DECISION

of the Fifth Board of Appeal

of 22 July 2019

In case R 1784/2018-5

Valencia Club de Fútbol, S.A.D.
Plaza Valencia CF, 2. 46010 Valencia Spain	Applicant / Appellant

represented by Garrigues IP, S.L.P, C/ San Fernando 57, 03001 Alicante, Spain

v

Leisurewear International Limited
2nd Floor Parkgates Bury New Road Prestwich, Manchester M25 0TL United Kingdom	Opponent / Defendant

represented by Harrison IP Limited, 3 Ebor House, Millfield Lane, YO26 6QY Nether Poppleton, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 744 749 (European Union trade mark application No 15 480 809)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), V. Melgar (Member) and C. Govers (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 26 May 2016, Valencia Club de Fútbol, S.A.D. (‘the applicant’) sought to register the figurative mark

for the following list of goods and services, as restricted in the course of the opposition proceedings:

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

Class 41 - Services of a sports club, sporting, recreational, educational and entertainment activities, organisation of exhibitions for cultural and recreational purposes, education; Providing of training; Entertainment; Sporting and cultural activities; Production of sporting events; Provision of entertainment, training, recreational, sporting and cultural activities and facilities; Instructional and educational services; Football coaching, football schools and schooling; Arranging and conducting of education and training in relation to football; Arranging, conducting and provision of football instructional courses; Sporting management services for footballers; Football entertainment services; Physical education; Fitness training services; Provision of practical training and demonstrations; Sport and holiday camp services (in the nature of entertainment); Rental of sporting equipment; Practical training and demonstrations; Arranging, organising and conducting of conferences, workshops, seminars, conventions, events and exhibitions; Arranging, organising and conducting of games, contests and competitions; Lotteries; Gambling; Arranging, organising and conducting of award ceremonies; Provision of museum facilities; Provision of stadium facilities and services; Rental of stadium facilities; Sports club services; Health clubs; Provision of information relating to football; Fan club services; Fan club membership scheme services; Booking and ticketing services for sports, entertainment, cultural and educational events; entertainment, training, recreational, and sporting information services provided via the Internet and other communications networks; Education and entertainment services provided by means of radio, television, telephony, the Internet and on-line databases; Entertainment and educational services featuring electronic media, multimedia content, audio and video content, movies, pictures, photographs, graphics, images, text and related information provided via the Internet and other communications networks; Film production services; Production of video recordings, sound recordings, DVDs, CDs, CD-ROMs, video and audio tapes; Production of television or radio programmes; Production of sporting events for television and radio; Publication of magazines, books, texts and printed matter; Publishing by electronic means; Providing online electronic publications (not downloadable); Provision of television programmes, radio programmes, films, audio and/or visual material and games online (not downloadable); Provision of news online; Information relating to sport and entertainment provided online from a computer database or the Internet; Information, advice and consultancy services relating to all the aforesaid services.

2. The application was published on 8 June 2016.

3. On 29 July 2016, Leisurewear International Limited (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods and services, namely all the goods in Class 25.

4. The grounds of opposition were those laid down in Article 8(1)(b) and 8(5) EUTMR.

5. The opposition was based on EUTM Registration No 5 052 469 for the word mark

RESPECT

filed on 12 April 2006 and registered on 24 May 2007 for the following goods:

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

6. On 7 June 2017, following a request from the applicant, the Office requested that the opponent submit proof of use of the earlier trade mark. In reply, the opponent filed the following evidence to demonstrate the genuine use:

• Three affidavits of Yamin Ibgui, Director of Leisurewear International Limited, dated 8 March 2016, 24 March 2017 and 11 October 2017. They 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;

• 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;

• An internal list dated 26 January 2016 showing amounts of sales for the period from 1 January 2008 to 31 December 2013 to 19 EU countries;

• A partial screenshot of an Internet search dated 26 May 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 May  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 May 2017;

• The results of an Internet search carried out on Google on 12 October 2017 for the words ‘respect ‘leisurewear international’ between 1 January 2011 and 1 January 2016. The results shown mention ‘Respect’ as a brand owned by the Opponent.

7. By decision of 9 July 2018 (‘the contested decision’), the Opposition Division upheld the opposition and refused the trade mark for all the contested goods. on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The evidence submitted relates to Belgium, the Czech Republic, France, the Netherlands and the United Kingdom. Therefore, the evidence relates to the relevant territory;

• Although part of the evidence is undated, there is sufficient evidence dated within the relevant period between 26 May 2011 and 25 May 2016;

• Regarding the extent of use, out of all the invoices submitted, only eight expressly mention the ‘RESPECT’ trade mark. However, in combination with other elements of the evidence, the extent of use shown is sufficient;

• However, the evidence filed refers to ‘clothing’. No evidence of use has been provided for the remaining goods of the opponent, namely footwear and headgear. Therefore the earlier mark is deemed to be protected for ‘articles of clothing including belts, gloves, scarves, lingerie, underwear, sportswear, hosiery’ in Class 25;

• 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.

• Contrary to 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 Opposition Division considers that the goods are directed at the public at large.

• 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. 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. The signs are similar to an average degree.

• Conceptually, the element ‘RESPECT’ 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. The element ‘GLOVAL’ of the contested sign has no meaning for the relevant public. 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, and is also distinctive. The remaining figurative element, namely the black horizontal line underlining the verbal element ‘RESPECT’, is merely decorative. 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.

• 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. Therefore, 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. As a result there is likelihood of confusion including a likelihood of association on the part of the English speaking public.

• The opposition is well founded and there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. Furthermore since it is also successful on the basis of Article 8(1)(b) EUTMR, there is no need to examine the grounds for Article 8(5) EUTMR.

8. On 10 September 2018, the applicant filed an appeal against the contested decision, requesting that the decision be set aside. The statement of grounds of the appeal was received on 9 November 2018.

9. No response was filed.

Submissions and arguments of the applicant

10. The arguments raised in the statement of grounds may be summarised as follows:

• As regards the proof of use, the exact same documents submitted by the opponent were previously submitted in a different opposition procedure No B 2 203 928 and the Opposition Division concluded that they were insufficient to prove the use of the opposing mark;

• The witness statement and the internal report of sales do not provide reliable information to determine effective use of the opposing mark. The veracity of the internal documents cannot be relied upon and their probative value at best must be considered as extremely low;

• The eight invoices are to be considered a ridiculously low number taking into account the market in question;

• As far as the goods are concerned, the conflicting goods are aimed at different segments of the market, since the products covered by the contested mark ‘replica of the Official competition T-shirt of a premier league football team for adults’ are obviously meant to be worn by the Valencia CF’s football players and its supporters and fans, and are sold only in licensed premises at a much higher price. It is common knowledge that the original replicas of T-shirts worn by any premier league football team are sold at an average retail price of 80 euros, whereas the goods protected under the opposing mark are clearly meant to be used by the public at large as everyday casual and low profile clothing and, in particular, by babies and kids in department stores like TESCO at an average retail price significantly lower –less than 10 euros;

• Therefore, the purpose and the end user of the goods in comparison is rather distinct, since the contested goods are directed at specialized circles and are not likely to be manufactured by the same undertakings, distributed through the same channels and sold in the same outlets, since, as previously stated, replicas of official T-Shirts are only sold in thoroughly selected channels and official stores. In addition, they are not in competition nor are they complementary;

• Considering that the contested goods target specialist consumers who are looking expressly to buy a t-shirt of their preferred football team which is identified with the well-known team shield, that the goods are priced within a range of between 80 to 100 euros, meaning that when purchasing them, the consumer will exercise a higher degree of care and will buy them only after careful consideration, and finally that the public interested in the products bearing the trade mark application is considered particularly careful, very brand conscious and therefore relatively attentive, a much higher degree of attention is assumed when a replica of an Official competition T-shirt product is involved;

• The applicant is the owner of well-known trademarks and this can have a decisive impact on the assessment of the similarity of the signs and the existence of the likelihood of confusion. Valencia CF is an ancient Spanish premier league football club of great reputation with 100 years of history, whose trade name ‘VALENCIA CF’ and, naturally, its famous Crest – which is included in a remarkable and visually outstanding position in the trade mark applied for – have become well-known not only in Spain but within the whole territory of the European Union and even worldwide;

• The term ‘RESPECT’ has been object of an obvious dilution in connection to clothing and its capacity to act as an indication of origin is diminished and impaired. There was a peaceful coexistence of many EUTM registrations which consist or contain the term ‘RESPECT’ to distinguish goods in Class 25. Furthermore, the term ‘RESPECT’ is recognised by the football fans as the reference to a campaign by UEFA (fighting racism and promoting fair play). In accordance with UEFA guidelines, the word ‘RESPECT’ was to be displayed on the t-shirts;

• Aurally and visually the marks show relevant dissimilarities. The contested mark creates a totally different overall impression compared to the one given by the one-word mark ‘RESPECT’, since the strong differences existing between the signs clearly prevail over the only one coincidence, especially when taking into account that the common element is merely descriptive and devoid of any distinctive character.

• Furthermore, it has to be taken into account that the goods at issue are goods in Class 25, for which the visual perception is more important than is the case for other classes;

• Consequently, the considerable visual differences between the signs caused by the additional words and figurative elements of the contested mark exclude any likelihood of confusion.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. As a transitional measure, Article 80 EUTMDR foresees that the CTMIR and BoA RoP shall continue to apply to ongoing proceedings until such proceedings are completed, provided that the EUTMDR does not apply in accordance with its Article 82.

13. Pursuant to Article 82(2)(j) EUTMDR, in the present case the EUTMDR has to be applied as regards the appeal proceeding. However, pursuant to Article 82(2)(a) and (d) EUTMDR, the CTMIR has to be applied with respect to the proof of use.

14. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Confidentiality request

15. The Board notes that the opponent requested that the evidence submitted before the Opposition Division be kept confidential.

16. In accordance with Article 114(4) EUTMR, files may contain certain documents which are excluded from public inspection, e.g. parts of the file for which the party concerned expressed a special interest in keeping confidential.

17. In the event that a special interest in keeping a document confidential in accordance with Article 114(4) EUTMR is invoked, the Office must check whether a special interest is sufficiently shown. Such a special interest must exist because of the confidential nature of the document, or its status as a trade or business secret.

18. Given that the documentation in question contains business data and customers’ data, the Board will describe the evidence only in the most general terms without disclosing such data and information in detail.

Proof of use

19. In accordance with Article 47(2) EUTMR, as in force as of 26 March 2016, i.e. in the version applicable to the present opposition proceedings, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof of use of the earlier mark shall furnish proof that, during the five-year period preceding the date of filing of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected.

20. In the present case, as the mark was filed on 26 May 2016, the opponent was required to demonstrate that the earlier mark was put into genuine use in the European Union form 26 May 2011 to 25 May 2016.

21. According to the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 39).

22. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark 08/07/2004, T 203/02, Vitafruit, EU:T:2004:225, § 40; see also, by analogy, 11/03/2003, C 40/01, Minimax, EU:C:2003:145, § 43).

23. For genuine use to have been made of the opposing trade mark the goods in question must be present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, so that it can be perceived by consumers as an indication of the origin of the goods or services in question (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 31-37 and 09/07/2003, T-156/01, Giorgio Aire, EU:T:2003:198, § 37).

24. In accordance with Rule 22(2) CTMIR, the proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark.

25. The opponent filed the documents listed in paragraph 6 above to prove the genuine use of the mark. The Opposition Division considered that these documents, albeit not particularly exhaustive, showed genuine use of the earlier mark in relation to: ‘articles of clothing including belts, gloves, scarves, lingerie, underwear, sportswear, hosiery’.

26. The applicant challenges these findings and submits that the same evidence was considered insufficient in the parallel proceedings. The Board observes that the decision cited by the applicant has been confirmed by the Boards (15/01/2018, R 636/2017-2, SHOW RESPECT APPROVED Auszeichnung für den respektvollen Umgang mit Natur, Mensch, Tier und Produkt (fig.) / RESPECT).

27. The Board recalls that, in order to examine, in a particular case, whether an EU trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment implies certain 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. In addition, the turnover and the volume of sales of goods marketed under the contested mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the contested mark need not always be quantitatively significant in order to be deemed genuine. Thus, even minimal use can be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create market share for the goods or services protected by the mark (24/05/2012, T-152/11, Mad, EU:T:2012:263, § 22).

28. However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 31).

29. Applying these principles to the present case, the Board observes that the evidence indeed consists mostly of internal documents which cannot serve to show use in trade and undated screen shots of the opponent’s website. As regards the invoices, as stated by the Opposition Division, only eight of them can be actually linked to the products bearing the ‘RESPECT’ mark as shown on the photos. The amounts mentioned in these invoices are at the level of a few hundred euros in relation to ‘RESPECT’ trade-marked products. Only two invoices indicate sales of ‘RESPECT’ marked goods for amounts exceeding one thousand euros. Such amounts are clearly insufficient to prove the extent of use of the earlier mark. Furthermore, these low amounts are not compensated by any other factor, such as the frequency of sales (all of them refer 2014 and 2015 only), intensity of the advertising or specificity of the market.

30. It must be noted that, considering the goods at issue (clothing), it must be concluded that the market in the European Union is very broad and therefore both the geographical area and the commercial volume required to show use should extend beyond a rather narrow area and rather low volume (cf. 19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 50 and § 54 and 29/09/2015, R 2586/2014-5, Cremcaffé (FIG. MARK) / café crem (FIG. MARK), § 19-22, as confirmed by 02/02/2017, T 690/15, Cremcaffé (fig.) / café crem (fig.), EU:T:2017:51). Therefore, there are no circumstances which could mitigate in favour of accepting that the amounts of sales shown by the applicant amount to genuine use.

31. It ought to be reiterated that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 32).

32. The opponent was clearly aware of the shortcomings of the evidence submitted in the present case as it was qualified by the Opposition Division as ‘not particularly exhaustive’ and seriously challenged by the applicant.

33. Therefore, knowing that the stakes were high, the opponent could have provided additional solid evidence relating to the use of the earlier mark or additional arguments. Instead, the applicant chose not to file any reply to the opponent’s submissions on appeal.

34. In view of the foregoing, while the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36-38 and the case-law cited therein), the Board considers that the use of the earlier mark shown by the opponent is no more than merely a token use, minimal or notional for the sole purpose of preserving the rights conferred by the mark and not to create or preserve an outlet for the goods and services concerned.

35. Accordingly, the appeal is allowed and the opposition is dismissed.

Costs

36. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

37. As to the appeal proceedings, these consist of the appeal fee of EUR 720 and the applicant’s costs of professional representation of EUR 550.

38. As to the opposition proceedings, the opponent must reimburse the applicant’s cost of professional representation of EUR 300. The total amount is fixed at EUR 1 570.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Rejects the opposition in its entirety;

3. Orders the opponent to bear the applicant’s costs in the opposition and appeal proceedings to a total amount of EUR 1 570.

Signed G. Humphreys

Signed V. Melgar

Signed C. Govers

Registrar: Signed H.Dijkema