OPPOSITION No B 2 744 749

Leisurewear International Limited, 2nd Floor Parkgates Bury New Road, M25 0TL Prestwich, United Kingdom (opponent), represented by Harrison IP Limited, 3 Ebor House, Millfield Lane, YO26 6QY Nether Poppleton, United Kingdom (professional representative)

a g a i n s t

Valencia Club de Futbol S.A.D., Plaza Valencia CF 2., 46010 Valencia, Spain (applicant), represented by Garrigues IP S.L.P, C/ San Fernando 57, 03001 Alicante, Spain (professional representative).

On 09/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 744 749 is upheld for all the contested goods, namely

Class 25: Replica of an Official competition T-shirt of a premier league football team for adults.

2. European Union trade mark application No 15 480 809 is rejected for all the contested goods. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods and services of European Union trade mark application No 15 480 809 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European trade mark registration No 5 052 469 for the word mark ‘RESPECT’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

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

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, that is, European trade mark registration No 5 052 469 for the word mark ‘RESPECT’.

The date of filing of the contested application is 26/05/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/05/2011 to 25/05/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

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

Class 25: Articles of clothing including belts, gloves, scarves, lingerie, underwear, sportswear, hosiery; footwear; headgear.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 07/06/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 12/08/2017 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 12/10/2017. On 12/10/2017, within the time limit, the opponent submitted evidence of use. The opponent also requested that the evidence submitted earlier, on 27/03/2017, be taken into account.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 Three affidavits or witness statements of Yamin Ibgui, Director of Leisurewear International Limited, dated 8/03/2016, 24/03/2017 and 11/10/2017. The witness statements contain information relating to the use of the trade mark for the goods at issue (clothing and headwear) in the United Kingdom and other EU countries, the value of sales in EU for goods under the trade mark ‘RESPECT’, as well as details of correspondence with legal counsel of the applicant and related parties prior to the filing of the opposition. The applicant has objected to the inclusion of this correspondence in the current proceedings on the grounds that it is privileged.

 Various internal undated documents containing CAD (Computer Aided Design) images of bags, clothing and headwear under the trade mark ‘RESPECT’.

 An internal report of sales under the trade mark ‘RESPECT’ for 2012. This report shows customers’ names, range and quantity of products sold, and price. However customers’ remaining details (such as addresses) have been obliterated and the countries’ names have been handwritten on the report.

 Invoices to customers in the United Kingdom and other EU countries, covering the years 2012, 2013, 2014 and 2015. The opponent claims that the invoices correspond to certain products shown in the internal undated CAD images, however, the references do not correspond (for example, the goods shown with reference 9980MENSXX expressly mentioned by the opponent as corresponding to the CAD images do not appear in said images – the closest goods the Opposition Division could find were goods under reference 9970 – a different reference). Therefore, absent any reliable way of linking the CAD images to the invoices, the Opposition Division can only take into account the invoices explicitly mentioning the trade mark ‘RESPECT’, of which there are 8 invoices showing sales of different items of clothing.

 An internal list dated 26.01.2016 showing amounts of sales for the period from 1.01.2008 to 31.12.2013 to 19 EU countries.

 A partial screenshot of an Internet search dated 26.05.2017, showing some results but not showing the terms searched for or the filtering criteria.

 Partial screenshots of ‘RESPECT’ clothing on Amazon.co.uk dated 26/05/2017, not mentioning the sellers of said goods.

 A partial screenshot of a ‘Respect England Kids Home Football Soccer Shirt’ for sale on www.tesco.com, dated 26.05.2017.

 The results of an Internet search carried out on Google on 12.10.2017 for the words ‘respect “leisurewear international”’ between 1.01.2011 and 1.01.2016. The results shown mention ‘Respect’ as a brand owned by the Opponent.

The 8 invoices show that the place of use is Belgium, the Czech Republic, France, the Netherlands and the United Kingdom. This can be inferred from the language of the documents (English for the United Kingdom), the currency mentioned (pounds sterling and Euro) and some addresses in Belgium, the Czech Republic, France, the Netherlands and the United Kingdom. Therefore, the evidence relates to the relevant territory.

Although a lot of the evidence is undated or dated outside of the relevant period, there is sufficient evidence dated within the relevant period, in particular the 8 invoices showing the trade mark.

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

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that the 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, namely the 8 invoices showing the trade mark, the affidavits and the internal list of sales provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use in relation to clothing items.

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

Although the evidence indicates a low frequency of use, it shows use of the EUTM for clothing in several Member States, namely, Belgium, the Czech Republic, France, the Netherlands and the United Kingdom, at various points during the years 2012, 2013 and 2015.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark. No evidence of use has been provided for the remaining goods of the opponent, namely footwear and headgear.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

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

Class 25: Articles of clothing including belts, gloves, scarves, lingerie, underwear, sportswear, hosiery.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107). The evidence shows genuine use for enough specific items of clothing within the general category, namely jackets, shirts, t-shirts and tracksuits, for genuine use to be considered proven for the entire category.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

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

a) The goods

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

Class 25: Articles of clothing including belts, gloves, scarves, lingerie, underwear, sportswear, hosiery.

The contested goods, following a limitation filed by the applicant, are the following:

Class 25: Replica of an Official competition T-shirt of a premier league football team for adults.

As mentioned, the term ‘including’ introduces a non-exhaustive list of examples.

Contrary to the applicant´s argument that the contested goods are dissimilar to the opponent´s goods due to the fact that they are not manufactured nor sold in the same stores, they are neither in competition nor complementary (since replicas of official T-Shirts are only sold thoroughly selected channels and official stores) and they do not share neither the purpose nor the end user, the Opposition Division must conclude that the contested replica of an Official competition T-shirt of a premier league football team for adults are items of clothing and, as such, they are included in the broad category of the opponent’s articles of clothing including belts, gloves, scarves, lingerie, underwear, sportswear, hosiery. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The Opposition Division does not share the applicant´s view that the contested goods are directed at specialized circles since they are meant to be worn by the Valencia CF’s football players and its supporters and fans.

The degree of attention is considered to be average.

c) The signs

RESPECT
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 common element ‘RESPECT’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark consisting of the element ‘RESPECT’. The contested sign is a figurative mark consisting of the verbal elements ‘GLOVAL’ and ‘RESPECT’ one on top of the other, underlined and with the letter ‘O’ substituted by an emblem consisting of a bat, a blue horizontal line with the words ‘VALENCIA C.F.’ in white and a football on a red and yellow vertically striped background. The emblem will be pronounced as an ‘O’ due to its shape and the fact that it placed between letters, naturally making the public try to read it as a letter in order to pronounce the verbal element to which it belongs. The words ‘VALENCIA C.F.’ and the football are negligible elements since, due to their size and the fact that they are part of a complex sign, they are not noticeable at first sight. Therefore, as they are likely to be disregarded by the relevant public, they will not be taken into consideration.

The element ‘RESPECT’ of the earlier mark and of the contested sign will be understood as ‘a feeling of deep admiration for someone or something elicited by their abilities, qualities, or achievements; due regard for the feelings, wishes, or rights of others; a particular aspect, point, or detail’ (Oxford English Dictionary) by the relevant public. As none of these meanings have any connection with the relevant goods, this element is, therefore, distinctive. The Opposition Division does not share the applicant´s view that the term ‘RESPECT’ has become descriptive for clothing as a result of the UEFA´s ‘RESPECT’ campaign.

The element ‘GLOVAL’ of the contested sign has no meaning for the relevant public, and is therefore distinctive.

The figurative element of the contested sign will be recognised as a shield or emblem by the relevant public and as it has no meaning in connection to the goods, it is therefore distinctive.

The remaining figurative element, namely the black horizontal line underlining the verbal element ‘RESPECT’, is merely decorative and therefore of less distinctiveness.

Neither the earlier mark nor the contested sign have any element that could be considered clearly more dominant than other elements. The Opposition Division does not agree with the applicant´s claim that the figurative element of the contested sign is the dominant element, as it is not larger nor more visually eye-catching than the remaining elements.

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).

Visually, the signs coincide in the element ‘RESPECT’, which is distinctive and moreover the only element of the earlier mark. They differ in the verbal element ‘GLOVAL’ and the figurative elements of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘R-E-S-P-E-C-T’, present identically in both signs and which make up the distinctive verbal element that is moreover the only element of the earlier mark. The pronunciation differs in the sound of the letters ‘G-L-O-V-A-L’ of the contested mark, which have no counterparts in the earlier sign, and in the different rhythm and intonation due to the additional word in the contested sign.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the meaning of the word ‘RESPECT’, yet the contested sign will also be associated with the meaning of a shield or emblem, the signs are conceptually similar to an average degree.

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

d) 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

In its observations, the applicant argues that the earlier trade mark has a low distinctive character also because many trade marks include the verbal element ‘RESPECT’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘RESPECT’ Under these circumstances, the applicant’s claims must be set aside.

e) 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 case at hand, the goods are identical and the signs have been found to be visually, aurally and conceptually similar to an average degree. The degree of attention of the relevant public is average and the earlier mark has a normal level of distinctiveness.

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).

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.

Indeed, 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).

The applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim.

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

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

The applicant also refers to previous decisions of the General Court, namely cases T-54/12 and T366/07) to support its arguments. However, these are not relevant to the present proceedings, since they both concern signs where the coinciding element was found to be devoid of inherent distinctiveness, which is clearly not the case here for the coinciding element ‘RESPECT’.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 052 469 for the word mark ‘RESPECT’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Catherine MEDINA

Helen Louise MOSBACK

Begoña URIARTE VALIENTE

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.