OPPOSITION No B 2 645 748

Spartan Race, Inc., 234 Congress Street, 5th Floor, MA 02110 Boston, United States (opponent), represented by Lisbet Andersen, c/o Aumento Law Firm, Ny Østergade 3, 1101 København K, Denmark (professional representative)

a g a i n s t

Brian Davidsen, Seidelinsvej 11.1b, 4300 Holbæk, Denmark (applicant).

On 19/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 645 748 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; jackets [clothing]; shorts; trousers; weatherproof clothing; babies' pants [clothing]; money belts [clothing]; muffs [clothing]; ready-made clothing; woven clothing; headbands [clothing]; jogging sets [clothing]; tops [clothing]; visors [headwear]; footwear; millinery; gloves [clothing]; rainproof clothing; ear muffs [clothing]; boys' clothing; bodies [clothing]; sweatpants; fabric belts [clothing]; mittens; bandeaux [clothing]; knee warmers [clothing]; tee-shirts; short-sleeved t-shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts.

Class 28: Fairground and playground apparatus; games, playthings.

Class 41: Arranging of presentations for entertainment purposes; arranging of presentations for cultural purposes; arranging of contests; organisation of recreational tournaments; audio and video production, and photography; sporting activities; education, entertainment and sports; sporting and cultural activities; ticket procurement services for sporting events; organising of sporting activities and of sporting competitions; organisation of sporting events; ticket information services for sporting events; entertainment, sporting and cultural activities; provision and management of sporting events; rental of equipment for use at sporting events; organising of sporting events, competitions and sporting tournaments; rental of equipment for use at athletic events; organizing community sporting and cultural events; advisory services relating to the organisation of sporting events; organisation of sports events in the field of football; training services relating to fitness.

2. European Union trade mark application No 14 895 007 is rejected for all the above goods and services. 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should 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 and services of European Union trade mark application No 14 895 007, ‘Spartan SGX’. The opposition is based on the following earlier marks and grounds:

• European Union trade mark registration No 10 890 002, ‘SPARTAN RACE’ in regard to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• European Union trade mark registration No 13 455 837, ‘SPARTAN UP’, in regard to which the opponent invoked Article 8(1)(b) EUTMR.

• European Union trade mark registration No 13 780 028, , in regard to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• European Union trade mark application No 14 820 211, ‘SPARTAN X’, in regard to which the opponent invoked Article 8(1)(b) EUTMR.

• European Union trade mark application No 14 867 758, ‘SPARTAN RACE’ in regard to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• European Union trade mark application No 14 873 756, , in regard to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• Benelux trade mark registration No 985 903, ‘SPARTAN X’, in regard to which the opponent invoked Article 8(1)(b) EUTMR.

• Benelux trade mark registration No 988 003, , in regard to which the opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

• Benelux trade mark registration No 988 355, ‘SPARTAN’, in regard to which the opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

• Benelux trade mark registration No 988 356, ‘SPARTAN RACE’, in regard to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• United Kingdom trade mark registration No 2 580 032, ‘SPARTAN RACE’, in regard to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• Non-registered trade mark in Italy, Germany, Czech Republic, United Kingdom, Poland, Hungary, Spain, France, Slovakia and Austria, ‘SPARTAN’, in regard to which the opponent invoked Article 8(4) EUTMR.

• Non-registered trade mark in Italy, Germany, Czech Republic, United Kingdom, Poland, Hungary, Spain, France, Slovakia and Austria, ‘SPARTAN RACE’, in regard to which the opponent invoked Article 8(4) EUTMR.

• Trade name in Italy, Germany, Czech Republic, United Kingdom, Poland, Hungary, Spain, France, Slovakia and Austria, ‘SPARTAN’, in regard to which the opponent invoked Article 8(4) EUTMR.

• Trade name in Italy, Germany, Czech Republic, United Kingdom, Poland, Hungary, Spain, France, Slovakia and Austria, ‘SPARTAN RACE’, in regard to which the opponent invoked Article 8(4) EUTMR.

SUBSTANTIATION – EARLIER BENELUX TRADE MARK REGISTRATIONS Nos 985 903, 988 003, 988 355, 988 356 and UNITED KINGDOM TRADE MARK REGISTRATION No 2 580 032

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now 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 is 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(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier Benelux and United Kingdom trade marks on which the opposition is based.

On 30/03/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit initially expired on 04/08/2016 but, after the suspension requested by both parties, it was further extended until 03/10/2017 and subsequently, until 03/12/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier Benelux and United Kingdom trade mark registrations. In its submissions of 04/12/2017, the opponent referred to the provisions of Article 7(3) EUTMDR and formally requested the Office to access the necessary information on these earlier trade marks in the relevant online official sources. However, Article 82, paragraph 2 EUTMDR provides that Article 7 EUTMDR shall not apply to opposition proceedings, the adversarial part of which has started before 01/10/2017. In the present case, the Office informed the parties on 30/03/2016 that the cooling-off period would expire on 04/06/2016 and that the adversarial part of the proceedings would start on the following day, namely on 05/06/2016. On 16/06/2016, the Office rejected a request for the extension of the cooling-off of 06/06/2016 due to some deficiencies and confirmed that the adversarial part of the proceedings had begun on 05/06/2016. The parties proceeded to request a joint suspension of the proceedings due to ongoing negotiations. On 22/08/2016, the Office informed the parties of the suspension of the proceedings as from 03/08/2016 and set a new timetable for the parties to submit further facts, evidence or arguments. However, the granting of a new time limit for the opponent to submit further facts evidence or arguments in support of the opposition does not change anything to the fact that the adversarial part of the proceedings had started on 05/06/2016 as already indicated to the parties on 16/06/2016. Therefore, the new rules governing the provision of evidence concerning the filing or registration of the earlier rights which is accessible online by making reference to that source are not applicable in the present proceedings.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the Benelux and United Kingdom earlier marks. The analysis of the opposition will go on with regard the remaining earlier marks.

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 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 opponent’s European Union trade mark registration No 13 455 837, ‘SPARTAN UP’.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear; coats; hats; jackets; pants; trousers; shirts; shorts; socks; sweat shirts; tops.

Class 28: Exercise equipment; sporting articles.

Class 41: Educational and entertainment services; educational and entertainment services, namely, providing motivational and educational speakers; entertainment services, namely, providing podcasts in the field of exercise, personal training, health and self-improvement; entertainment services, namely, providing video podcasts in the field of exercise, personal training, health and self-improvement.

The contested goods and services are the following:

Class 25: Clothing; jackets [clothing]; shorts; trousers; weatherproof clothing; babies' pants [clothing]; money belts [clothing]; muffs [clothing]; ready-made clothing; woven clothing; headbands [clothing]; jogging sets [clothing]; tops [clothing]; visors [headwear]; footwear; millinery; gloves [clothing]; rainproof clothing; ear muffs [clothing]; boys' clothing; bodies [clothing]; sweatpants; fabric belts [clothing]; mittens; bandeaux [clothing]; knee warmers [clothing]; tee-shirts; short-sleeved t-shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts.

Class 28: Fairground and playground apparatus; festive decorations and artificial Christmas trees; toys, games, playthings and novelties.

Class 41: Arranging of presentations for entertainment purposes; arranging of presentations for cultural purposes; arranging of contests; organisation of recreational tournaments; audio and video production, and photography; sporting activities; education, entertainment and sports; sporting and cultural activities; ticket procurement services for sporting events; organising of sporting activities and of sporting competitions; organisation of sporting events; ticket information services for sporting events; entertainment, sporting and cultural activities; provision and management of sporting events; rental of equipment for use at sporting events; organising of sporting events, competitions and sporting tournaments; rental of equipment for use at athletic events; organizing community sporting and cultural events; advisory services relating to the organisation of sporting events; organisation of sports events in the field of football; training services relating to fitness.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services 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 25

Clothing; jackets [clothing]; trousers; footwear are identically protected by both marks.

The contested shorts; weatherproof clothing; babies' pants [clothing]; money belts [clothing]; muffs [clothing]; ready-made clothing; woven clothing; headbands [clothing]; jogging sets [clothing]; tops [clothing]; gloves [clothing]; rainproof clothing; ear muffs [clothing]; boys' clothing; bodies [clothing]; sweatpants; fabric belts [clothing]; mittens; bandeaux [clothing]; knee warmers [clothing]; tee-shirts; short-sleeved t-shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts are included in the opponent’s clothing. They are identical.

Visors [headwear]; millinery are included in the headgear covered by the earlier mark and are also identical.

Contested goods in Class 28

The contested fairground and playground apparatus can be enjoyed when providing the opponent’s entertainment services in Class 41, which include a variety of services, such as funfairs, amusement parks or the provision of recreation facilities. Therefore, these goods and services are complementary in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Indeed, in this case, the public may expect the contested goods, which often are rather complex constructions such as roller coasters, to be produced by, or at least produced under the control of the providers of funfairs, amusement parks and recreation facilities. For example, if the contested goods are manufactured by a subcontractor according to the requirements of the opponent, they are often branded with the mark of the service provider which, in the eye of the end user, is a factor that suggests that the goods are complementary. Moreover, they have the same general purpose to entertain and can coincide in public and distribution channels. Therefore, the contested goods have to be considered similar to the services of the opponent’s earlier trade mark in Class 41.

The contested games and playthings have some connections with the opponent’s entertainment services. It is not uncommon for the manufacturers of games, e.g. electronic games, to also provide the rental, downloading and ancillary advice in relation to these goods. Moreover, in order to provide the abovementioned services it is indispensable to use the opponent’s games. Therefore, the relevant public would perceive these goods and services as having a common commercial origin. Although by their nature goods are generally different from services, these goods and services have the same purpose of amusement, and they target the same consumers. They can have the same origins and distribution channels, since it is not unlikely that producers will manufacture and sell a wide range of amusement products and provide entertainment services. Therefore, the opponent’s services and the contested goods are similar to a low degree (Decision of the Boards of Appeal of 08/02/2016 – R 2302/2011-2 – OutDoor (fig.) / OUTDOOR PRO et al., § 58).

On the contrary, the remaining festive decorations and artificial Christmas trees; toys and novelties are dissimilar to the opponent’s goods and services. Festive decorations and artificial Christmas trees are very specific goods whose defining characteristic is their purpose, which is to decorate. Toys are objects, often a small representation of something familiar, as an animal or person, for children or others to play with, and novelties are small usually cheap new toys, ornaments, or trinkets. These goods have no point in common with the opponent´s goods and services. They have different purposes, distribution channels, sales outlets or providers, and method of use. They are neither in competition nor complementary to each other. In addition, and as far as the opponent´s services are concerned, they have a different nature, since services are intangible whereas goods are tangible, and they also serve different needs. Therefore, they are dissimilar.

Contested services in Class 41

Entertainment; education services are identically protected by both marks (including synonyms).

The contested arranging of presentations for entertainment purposes; entertainment activities are included in the opponent’s entertainment services, whereas the contested training services relating to fitness are included in the opponent’s broader category of educational services. They are identical.

The contested services arranging of presentations for cultural purposes; arranging of contests; organisation of recreational tournaments; audio and video production, and photography; sporting activities; sports; sporting and cultural activities; ticket procurement services for sporting events; organising of sporting activities and of sporting competitions; organisation of sporting events; ticket information services for sporting events; sporting and cultural activities; provision and management of sporting events; rental of equipment for use at sporting events; organising of sporting events, competitions and sporting tournaments; rental of equipment for use at athletic events; organizing community sporting and cultural events; advisory services relating to the organisation of sporting events; organisation of sports events in the field of football are all cultural and sport related activities. They are similar to the opponent’s entertainment services. They coincide in their purpose and target the same relevant public. They are also distributed through the same channels.

2. 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 and services are directed at the public at large and some also at professionals (e.g. rental of equipment for use at sporting events).

The public’s degree of attentiveness will vary from average to high, depending on the price, sophistication, and terms and conditions of the goods and services purchased.

3. The signs

SPARTAN UP	Spartan SGX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘SPARTAN’ means, inter alia, ‘simple and severe with no comfort’, in English. It may be understood also in other parts of the relevant territory due to the close linguistic equivalences (e.g. ‘espartano’ in Spanish and Portuguese or ‘spartano’ in Italian) but it is not meaningful in other parts of the relevant territory. This word is not directly related to any of the goods and services and therefore, it is distinctive to an average degree. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘UP’ of the earlier mark is an adverb meaning ‘towards a higher position; towards a higher value, number, or level’ or ‘out of the ground’. This element is distinctive to an average degree for the relevant goods and services. The expression ‘SPARTAN UP’ as a whole does not have a particular meaning that differs from the sum of its parts.

The element ‘SGX’ of the contested mark will also be meaningless for the majority of the relevant public (only a minority might associate this term with the Singapore Exchange). In any event, this element is also distinctive to a normal degree in relation to the relevant goods and services.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their first element ‘SPARTAN’ and differ only in the additional words ‘UP’ of the earlier mark and ‘SGX’ of the contested sign. Since both signs are word marks, it is irrelevant whether they are represented in upper or lower case, or in a combination thereof.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘SPARTAN’ present identically at the beginning of both signs. The pronunciation only differs in the sound of the letters ‘UP’ of the earlier mark and ‘SGX’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived with the same meaning as regards ‘SPARTAN’ and this is not altered by the additional elements of the marks, they are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that the earlier mark under analysis is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services have been found partially identical, partially similar to varying degrees and partially dissimilar. The signs are visually, aurally and conceptually similar to a high degree, on account of the coinciding element ‘SPARTAN’ which is normally distinctive and is placed at the beginning of the marks, where consumers pay more attention.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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

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

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, albeit some only to low degree, to those of the earlier trade mark.

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

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 10 890 002, ‘SPARTAN RACE’, for goods and services in Classes 25 and 41.

• European Union trade mark registration No 13 780 028, , for goods and services in Classes 25 and 28.

• European Union trade mark application No 14 820 211, ‘SPARTAN X’, for services in Class 41.

• European Union trade mark application No 14 867 758, ‘SPARTAN RACE’, for services in Class 41.

• European Union trade mark application No 14 873 756, , for services in Class 41.

Most of these earlier marks cover the same goods and services in Classes 25 and 41 or a narrower scope of goods and services. As seen above, none of these goods and services are similar to the festive decorations and artificial Christmas trees; toys and novelties. The opponent’s goods in Class 25 and the services in Class 41 do not have any relevant points of contact with the contested goods. They differ in nature and purpose and they are neither complementary nor in competition. Finally, they are not offered by the same producesr/providers and are not sold to the public through the same channels.

With regard to European Union trade mark registration No 13 780 028, that covers goods in Class 28, these goods are workout gloves; weightlifting gloves; grappling gloves; kick pads; arm guards; wrist guards; forearm guards; head guards; calf guards; shin and instep guards; spears and spear tips [sporting articles]; exercise equipment, namely plyometric boxes, muscle rollers, chin-up bars, weighted bags, jump ropes, weighted jump ropes, exercise ropes. They are all different sporting articles which have a different purpose than the contested festive decorations and artificial Christmas trees; toys, novelties. They have different commercial origins and target consumers with different needs. These goods are not complementary nor in competition. Therefore, they are also dissimilar.

In view of the foregoing, the outcome cannot be different with respect to the remaining contested goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

The opposition will go on with regard to the earlier trade mark registrations for which reputation has been claimed.

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. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The opponent claims that some of its earlier marks have reputation in the European Union, namely European Union trade marks No 10 890 002, No 13 780 028, No 14 867 758 and No 14 873 756. For reasons of procedural economy, the Opposition Division will first analyse the requirement consisting of a risk of injury.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation of some of the earlier trade marks (listed above), the opponent did not submit any facts, arguments or evidence that could support the conclusion that 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. Indeed, in its submissions of 04/12/2017, the opponent only refers to Article 8(1)(b) and Article 8(4) and does not develop any reasoning in relation to its claim under Article 8(5) EUTMR.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

The opposition will be further analysed on the basis of the remaining earlier rights claimed under Article 8(4) EUTMR.

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

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.

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, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

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 signs invoked by the opponent under the claimed national laws, namely the non-registered trade marks and trade names ‘SPARTAN’ and ‘SPARTAN RACE’ in Italy, Germany, Czech Republic, United Kingdom, Poland, Hungary, Spain, France, Slovakia and Austria.

The opponent did not submit any 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 of each of the Member States claimed.

The opponent referred to links to the national laws in WIPO website (‘WIPO lex’). This is not an acceptable means of evidence in this case because, as explained above, the adversarial part of the opposition proceedings had started before 01/10/2017. Therefore, the opponent should have filed hard copies of the relevant provisions of the national laws in the original language accompanied by the translation into English.

In any event, the links indicated in the opponent’s submissions refer to the English versions of the national trade mark laws published on the WIPO website. Even under the new rules, this would not be sufficient for the sake of providing the applicable law governing the claimed signs under Article 8(4) EUTM.

Regarding some of the national laws, the opponent merely refers to the law but does not identify the relevant provisions under which the protection of the claimed rights is established. This is the case of Hungarian and French laws, where only the national law is mentioned without any reference to the specific relevant legal provisions. For the remaining national laws, the opponent refers to some provisions in each law and mentions the title of the law, and in some cases, the submissions include a partial transcription of its content. However, all this information, as well as the links to the national laws published in ‘WIPO lex’ are provided only in English.

However, the opponent should have submitted the content of the specific provisions of the national law not only in English, but also in the original language, as explained above. A mere translation of the applicable law does not in itself constitute proof and cannot substitute the original; therefore, translation alone is not considered sufficient to prove the law invoked. The information included in the opponent’s submissions is not sufficient for the Opposition Division to verify the content of the provisions applicable to the non-registered trade marks and trade names invoked and the conditions required for the opponent to be able to prohibit the use of the contested trade mark under the relevant national laws.

Finally, with regard to the United Kingdom law, although there is a partial reference to the content of the national law, the opponent has not provided relevant information on national case-law or jurisprudence interpreting the law invoked so that the Opposition Division may assess the eventual fulfilment of the conditions of acquisition and the scope of protection of the rights invoked and that they would succeed under the national law in preventing the use of a subsequent mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 188-190).

In view of the above, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Martina GALLE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.