OPPOSITION No B 2 820 911

Tamasu Butterfly Europa GmbH, Kommunikationsstr. 8, 47807 Krefeld, Germany (opponent), represented by RDP Röhl - Dehm & Partner, Moritzplatz 6, 86150 Augsburg, Germany (professional representative)

a g a i n s t

Honor Metro Limited, Ste. 223-231 Tsimshatsui Ctr, 66 Mody Rd, Tsim Sha Tsui, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot Street, NG1 5GG Nottingham, United Kingdom (professional representative).

On 29/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 820 911 is partially upheld, namely for the following contested goods:

Class 18: All-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags;; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bag.

Class 24: Bath towels; beach towels; kitchen towels; towels.

Class 25: Aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; cover ups; dresses; ear muffs; flip flops; footwear; galoshes; gloves; hats; headwear; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits.

Class 28: Balls for games; balls for juggling; balls for sports; basketballs; beach balls; boomerangs; cases for play accessories; flying discs; footballs; in-line skates; kick board flotation devices; party games; playground balls; rubber balls; skateboards and skateboard bags; skim boards; snow boards; snow globes; snow saucers; snow sleds; soccer balls; surfboard leashes; surfboards; swim flippers.

2. European Union trade mark application No 15 547 409 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 547 409 ‘RAINBOW BUTTERFLY UNICORN KITTY’ (word mark), namely against some of the goods in Classes 18, 24, 25 and 28. The opposition is based on European Union trade mark registrations No 12 624 607 (figurative mark) and No 11 145 109 ‘Butterfly’ (word mark). The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier rights and Article 8(5) EUTMR in relation to European Union trade mark registration No 11 145 109.

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 12 624 607.

a) The goods

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

Class 18: Casual bags, in particular travelling bags, handbags and sports bags.

Class 24: Towels.

Class 25: Clothing, in particular outerclothing, winter jackets, windbreaker jackets, fleece jackets, underwear, T-shirts, sports and leisure clothing, sports shirts, sports trousers, tracksuits, jogging suits and leotards, sweatbands and headbands; knitwear (clothing), in particular jumpers, sweatshirts; terry-towelling goods, namely bathrobes; footwear, particularly athletic shoes for tennis and table tennis; headgear, in particular hats and caps.

Class 28: Sports and games equipment for table tennis and tennis, and parts therefor; ball pitching machines; tables for table tennis; balls, including balls for sports and balls for games, golf balls; tennis balls, tennis balls; racquets and bats, including tennis racquets, baseball bats, cricket bats, golf clubs and hockey sticks; table tennis rackets, badminton rackets and squash rackets and parts therefor, in particular handles, strings, grip tape and protective tape; protective apparatus, including shin guards, knee, elbow and ankle guards for sports purposes; roller skates and ice skates, inline skates; table tennis nets and tennis nets; nets for sporting purposes; goal and ball nets; start and finish banners, tapes and awnings for sports events; privacy screens and partitions for halls and tennis courts, display boards for sports results, ball throwing machines, skis, ski bindings, ski sticks, shot puts, discuses, javelins, darts, bows and arrows, billiard equipment, gym clubs, sport hoops, snowboards, surfboards, skateboards, ball inflators, benches and seats for sporting use, sleds, jump ropes, diving equipment.

The contested goods are the following:

Class 18: All-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; parasols; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bag.

Class 24: Bath towels; beach towels; kitchen towels; towels.

Class 25: Aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; cover ups; dresses; ear muffs; flip flops; footwear; galoshes; gloves; hats; headwear; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits.

Class 28: Balls for games; balls for juggling; balls for sports; basketballs; beach balls; boomerangs; cases for play accessories; flying discs; footballs; in-line skates; kick board flotation devices; party games; playground balls; rubber balls; skateboards and skateboard bags; skim boards; snow boards; snow globes; snow saucers; snow sleds; soccer balls; surfboard leashes; surfboards; swim flippers.

In its observations of 21/03/2018, the opponent agreed with the applicant that the contested parasols in Class 18 are dissimilar to its goods saying that it would accept these goods. However, as this statement cannot be considered as an explicit limitation of the extent of the opposition, these goods will also be compared.

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

The terms ‘in particular’, ‘particularly’ and ‘including’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

The contested all-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bag are all if not identical, then at least similar to the opponent’s casual bags, in particular travelling bags, handbags and sports bags. These goods are either included in, or overlap with, the broad category of the opponent’s goods or at least have the same distribution channels, target the same public and have the same commercial origin.

However, the contested parasols have no relevant links with any of the opponent’s goods. They have a different nature, purpose and method of use. They are neither complementary nor in competition. Their commercial origins are also different. These goods are considered dissimilar.

Contested goods in Class 24

Towels are identically included in both lists of goods.

The contested bath towels; beach towels; kitchen towels are included in the broad category of the opponent’s towels. Therefore, they are identical.

Contested goods in Class 25

Footwear; headwear are identically contained in both lists of goods (including synonyms).

The contested aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; cover ups; dresses; ear muffs; flip flops; galoshes; gloves; hats; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits are different types of clothing, footwear or headgear. As such these goods are included in the broad categories of the opponent’s clothing, in particular outerclothing, winter jackets, windbreaker jackets, fleece jackets, underwear, T-shirts, sports and leisure clothing, sports shirts, sports trousers, tracksuits, jogging suits and leotards, sweatbands and headbands; footwear, particularly athletic shoes for tennis and table tennis; headgear, in particular hats and caps. Therefore, they are identical.

Contested goods in Class 28

Skateboards; snow boards; surfboards; in-line skates are identically contained in both lists of goods.

The contested balls for games; balls for juggling; balls for sports; basketballs; beach balls; footballs; playground balls; rubber balls; soccer balls are included in the broad category of the opponent’s balls, including balls for sports and balls for games, golf balls. Therefore, they are identical.

The contested skim boards are type of surfboards. They are included in the broad category of the opponent’s surfboards. Therefore, they are identical.

The contested snow sleds are included in the broad category of the opponent’s sleds. Therefore, they are identical.

The contested skateboard bags; surfboard leashes; cases for play accessories are similar to the opponent’s skateboards; surfboards, balls, including balls for sports and balls for games, golf balls. These goods have the same distribution channels and target the same public. They also have the same commercial origin.

The contested kick board flotation devices; swim flippers are similar to the opponent’s diving equipment. They have the same distribution channels, target the same public and originate from the same undertakings.

The contested boomerangs; flying discs; party games; snow globes; snow saucers; are similar to the opponent’s balls, including balls for sports and balls for games, golf balls as they are distributed through the same channels, target the same public and originate from the same undertakings.

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 or at least similar are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	RAINBOW BUTTERFLY UNICORN KITTY
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 ‘BUTTERFLY’ 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 verbal element ‘RAINBOW’ of the contested sign will be perceived as ‘an arch (= curved shape) of different colours seen in the sky when rain is falling and the sun is shining’ (information extracted from Cambridge English Dictionary on 09/06/2020 at https://dictionary.cambridge.org/dictionary/english/rainbow). The common element ‘BUTTERFLY’ will be understood as ‘a kind of insect’ by the relevant public. The element ‘UNICORN’ of the contested sign will be understood as ‘an imaginary white creature like a horse with a single horn growing from the front of its head’ (information extracted from Cambridge English Dictionary on 09/06/2020 at https://dictionary.cambridge.org/dictionary/english/unicorn). The verbal element ‘KITTY’ in the contested sign will be perceived as a reference to ‘a cat or kitten’. All these elements have no clear and evident meaning for the relevant goods and as such they are all considered distinctive.

The depiction of the figurative element of the earlier mark is not very elaborated and will not attract consumer’s attention.

Visually, the signs coincide in the verbal element ‘BUTTERFLY’. The signs differ in the verbal elements ‘RAINBOW’ and ‘UNICORN KITTY’ of the contested sign. Even though the signs have different beginnings, the verbal element ‘BUTTERFLY’ is the only element of the earlier mark and is placed as the second verbal element in the contested sign, where it plays an independent role.

Moreover, although the contested sign is composed of four distinctive words, the verbal element ‘BUTTERFLY’ is the longest word of that sign (it is composed of nine letters versus the remaining seven- and five-letter words) and, as such will not go unnoticed by the relevant public.

Therefore, the signs are similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BUTTERFLY’, present identically in both signs. The pronunciation differs in the sound of the letters ‘RAINBOW’ and ‘UNICORN KITTY’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, on account of the common element ‘BUTTERFLY’ and due to the fact that the contested sign does not constitute a concept as a whole but will be perceived as referring to four different concepts, the signs are conceptually similar to a low 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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

The goods are partly identical, partly at least similar and partly dissimilar. They target the public at large. The degree of attention differs from average to high.

The signs are visually and aurally similar to a below-average degree and conceptually similar to a low degree. The earlier mark enjoys a normal degree of inherent distinctiveness.

The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the at least similar goods come from the same undertaking or at least economically linked undertakings. The Opposition Division considers that the differences between the earlier mark and the contested sign are not sufficient to exclude a likelihood of confusion, as the relevant public may believe that the goods found to be identical or at least similar come from the same undertaking or at least economically linked undertakings. The whole earlier mark is included in the contested sign as an independent and distinctive element of the contested sign. Therefore, even if the public does not directly confuse the signs, they are likely to perceive the contested sign as a variation of the earlier mark.

In its observations, the applicant argues that there are several registrations with the word ‘BUTTERFLY’ in the European Union which peacefully coexist with the opponent’s earlier marks.

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 ‘BUTTERFLY’. Moreover, on the basis of register data only, it cannot be inferred whether or not there is an agreement or some form of cooperation between the opponent and the owners of those marks referred to by the applicant. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

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

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 found to be identical or at least similar 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.

Since the opposition is partially 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 and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark 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 mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the European Union trade mark registration No 11 145 109 for the word mark ‘Butterfly’.

This mark covers the same or a narrower scope of goods in Classes 24 and 25 as well as sporting apparatus; sports and games equipment for table tennis and tennis, and parts therefor; ball pitching machines; table tennis tables in Class 28. The contested parasols have no direct points of contact with any of the opponent’s goods. They satisfy different needs, their natures, purposes, methods of use, providers and distribution channels are distinct. These goods are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

The examination will proceed with regards to European Union trade mark registration No 11 145 109 in relation to which Article 8(5) EUTMR has been invoked.

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.

f) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union, in particular in Germany.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 15/06/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 28: Sporting apparatus; sports and games equipment for table tennis and tennis, and parts therefor; ball pitching machines; table tennis tables.

The opposition is directed against the following remaining goods:

Class 18: Parasols.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent indicated that its submissions of 28/07/2017 were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. The Opposition Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information.

 a link to a video on www.youtube.com of a professional table tennis game;

 a printout from the opponent’s website, http://butterflyonline.com, regarding the use of its equipment at the World Table Tennis Championships, which demonstrates that 59.3 % of participants used its ‘BUTTERFLY’ blades and 60 % of participants used ‘BUTTERFLY’ rubbers at the 2016 World Championships in Kuala Lumpur;

 a printout from http://rgsport.com, summarising the history of the ‘BUTTERFLY’ brand, which states that this has been the leading brand of table tennis equipment in the United Kingdom for over 30 years and that many of the world’s best players use ‘BUTTERFLY’ blades or rubbers. However, there is no reference to Germany;

 a printout from www.butterfly.tt, summarising the history of the company. It states, inter alia, that Tamasu Butterfly Europe was founded in Moers, Germany, in 1973;

 a printout from the opponent’s website, in German;

 printouts from www.tischtennis.de, showing signs or , showing sponsoring activities and leaflets indicating that the opponent is one of the sponsors in these events, such as World table Tennis Championships in 2014 in Tokyo and in 2013 in Paris, . The extracts are partly in German and partly in English;

 printouts from www.ittf.com, regarding the World Team Table Tennis Championships in 2014 and 2015, with no reference to the trade mark at issue;

 a printout from www.ettu.org, regarding the European Table Tennis Union, dated outside the relevant period;

 printouts from www.tischtennis.de and http://ttbl.de, in German;

 printouts from www.openpr.de and www.bttv-kreis-hassberge.de, in German;

 a printout from www.weightwatchers.com, in English, stating, inter alia, that Butterfly is a market leader in table tennis gear and recreational bats and referring to the USA;

 a printout from www.rp-online.de, in German;

 a newsletter from Seagulls table tennis club, dated August 2016, that is, outside the relevant period;

 a printout from www.teamusa.org, dated 12/10/2015, regarding a partnership between ‘Butterfly’ and Inclusion Table Tennis. It states that ‘Butterfly’ is the world leader in table tennis equipment and a sponsor of some international table tennis championships;

 printouts from various websites, showing ‘BUTTERFLY’ table tennis tables;

 an interview with the Export Sales and Marketing Director of Butterfly Europe from www.allabouttabletennis.com, stating that Butterfly is one of the world’s top table tennis equipment manufacturers. The interview dates from 2011;

 printouts from various German websites, in German, showing, inter alia, ‘BUTTERFLY’ products;

 the opponent’s official annual report for 2014, with sales figures, in German;

 an invoice, in German, dated 20/03/2013, relating to the ‘BUTTERFLY’ catalogue for 2013;

 a printout from www.zugbruecke.de, in German;

 a copy of the WIPO registration certificate for the trade mark ‘BUTTERFLY’;

 a list of search results for ‘butterfly tischtennis’ from www.google.de;

 the ‘BUTTERFLY’ catalogue for 2013, in English, and for 2014, in German, depicting a figurative form of the trade mark on table tennis equipment, sports clothing, sports shoes and sports bags, such as or . It states that ‘Butterfly’ is the official textile supplier of the German table tennis national teams. ‘Butterfly’ was also the official ball supplier at the World Table Tennis Championships 2013 in Paris.

In its observations of 21/03/2018, the opponent submitted further evidence with regard to the reputation of the earlier mark. However, this evidence cannot be taken into account as in the present case, the time limit for substantiation started before 01/10/2017 and no discretion for admitting late evidence applies (Article 81(2)(b) EUTMDR Rules 19(4) and 20(1) of Regulation 2868/95).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

If the evidence of reputation is not in the correct language, it must be translated into the language of the proceedings within the same period of four months, as required by Rules 16(1) and 17(3) EUTMIR. However, in view of the volume of documents often needed to prove reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics, the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues, etc.

Moreover, according to Article 81(2)(b) EUTMDR, the rules on translating the evidence applicable in the present case derive from Article 19(3) and (4) EUTMIR, which was in force when the adversarial part of the proceedings started. These Articles state that the Office can only consider evidence that is submitted in the language of the opposition proceedings. Therefore, the documents that have not been translated will not be taken into account.

A substantial part of the evidence is in German, which is not the language of the proceedings. The self-explanatory evidence, such as catalogues and website printouts, showing goods bearing the trade mark ‘BUTTERFLY’ (albeit in a figurative form), and thus demonstrating use with regard to at least some of the relevant goods, does not require translation. However, the evidence also includes articles in German, which may provide indications of the extent of the recognition of the mark by the relevant public, but these have not been translated into the language of the proceedings and, therefore, cannot be taken into account.

Furthermore, the evidence must specifically concern the relevant territory. For example, if the evidence relates to Japan or if the territory to which it relates is not clear, it will not be able to demonstrate reputation in the EU or in a Member State. Therefore, figures concerning sales in the EU as a whole, or worldwide sales, cannot demonstrate reputation in a specific Member State if the relevant data are not broken down by territory. In other words, a wider reputation must also be proven specifically for the relevant territory if it is to be taken into account.

The opponent claimed reputation in the European Union and particularly in Germany. However, very little of the evidence refers to this territory. The mere fact that some of the evidence is in German does not prove that the trade mark in question is recognised by the relevant German public. The internet printouts state that ‘Butterfly’ is the world leader in table tennis equipment and a sponsor of some international table tennis championships. They also state that ‘BUTTERFLY’ has been the leading brand of table tennis equipment in the United Kingdom for over 30 years and that many of the world’s best players use ‘BUTTERFLY’ blades or rubbers. However, the documents submitted are not sufficient to demonstrate that these claims are not merely laudatory promotional messages but based on surveys, market share or any objective information provided by independent sources. Moreover, the evidence is not sufficient to prove that the earlier trade mark has a reputation neither in Germany nor in the European Union.

The WIPO trade mark registration certificate does not indicate use of the mark or reputation, but only the fact of registration. The Google search results demonstrate some presence of the trade mark on the German market. However, they do not demonstrate the degree of the recognition of the trade mark by the relevant public.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not demonstrate the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

Moreover, the opponent stated that its goods only target professionals. Therefore, the relevant public in relation to which the mark’s reputation should be assessed is a professional public, not the general public.

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna BAKALARZ

Katarzyna ZANIECKA

Martin MITURA

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.