OPPOSITION No B 2 894 247

Andrew Underwood, 18 Upton Rocks Avenue, WA8 9DB, Widnes, United Kingdom (opponent), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, M3 2JA, Manchester, United Kingdom (professional representative)

a g a i n s t

McGregor Sports And Entertainment Limited, Charter House 5, Pembroke Row, Dublin 2, Ireland (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 27/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 894 247 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 233 215 “THE NOTORIOUS” (Word Mark) namely against all the goods in Classes 09, 16, 24, 25 and 28. The opposition is based on United Kingdom trade mark registration No 2 519 784 “NOTORIOUS FIGHTWEAR” (Word Mark). The opponent invoked Article 8(1)(b) 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 United Kingdom trade mark registration No 2 519 784.

The date of filing of the contested application is 09/01/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the United Kingdom from 09/01/2012 to 08/01/2017 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 24: Textiles and textile goods; bed and table covers; travellers' rugs, textiles for making articles of clothing; duvets; covers for pillows, cushions or duvets.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; childrens' toy bicycles.

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 28/06/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent – after a granted extension of the time limit - until 03/11/2018 to submit evidence of use of the earlier trade mark. On 05/11/2018, within the time limit – since the 03/11/2018 was a Saturday -, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Extract from the website www.mmafightwear.net. This site provides information concerning the general business activities of the company MMAFIGHTWEAR. The business is a retailer of clothing and equipment all related to the field of combat sports and martial arts. However the trademark “Notorious Fightwear” is not mentioned in this extract.

 Extracts from an internet archive search, showing samples of products: 11 pages which display t-shirts, hoodies and shorts bearing the mark “Notorious Fightwear” and the respective prices of the goods in £. The internet search is dated 11/5/2018 and shows different archive dates (09 Mar 2012, 10 Mar 2012, 15 Apr 2012 and 30 Dec 2014).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The Pictures of the products show that the place of use is the United Kingdom. This can be inferred from the language of the documents and the currency mentioned. Therefore, the evidence relates to the relevant territory.

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 documents filed, namely the extract from the opponent`s home page and the pictures of different goods do not provide the Opposition Division with sufficient information concerning the commercial volume and the frequency of use.

There is no evidence at all about the commercial volume of the sign in question. There are no Invoices which would indicate that the goods in question were actually sold. There are no figures concerning turnover or sales which would show the commercial volume of the trade mark and the frequency of use. Neither is there an affidavit which would provide information about the commercial volume, sales figures, promotional and advertising expenditure, etc.

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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Dorothee SCHLIEPHAKE

Reiner SARAPOGLU

Volker MENSING

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.