Mens Jog Pants’, ‘Travel Fox Houston Mens Mid-Top Trainers’, ‘Travel Fox Jackson Mens Canvas Trainers’, ‘Travel Fox Leo Mens Pumps’, ‘Travel Fox Lightweight Mesh Mens Jacket’ and ‘Travel Fox Full Zip Fleece Hoodie Trainers’.
Exhibit DMF-20: Design drawings dated 02/06/2011 for Autumn - Winter 2011 season. The customer is indicated as JJB and some of the drawings indicate Collection: Mens, while other product design drawings indicate Collection: Mens Travel Fox (p. 78, p. 80, p.81, p.84 and p.86). The ‘Travel Fox’ clothing includes mens’ clothing items, such as hoodies, jackets, pants, etc. The following brands can be seen
Exhibit DMF-21: Representations of a swing ticket, a care label and a back neck label. According to the explanation of Mr. Forsey, the labels were created for the ‘TRAVEL FOX’ brand by or for JJB. The labels are the following: .
Exhibit DMF-22: A graphic design (date and source not indicated) showing a depiction of a shoe with the ‘Travel Fox’ brand on it . According to the explanation of Mr. Forsey, this design was created by or for JJB for the ‘TRAVEL FOX’ brand, which plays on the brand's heritage.
Exhibit DMF-23: LinkedIn profiles of several former JJB employees (footwear and fashion designers, head of design and buying department) demonstrating that these employees were responsible (within the relevant period) for designing and/or developing footwear and apparel for in-house brands including ‘TRAVEL FOX’, ‘Champion’, ‘Mountain Ridge’, etc. The extracts are from 07/03/2014.
Exhibit DMF-24: A list of JJB stores that, according to the opponent, were selling ‘TRAVEL FOX’ branded goods. The list includes over 350 stores and shows store location and store identity number. Mr. Forsey states that the stores were located throughout the United Kingdom, including in Wales, Scotland and Northern Island and that these stores include JJB's Original Shoe Company branded stores.
Exhibit DMF-25: A screenshot from the website www.dressme.com of 07/03/2014, ‘retailer’ section, showing the full address details of some of JJB stores in various UK cities that stocked ‘TRAVEL FOX’ goods.
Exhibit DMF-26: Several stock deliver forms for JJB’s Broughton Park store in North-West England and JJB’s Fosse Park store in central England that include references to TRAVEL FOX branded footwear. The invoices are from i.a. April, May, June, July, September 2012. The store ID numbers in the list of stores of Exhibit DMF-24 corresponds to the branch number in these forms. The invoice forms show the stock delivered to the mentioned specific store on the specific date, including information such as product code, brand, style, colour, size and retail price of the goods. The invoices contain references to various products, inter alia, ‘TRAVEL FOX’ branded footwear styles such as ‘Travel Fox Leo’, ‘Travel Fox Jackson’ and ‘Travel Fox Miller’.
Exhibit DMF-27: A set of JJB purchase order forms for various ‘TRAVEL FOX’ footwear models. The date of order placement is 03/06/2008 and the factory date is indicated as 28/07/2008 (both dates are outside the relevant period). The quantities of footwear ordered range from approximately 1,000 to 1,600 units.
Exhibit DMF-28: A copy of a sheet of sales tags for goods sold by JJB, including a tag for TRAVEL FOX footwear, the tag is undated and includes a price in £.
Exhibit DMF-29: A printout of JJB's eBay profile page at www.ebay.co.uk/jjb_sports_outlet. It is mentioned that JJB Sports is based in the United Kingdom and that jjb_sports_outlet has been an eBay member since 08/08/2011. There is a product listing from JJB's eBay profile (last updated on 16/01/2012), that shows an example of goods sold by JJB through eBay, e.g. a ‘Travel Fox Lightweight Mesh Mens Jacket’, a ‘Travel Fox’ Classic Mens Boys Retro Trendy Sports Pumps.
Exhibit DMF-30: Undated photos of TRAVEL FOX branded footwear and printout from the website www.sportsdirect.com, showing TRAVEL FOX footwear and clothing for sale.
Exhibits DMF-31 – DMF-34: several documents which should document the relationship between the historic licensee and the applicant. The opponent explains the relation of the applicant to the company Hongson International Inc., a historic licensee of the TRAVEL FOX brand. According to the opponent, the original owner of the TRAVEL FOX brand granted a license to manufacture TRAVEL FOX branded footwear and to sell this footwear to certain countries, e.g. China, Taiwan. This license did not authorise to use or register the mark in any of the EU Members States.

Evidence submitted on 02/01/2015

A witness statement of Mr Robert Cumming, a Senior Associate at Appleyard Lees, an IP firm, which has been assisting the opponent with the gathering of evidence from JJB Sports PLC’s administrator in connection with the trade mark TRAVEL FOC. This statement is dated 24/10/2014.
A witness statement of Mr David Michael Forsey, Director of SDI (Wigan) IP Limited, dated 19/12/2014. Mr Forsey reiterates some of the arguments from his previous statement, it explains that his company, ‘SDI’, is owned by the UK's largest sports retailer Sports Direct International Plc (‘SDIP’), a stock market listed UK company. In 2008, the rights to ‘Travel Fox’ marks in certain countries, including the EUTM registration, were transferred to JJB Sports Plc (‘JJB’), a leading UK retail business at the time. He brings several arguments to support the opponent’s claims that the brand has been extensively used. The witness statement provides explanation and is accompanied by the following attachments (Exhibits DMF 1- to DMF-47):
Exhibit DMF-1 corresponds to the above listed DMF-15 (submitted on 27/05/2014).
Exhibit DMF-2: a) A press article with the title ‘JJB Sports in administration with 2,200 job losses’ from BBC News (extracted from www.bbc.co.uk/news) dated 01/10/2012. The article discusses JJB's entry into administration and mentions that ‘JJB’s High Street rival is buying the website and 20 of its stores, which will be rebranded Sports Direct’. b) An extract from the online UK Companies House records of 18/12/2014 showing that the company JJB, incorporated in 1971, is in administration. c) A copy of the Deed of assignment dated 16/11/2012 between the company JJB Sports Plc (Assignor, in administration) and the EUTM proprietor’s company SDI (Wigan) IP Limited (Assignee) in relation to the transfer of i.a. EUTM No 437 533 to SDI.
Exhibits DMF-3, DMF-4 and DMF-5 corresponds to the above listed in exhibits DMF 16, DMF-17 and DMF-18 (submitted on 27/05/2014)
Exhibit DMF-6 corresponds to the above listed in exhibit DMF-24 (submitted on 27/05/2014)
Exhibit DMF-7 corresponds to the above listed exhibit DMF-19 (submitted on 27/05/2014)
Exhibits DMF-8, DMF-9, DMF-10 corresponds to the above listed exhibits DMF-20, DMF-21. DMF-22 (submitted on 27/05/2014)
Exhibit DMF 11 corresponds to the above listed exhibit DMF-28 (submitted on 27/05/2014)
Exhibits DMF-12-DMF-13 correspond to the above listed exhibits DMF-24 and DMF-25 (submitted on 27/05/2014)
Exhibits DMF-14-DMF 25: Set of invoice forms a) issued between October-December 2010 and December 2011-January 2012 for JJB’s Gateshead store (branch 793), b) issued between August – December 2009 and April –September 2012 for JJB’s Carmarthen store (branch 977), c) issued in December 2011 and between March and September 2012 for Leicester Humberston store (branch 234), d) issued between June and September 2012 for Chesterfield store (branch 952), issued in December 2011 for JJB's Basingstoke store (branch 202), e) issued between March and July 2012 for JJB’s Stockton store (branch 864), f) issued between February and September 2012 for JJB’s Fosse Park store (branch 792), g) issued between March and July 2012 for the JJB’s Broughton Park store (branch 469). A part of these invoice forms, were already submitted on 27/05/2014, in particular in the above listed DMF-26. The invoice forms include a reference to TRAVEL FOX brand, product code, quantity and price.
Exhibit DMF-26: Warehouse delivery forms dated 08/06/2011 and 18/06/2012 showing deliveries to the Gateshead and Chesterfield stores of, inter alia, ‘TRAVEL FOX Jackson’ shoes.
Exhibit DMF-27: Corresponds to the above listed exhibit DMF-29 (submitted on 27/05/2014).
Exhibit DMF-28: ‘Merchandising Memorandum for TRAVEL FOX December 2011’ issued to JJB stores in December 2011 and setting out in detail how the new ‘TRAVEL FOX’ men’s leisure clothing brand should be displayed in stores. It is mentioned that ‘the initial launch will see a NEW range of men’s Travel Fox apparel’ being delivered into store around the 9th December’. The brand displayed in the memorandum is and there are pictures and products information of the ‘Travel Fox’ clothing items (such as product codes and prices in GBP) as well as instructions on how to display them in stores.
Exhibit DMF-29: Refund receipts for ‘TRAVEL FOX’ goods returned by members of the public. For example, the exhibit includes a receipt for ‘TRAVEL FOX Jackson’ footwear that was returned to the Carmarthen store (977) in April 2011, a receipt for ‘TRAVEL FOX Jackson’ footwear that was returned to the Broughton Park store (469) in April 2011, a receipt for the refund of ‘TRAVEL FOX Miller’ shoes which were returned to the Broughton Park store (469) in August 2012. The return receipts include information such as the full address of the respective JJB Sports Plc. store, telephone number, assistant name, VAT number, customer and manager handwritten signatures, etc.
Exhibit DMF-30: A ‘transfer out’ form ‘Faulty Returns Stock’ showing, inter alia, faulty ‘TRAVEL FOX Miller’ trainers being returned from the Chesterfield store (952) on 17/07/2012.
Exhibit DMF-31: A receipt for the pickup of an order for ‘TRAVEL FOX Miller’ shoes from the Broughton Park store (469) by a client dated 22/04/2012.
Exhibit DMF-32: JJB Sports ‘Action Pack’ notice, Wednesday Edition 161, for action between 04/04/2012 – 05/04/2012. The notice includes information about, inter alia, reduction in price of ‘TRAVEL FOX Jackson’ shoes as of 05/04/2012.
Exhibit DMF-33: A set of forms showing that items of ‘TRAVEL FOX’ footwear and clothing, were reduced in price on various occasions at different JJB’s stores between December 2009 and September 2012.
Exhibit DMF-34 corresponds to the above listed exhibit DMF-27 (submitted on 27/05/2014).
Exhibit DMF-35: Two invoices from JJB's supplier, Focus International Ltd., for the manufacture of various models of ‘TRAVEL FOX’ footwear dated 02/04/2012. The stock purchased by JJB in these invoices total 9,570 units.
Exhibit DMF-36: Brand Sales Report for the Broughton Park store (469) for week 22 of 2012. This report lists sales of, inter alia, ‘TRAVEL FOX’ goods through this store for the first 22 weeks of 2012 as totalling £1,475.
Exhibit DMF-37: Design drawings for the packaging (swing tag and shoe box) for SDI's ‘TRAVEL FOX’ footwear, namely ‘Travel Fox Troop’, dated April 2013. The brand shown on the shoe boxes and swing tags is .
Exhibit DMF-38: Design drawings for SDI's ‘TRAVEL FOX Troop 40’ and ‘TRAVEL FOX TAL14-0201’ shoe models dated November 2013 and February 2014 respectively. The signs that can be seen on the shoes are, for example, .
Exhibit DMF-39: A printout dated 18/12/2014 from www.usc.co.uk, an online retail store, showing inter alia ‘TRAVEL FOX’ trainers for sale. Mr. Forsey states in its witness statement that while the sales through this website commenced after the relevant date for assessing genuine use in these proceedings, they demonstrate the continued intention to develop the ‘TRAVEL FOX’ brand, and to expand its use, that was underway during the relevant period.
Exhibit DMF-40: A table setting out retail sales figures of ‘TRAVEL FOX’ branded clothing and footwear for the period August 2013 to September 2014 through the retail outlets sportsdirect.com, ebay.com, JJBSports.com, amazon.co.uk and lillywhites.com. The table shows the name of the online retail store, order date (month and year), country, quantity and the value in GBP. The total sales of ‘TRAVEL FOX’ clothing and footwear for this time period (August 2013 to September 2014) are £64,594.11.
Exhibit DMF-41: A table setting out the retail sales figures of ‘TRAVEL FOX’ branded clothing and footwear broken down by country for the period August 2013 to March 2014. The total sales figure is £44,637.06.
Exhibit DMF-42: A table setting out the retail sales figures of ‘TRAVEL FOX’ branded clothing and footwear per month, throughout the EU, for the period August 2013 to September 2014. The total sales figure is £44,637.06.
Exhibit DMF-43: A table setting out the retail sales figures of ‘TRAVEL FOX’ branded clothing, broken down by country for the period August 2013 to September 2014. The total sales figure is £64,594.11.
Exhibits DMF-44 – DM-45: Several undated photos of TRAVEL FOX branded footwear and the accompanying packaging (shoebox and tissue paper inside the shoebox) and swing tag, for example: ; .
Exhibit DMF-46 corresponds to the above listed exhibit DMF-30 (submitted on 27/05/2014), hence including the same printout from the website www.sportsdirect.com, showing TRAVEL FOX footwear and clothing for sale. These printouts are from 07/03/2014.
Exhibit DMF-47: Printouts from the website www.sportsdirect.com sourced from the ‘Internet Archive Wayback Machine’ at https://web.archive.org, showing how the www.sportsdirect.com website appeared as at 31/03/2014. The URL shown on the bottom left hand corner of each printout includes the date 31/03/2014 and the domain name www.sportsdirect.com. There are, inter alia, several styles of ‘TRAVEL FOX’ footwear being sold on the www.sportsdirect.com website on 31/03/2014.

The Opposition Division notes that references in the below analysis concern the evidence submitted on 02/01/2015 unless expressly indicated otherwise.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Moreover, in the case at hand, Mr Forsey in his witness statement explains that in 2008 ownership of the contested sign was transferred to JJB Sports Plc., a leading UK retail business at the time. According to Mr Forsey the contested sign was sold to the EUTM proprietor by JJB Sports Plc. after it entered into administration on 24 September 2012. This is supported by the evidence submitted on 02/01/2015 (Exhibit DMF-2).

Though this means that the EUTM proprietor is the owner of the contested sign, as a consequence of the circumstances surrounding acquisition of the brand, much of the use claimed for the sign was undertaken not by the EUTM proprietor, but by its predecessor in title to the mark, JJB Sports Plc. Such use is valid use of the sign – 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 24 et seq. – dealing with genuine use of a trade mark by a party other than the opponent (see 05/12/2016, R 2164/2015-5, TRAVEL FOX (fig.), § 22).

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.

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.

As far as the witness statements of Mr Fernando Cesaretti and Mr David Michael Forsey are concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) 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. This is because 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. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

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.

Taking the statement of Mr Fernando Cesaretti first, the Opposition Division notes that it is not supported by any type of evidence in order to prove its contents. Taking into account the information provided therein, namely the history and ownership of the brand over the years and the commercial relations between different parties, this information is not particularly relevant to the present proceedings. The only relevant information is the statement of Mr. Cesaretti that he is aware that JJB used the trade marks on shoes and clothing until the time when JJB was liquidated and transferred the brand to the opponent (SDI (Wigan) IP Limited). However, Mr. Cesaretti did not support this information with any further evidence. Therefore, this evidence is not relevant and/or has no probative value.

The statement of Mr Robert Cumming concerns mainly the process of gathering of the relevant evidence and the difficulties they encountered as a consequence of the circumstances surrounding acquisition of the brand from JJB Sports Plc. after it entered into administration on 24 September 2012.

Place of use

The evidence must show that the earlier mark has been genuinely used in the European Union. The documents, such as the invoice forms, the list of stores, the address details in the sales and refund receipts as well as the domain name extensions, show that the place of use is mainly the United Kingdom (as regards the use by ‘JJB’ until the end of 2012). This can be inferred from the language of the documents (‘English’), the currency mentioned (‘GBP’) and some addresses (for example, in England and Wales). In addition, as regards use by the current EUTM proprietor, the sales figures and extracts from websites show that, apart from the United Kingdom, there are some sales via internet in several member states of the EU. Therefore, the evidence relates to the relevant territory.

It should be noted that a de minimis rule cannot be laid down (see judgment of 19/12/2012, C-149/11, ‘Leno Merken’, § 55). While it is reasonable to expect that a European trade mark should be used in a larger area than a national mark, it is not necessary that the mark is used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market. According to the case-law, the territorial borders of the EU Member States should be disregarded (19/12/2012, C-149/11, Onel / Omel, EU:C:2012:816).

Time of use

A substantial part of the evidence is dated within the relevant period. Although some of the relevant evidence are undated, it has to be noted that, when assessed in its entirety the evidence contains sufficient proof that goods belonging to clothing and footwear and bearing the earlier trade mark were distributed within the relevant period.

Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period, shows continuity of use or gives information that preparations to secure customers are under way.

For example, the extract from the annual reports confirms the statement of the opponent that the company JJB Sports Plc acquired the ‘TRAVEL FOX’ brand in 2008 and the press articles (Exhibits DMF-3 and 4) show the intentions and preparations of the opponent at that time, such as ‘to re-energize sales’ and ‘increase the focus on own-brand products, including the recently purchased Travel Fox label’. As regards Exhibit DMF-5, namely the extract from Yahoo Finance, it shows relevant information about the opponent company in relation to the year 2012 (that is, within the relevant time period). As regards the evidence submitted which is undated or concern a time frame after the relevant period, for example Exhibits DMF-40 to 43, DMF-44 to 45, DMF-47, the Opposition Division, considers that these materials show continuity of use.

In particular, Mr Forsey states that, following the acquisition of the ‘TRAVEL FOX’ brand in November 2012, the opponent began developing products under the brand, which resulted in the first sales of ‘TRAVEL FOX’ clothing and footwear on line (confirmed by figures included in exhibits DMF-40 to 43).

All this material, as the other material dismissed by the applicant, must be read together with the totality of the evidence submitted, for example, the invoices in DMF-14 to 25 which clearly show products, with the relevant period, being supplied to retailers for onward sale.

Nature of use

Use as a trade mark

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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.

In the present case, the EUTM was used as a trade mark. The evidence filed by the opponent shows a link between the goods in question (clothing, footwear) and the use of the mark and that the earlier mark was used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it is registered/used.

Use of the mark as 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 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 (in the version in force at the time of filing of the opposition, now 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 purpose of the above Article, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

In the present case, the earlier mark is . It is a figurative mark; however, it consists of two verbal elements, written in a standard font and without any other graphic element. Therefore, in respect of the distinctive character of marks, the principles developed in relation to word marks should be applied here (09/09/2010, C-265/09 P, ‘α’, EU:C:2010:508, § 25).

The evidence (the printouts/extracts from different websites and online stores, the design drawings, photographs, the merchandising memorandum, etc.), shows use of, inter alia, the following signs: ‘TRAVEL FOX’; ‘Travel Fox Houston Mens Mid-Top Trainers’; ‘Travel Fox Jackson Mens Canvas Trainers’, ‘Travel Fox Leo Mens Pumps’;

The distinctive element in the mark as registered is the verbal element ‘TRAVEL FOX’. The evidence submitted shows use of the distinctive words ‘Travel Fox’ written in one or in two lines in a slightly figurative typeface, alone, or together with additional figurative and verbal elements. The additional figurative elements (where present) are placed above or below the word elements. However, these figurative elements are less important than the verbal element. They are either likely to be seen as decorative elements or as use of independent marks. In addition, the wordings ‘athletics’, ‘Mens Canvas Trainers’, ‘Jackson’, ‘Miller’, ‘Houston’, ‘Mens Mid-Top Trainers’, etc. do not alter the distinctive character of the sign, as they are either descriptive or weak for the goods and/or designate a separate line/sub-brand/model of goods.

The Opposition Division considers that neither the use of slightly different typefaces nor the additions of other words and figurative elements, affect the distinctive character of the denomination ‘Travel Fox’, which is intrinsically very distinctive.

Therefore, although the use of the contested mark varies and, at times, is used in a form which is different from the registered one, this does not affect its distinctive character, as the variations and additional elements are either weak or non-distinctive or add very little to the distinctiveness of the sign, or are used as autonomous signs.

In view of the above, 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.

Extent of use

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 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).

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 filed, especially the invoice forms corroborated by the refund receipts, the ‘transfer out’ forms, the receipts for orders, the warehouse delivery forms and the purchase order forms, invoices from suppliers, as well as the information in the witness statement and the sales figures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Use of the mark need not be quantitatively significant for it to be deemed genuine. 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).

The applicant argues that some of the documents submitted concern mere internal or commercial affairs of the opponent. For example, the applicant says that the design drawings and labels, the merchandising memorandum and the discount reports are internal documents and do show genuine and/or public use. As regards the invoice forms, the applicant argues that they are mere internal documents and show only modest quantities of shoes and clothing.

The Opposition Division notes that the evidence submitted clearly demonstrates that there has been public and outward use of the mark. This can be inferred from the enclosed printouts from different online stores offering for sale the goods bearing the TRAVLE FOX brand throughout the relevant period. In addition, the evidence shows that the opponent (or its predecessors, as already discussed above) offered the relevant goods through a great number of traditional stores, especially during the period 2010 – 2012. As regards the applicant’s comments that the invoice forms, the purchase orders, the merchandising memorandum, the discount reports, etc. are internal documents, it is noted that although the opponent filed invoices, warehouse delivery forms and other similar documents, that are addressed to its various retail stores and staff, it is clear that the goods were put on the market, as the chain producer-retailer-market is a common method of business organisation, which cannot be regarded as internal use. Taking into account the large number of stores, the territorial scope of use, the frequency of use shown throughout the whole relevant period, it is deemed that actual use of the trade marks at issue took place to a sufficient extent.

In addition, it should be remembered that evidence of use may be of an indirect/circumstantial nature. Such indirect evidence can play a decisive role in the overall assessment of the evidence submitted. Its probative value has to be carefully assessed. For instance, the judgment of 08/07/2010, T-30/09, ‘Peerstorm’, EU:T:2010:298, § 42 et seq. found that even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

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 territories in relation to the relevant goods, namely clothing and footwear in Class 25.

Other arguments of the parties

The applicant argues that the designs of the ‘Travel Fox’ marks shown in exhibits DMF-37 and 38 are derived from the applicant’s trade mark registrations in Taiwan. The applicant attaches copies of these trade mark registrations. The Opposition Division considers that these arguments and evidence are irrelevant to the present proceedings. The annexes submitted by the applicant refer to Taiwan (outside the relevant territory) and to the years 1988 – 1994 (outside the relevant period). In addition, the Taiwanese trade mark registrations show as owner ‘Lu Tong Enterprise Corp.’ and the other annexes refer to the company ‘Hongson Inc.’, that is entities different from the applicant ‘Travel Fox International Incorporation’ in the present proceedings.

The applicant refers to and attaches a decision taken by the French Intellectual Property Institute INPI, namely decision 13-3887/JM of 14/01/2014 to support its arguments. However, although this decision is between the same parties and refers to proof of use of the mark EUTM No 437 533, it has no binding effect on the Office. First of all, the European Union trade mark regime is an autonomous system which applies independently of any national system, and, decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office (13/09/2010, T‑292/08, Often, EU:T:2010:399). Secondly, the previous case referred to by the applicant is not relevant to the present proceedings, as the facts and evidence submitted in the present case are different from the ones submitted by the parties before the INPI. Finally, the Opposition Division is unable to asses which criteria (legal and territorial) the national office applied to come to the conclusion that genuine use of the mark was not proved. Therefore, the applicant’s argument has to be set aside.

III. LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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

The goods

Following the partial cancellation of the earlier European Union trade mark registration No 437 533 for some of the goods as mentioned above, the goods on which the opposition is based are the following:

Class 25: Clothing, footwear.

The contested goods are the following:

Class 18: All-purpose carrying bags, attaché cases, backpacks, bands of leather, beach bags, belt bags, briefcases, business cases, cosmetic cases sold empty, garment bags for travel, gym bags, handbags, haversacks, imitation leather, key bags, leather bags, overnight cases, purses, rucksacks for mountaineers, school bags, shoe bags for travel, shopping bags made of skin, string bags for shopping, suitcases, textile shopping bags, travelling bags, travelling cases of leather, vanity cases sold empty, waist bags, wallets.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, 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.

Contested goods in Class 18

As a remark the Opposition Division notes that clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

Goods such as bags, handbags, purses, rucksacks etc. in Class 18 are related to articles of clothing, headgear and footwear in Class 25. This is because consumers are likely to consider some of the Class 18 goods as accessories that complement articles of outer clothing, headgear and even 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 clothing, headgear and footwear to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets.

Hence, the contested all-purpose carrying bags, backpacks, bands of leather, beach bags, belt bags, gym bags, handbags, haversacks, key bags, leather bags, purses, rucksacks for mountaineers, shopping bags made of skin, string bags for shopping, textile shopping bags, waist bags, wallets are considered similar to the opponent’s clothing and footwear in Class 25.

The contested imitation leather in Class 18 is raw material. The fact that one product is used for manufacturing another (for example footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw material in Class 18 is intended for use in industry rather than for direct purchase by the final consumer. It is sold in different outlets, is of a different nature and serves a different purpose from the opponent’s clothing and footwear. Therefore, these goods are dissimilar.

The contested suitcases, travelling cases of leather, cosmetic cases sold empty, vanity cases sold empty, are used for carrying things when travelling or eventually for holding or storing of different items. The nature of these goods is very different from that of the opponent’s clothing and footwear in Class 25. They serve different purposes. They do not usually have the same retail outlets and are not usually made by the same manufacturers. Even though some fashion designers nowadays sell also travel accessories under their marks, this is not the rule but rather it tends to apply only to (commercially) successful designers. Therefore, these goods are considered dissimilar.

A similar reasoning applies in relation to the contested travelling bags, garment bags for travel, shoe bags for travel, overnight cases, attaché cases, briefcases, business cases as well as to school bags. These goods are considered dissimilar to the opponent’s clothing and footwear. For example, travelling bags are used for carrying things when travelling whereas school bags are used for carrying school books and accessories and do not satisfy the same needs as clothing and 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 clothing, namely, belts, camisoles, coats, dresses, gloves, hosiery, jackets, layettes, neckties, overcoats, pajamas, pants, pantyhose, pullovers, scarves, shirts, shoulder wraps, singlets, skirts, socks, sports jerseys, stockings, stuff jackets, suits, T-shirts, topcoats, trousers, vests are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear, namely, boots and shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements and target the same public. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear. Taking all these factors into account, headgear and clothing are considered similar.

Considering the foregoing, the contested headgear, namely, caps and hats are similar to the opponent’s clothing.

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 average.

The signs

Earlier trade mark

Contested sign

The relevant territory is 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 common verbal elements ‘TRAVEL’ and ‘FOX’ are both English words. The word ‘fox’ has a few meanings, e.g. it refers to an animal as well as to a person, who is clever and good at deceiving people (see http://dictionary.cambridge.org/dictionary/english/fox) and as such (either one or another way) will be understood by the English speaking part of the relevant public. However, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The remaining part of the relevant (non-English speaking) public will not understand any of the two words.

The word ‘travel’ will be associated with the activity of travelling, with the action of moving or going from one place to another (http://dictionary.cambridge.org/dictionary/english/travel). Bearing in mind that the relevant goods are broadly speaking clothing, footwear, headgear, bags and purses, which might be designed especially for travelling, this element is weak in relation to all these goods.

As regards the contested sign, its figurative element is of a rather decorative nature and as such less distinctive as its verbal elements.

Neither of the signs has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal elements ‘TRAVEL FOX’. In fact the earlier mark is fully included in the contested sign, where it plays an independent distinctive role. The two signs differ only in their stylisation and in the less distinctive figurative element of the contested sign.

In addition, it has to be kept in mind that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides fully in their sounds, since both consist of the same verbal elements.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same meaning by the English-speaking part of the relevant public, they are conceptually identical.

Neither of the signs has a meaning for the non-English-speaking 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 when this part of the public is concerned.

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

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.

According to the opponent the earlier trade mark enjoys a high degree of recognition among the relevant public in the European Union in connection with the goods on which the opposition is based. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18)

The opponent submitted evidence to support this claim, which is listed above, in the part II. of this decision (evidence submitted on 27/05/2014).

Having examined the relevant documents, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate either that the earlier trade mark acquired a high degree of distinctiveness through its use or that it enjoys a reputation.

Despite showing use of the earlier trade mark, the evidence does not provide sufficient indication of the degree of recognition of the trade mark by the relevant public. The figures related to the sales of the opponent’s products are not particularly high and are, in any case, insufficient on their own to prove the reputation of the earlier mark, all the more so because they are not supported by further documents originating from independent sources.

The evidence does not indicate the market share of the trade mark. No information is given about competitors. The trade mark has been promoted at some point of the time (especially in 80s-90s of the last century) and it seems that at that time it did enjoy some recognition but no figures showing the degree of recognition of the mark by the relevant public have been provided. Moreover, many articles which do mention ‘TRAVEL FOX’ footwear in connection to celebrities, apart from being published in 80s, 90s, were published outside of the EU. The opponent did not provide any figures in relation to marketing and advertising, neither the evidence of promotion and recognition of the mark by the relevant public in the last 10-15 years. The submitted extract from blogs and newspapers refers to the past (80s-90s), there is no one recent article mentioning the earlier trade mark in connection to the relevant goods and its recognition amongst the relevant public in the recent years. As a result, no conclusion can be drawn with a fair degree of accuracy and the evidence does not show the degree of recognition of the trade mark or, at least, that the trade mark is known by a significant part of the relevant public.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has acquired a high degree of distinctiveness through its use eventually that it has a 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 straightforward 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, despite the presence of a weak element (‘travel’) in the mark as stated above in section III. c) of this decision.

Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Furthermore, 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 at issue are partly identical, partly similar and partly dissimilar. The degree of attention of the relevant public is average while the degree of distinctiveness of the earlier mark is average.

The similarities between the signs result from the coincidence in their two (and only) verbal elements, ‘travel fox’, while they differ only in their stylisation and the additional figurative element of the contested sign, which however less distinctive than the verbal elements.

The impact of these differences on the visual similarity is quite low. Hence the Opposition Division considers that the differences between the signs are not sufficient to enable the consumers to safely distinguish between the marks at issue and therefore they are likely to believe that the goods originate from the same undertaking or from economically related undertakings.

In view of the foregoing and considering 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), there is 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 European Union trade mark registration No 437 533.

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, namely attaché cases, briefcases, business cases, cosmetic cases sold empty, garment bags for travel, imitation leather, overnight cases, school bags, shoe bags for travel, suitcases, travelling bags, travelling cases of leather, vanity cases sold empty in Class 18 are dissimilar to the opponent’s goods clothing, footwear in Class 25. 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.

The opponent has also based its opposition on the earlier United Kingdom trade mark registration No 1 399 292, registered for boots, shoes and sandals; all included in Class 25.

Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The Opposition Division will proceed with the examination of the opposition on the grounds of Articles 8(5) and 8(4) EUTMR since the opponent bases the opposition also on those grounds.

IV. REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Reputation of the earlier trade marks

The relevant evidence submitted by the opponent, has been listed and analysed in the above parts of this decision.

As already mentioned above, the Opposition Division is of the opinion, that despite showing some use of the earlier European Union trade mark, the evidence does not provide any external and objective information indicating the degree of recognition of the trade mark by the relevant public.

Apart of the evidence relates to the territories outside of the European Union and almost all the evidence relates to the time way back in the past (80s-90s of the 20^th century). Furthermore the evidence submitted does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. The sales volumes, which the opponent submitted While the invoices submitted show sales of the footwear (mainly in the United Kingdom), these sales volumes are not particularly high. In addition, the sales volumes are not put into the context of the market and the competitors in question. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. The same reasoning applies mutatis mutandis in relation to the earlier United Kingdom trade mark registration No 1 399 292. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

V. NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent based its opposition on the earlier non-registered word mark ‘TRAVEL FOX’ used in the course of trade in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland for footwear.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘ to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely a non-registered mark in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg. .

On 03/09/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate the earlier rights and submit further material. After an agreed extension of time, this time limit expired on 27/05/2015.

On 27/05/2014, the opponent provided, as a part of his arguments, references to the national laws (including Article numbers, and the number and title of the respective laws) and referred to the content of the respective legal provisions invoked in English. It is possible that some of the sentences used by the opponent are taken from the respective national law; however it is not very clear from the submitted arguments, as the references to the applicable law in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, seem to be all just summaries of the respective legal norms. Moreover, the opponent did not submit the applicable law in the respective original languages (where applicable).

Hence, the opponent did not submit the requested information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in the above listed Member States mentioned by the opponent.

The right under the applicable law - Passing off

The opposition is also based on a non‑registered trade mark used in the United Kingdom, Ireland. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

As regards the references to the applicable law in the United Kingdom, the Opposition Division notes that the opponent made a clear reference to the relevant legal provision (including Article number, and the number and title of the law) and the content (text) of the legal provision as he wrote the following in the point 55 of his submission ‘…under the section 5(4)(a) of the Trade Marks Act 1994 which provides that “A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented a) by virtue of any rule (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade…”

In the point 56 of his submission, the opponent adds the following ‘The UK common law right of the tort of passing off confers on the proprietor of an earlier unregistered trade mark, the right to prohibit use of a subsequent trade mark application. To establish passing off in this situation it is necessary to prove (a) that the claimant (in this case being the Opponent) has goodwill or reputation in the unregistered trade mark in relation to the relevant goods, such that the unregistered trade mark is recognised by the public as being distinctive specifically of the claimant's goods; (b) that there is a misrepresentation to the public by the defendant, whether or not intentional, leading or likely to lead the public to the belief that the goods offered are those of the claimant or are otherwise connected with or linked to the claimant; and (c) that the claimant is likely to suffer damage by reason of erroneous belief engendered by the misrepresentation that the source of the defendant’s goods is the same as, or connected in the course of trade with, those offered by the claimant.’

As regards the references to the applicable law in Ireland, the opponent refers to the following ‘Ireland similarly has provision in its trade mark laws which refer to allowing traders to prohibit the use of a later registered trade mark (section 10(4)(a) of the Trade Mark Act 1996). This includes by reason of passing off, which is understood to be goodwill acquired by of the earlier sign (although not necessarily in Ireland)……The laws relating to the tort of passing off in Ireland are largely consistent with the law of passing off in the United Kingdom…’

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

The opponent claims that it is not necessary for a successful passing-off claim that the relevant trade mark be universally known and recognised, that it is rather a question of whether reputation and goodwill have been built up by the claimant such that it is reasonably foreseeable that it will suffer damage as a result of the defendant’s misrepresentation. In this regard, it refers to the national case-law in the United Kingdom (Chelsea Man [1985] FSR 567) without providing the relevant text.

The Opposition Division points out that where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In any case, the evidence submitted by the opponent in order to prove goodwill is the same as the evidence submitted in order to prove the use of the earlier mark as well as the opponent’s claim under Article 8(5) EUTMR, namely evidence filed on 27/05/2014 and 02/01/2015. This evidence is already listed, described and analysed above, in the parts II., III. and IV. of this decision. Reference is made to the previous assertions. However, some aspects related to the evidence must be pointed out also at this stage.

In the present case, the contested trade mark was filed on 26/04/2013. Therefore, the evidence should prove that the sign on which the opposition is based enjoys goodwill for footwear in the United Kingdom and Ireland prior to that date.

The evidence shows that the place of use is mainly the United Kingdom. This can be inferred from the language of the documents (English), the currency mentioned (pounds) in some documents and addresses (in the United Kingdom).

However, despite showing some use of the word mark ‘TRADE FOX’ or its slight variations in relation to footwear and clothing, the evidence does not provide any clear indication of the degree of recognition of the trade mark by the relevant public in the reasonably close period to the filing date. The evidence in support of the goodwill relates to the past (80s-90s of the last century) and fails to show more recent recognition of the relevant mark. The sales volumes, which the opponent submitted are not particularly high. Moreover, they are not put into the context of the market and the competitors in question. The submitted extract from blogs and newspapers refers clearly to 80s-90s of the last century. As a result, no conclusion can be drawn with a fair degree of accuracy and the evidence does not show the degree of recognition of the trade mark or, at least, that the trade mark is known by a part of the relevant public or as the opponent claims that the reputation and goodwill have been built up in the last 15 years before the contested mark was filed. .

Therefore, the Opposition Division concludes, that the opponent did not provide sufficient objective and clear evidence that the word mark ‘TRADE FOX’ enjoys goodwill either in the United Kingdom, Ireland or elsewhere else in the EU in relation to the footwear.

Under these circumstances, the Opposition Division finds that the opponent has failed to demonstrate that it enjoys goodwill for footwear in the mind of the purchasing public for the sign on which the opposition is based.

Since all three conditions to sustain a passing-off claim must be met for it to be successful, the opposition is dismissed. Therefore, there is no need to consider the other conditions.

In any case, the Opposition Division points out that the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built.

The goods in question have already been compared above under the grounds of Article 8(1)(b) EUTMR. According to those findings, the contested attaché cases, briefcases, business cases, cosmetic cases sold empty, garment bags for travel, imitation leather, overnight cases, school bags, shoe bags for travel, suitcases, travelling bags, travelling cases of leather, vanity cases sold empty, are dissimilar to the opponent’s footwear.

Considering all the foregoing, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

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

Konstantinos MITROU

Renata COTTRELL

Sigrid DICKMANNS

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 72 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid

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