OPPOSITION No B 3 006 981

Skechers U.S.A., Inc. II, 228 Manhattan Beach Blvd., 90266 Manhattan Beach, United States of America (opponent), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative)

a g a i n s t

MBH SARL, 128, chemin de la Digue Z.I. secteur D, 06700 Saint Laurent du Var, France (applicant).

On 22/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 006 981 is partially upheld, namely for the following contested goods:

Class 25: Clothing for motorcyclists.

2. European Union trade mark application No 16 931 107 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 931 107, , namely against all the goods in Classes 12, 16 and 25. The opposition is based on the following earlier rights:

1) European Union trade mark registration No 3 867 579, ;

2) European Union trade mark registration No 5 546 981, ;

3) European Union trade mark registration No 10 414 035, ;

4) European Union trade mark registration No 12 645 313, ;

5) European Union trade mark registration No 16 290 629, ;

6) European Union trade mark registration No 12 103 081, ;

7) Non-registered trade mark, , used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the European Union.

8) Non-registered trade mark used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the European Union.

9) Non-registered trade mark used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the European Union.

10) Non-registered trade mark used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the European Union.

11) Non-registered trade mark used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the European Union.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in connection with the earlier registered trade marks and Article 8(4) EUTMR in connection with the non-registered marks.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 414 035, .

a) The goods

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

Class 25: Footwear.

The contested goods, after limitation, are the following:

Class 12: Vehicles and conveyances.

Class 16: Paper and cardboard.

Class 25: Clothing for motorcyclists.

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 12

The contested vehicles and conveyances are machines such as a car, bus, or truck which have an engine and are used to carry people or goods/cargo from place to place. They have a completely different nature, purpose and method of use from the opponent’s footwear in Class 25. Moreover, they differ in their manufacturers, relevant public and distribution channels, and are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 16

The contested paper and cardboard differ in their nature, purpose and method of use from the opponent’s footwear in Class 25. Contrary to the opponent’s arguments, the mere fact that paper and carton are used in packaging, points of sale (including invoices, labels and swing-tags) and advertising and promotional material related to the sale of footwear is not enough to find even a low degree of similarity between the opponent’s goods and the contested goods. The relevant consumers will not expect to purchase paper or carton goods at points of sale of footwear and will not think that the manufacturer of footwear also manufactures paper or carton for packaging. Consequently, the contested goods and the opponent’s goods are not likely to come from the same kind of undertakings and are not directed at the same consumers. Moreover, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 25

The contested clothing for motorcyclists is similar to the opponent’s footwear as both are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. Therefore, they have the same purpose. Moreover, they may coincide in their producer, relevant public and distribution channels inasmuch as the opponent’s footwear may also include footwear for motorcyclists.

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 similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

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 earlier mark is a figurative mark consisting of a thick, stylised letter ‘S’, the lower part of which is connected with a parallelogram with rounded corners, which frames the letter. The contested sign is a figurative mark consisting of a thick, stylised letter ‘S’ placed in a parallelogram-shaped frame with rounded corners, the left side of which is bent in two parts.

The established practice of the Office is that single letters convey concepts. The public in the relevant territory will perceive the letter ‘S’ in the marks as a letter of the Latin alphabet (08/05/2012, T‑101/11, G, EU:T:2012:223, § 56). Although the letter ‘S’ is used to denote the size ‘small’, particularly in relation to clothing which are relevant goods covered by the contested sign, in the present case such a perception is highly unlikely, given the way this letter is stylised and depicted in both signs. Therefore, it is considered that in both signs the letter ‘S’ enjoys an average degree of inherent distinctiveness.

Neither the earlier mark nor the contested sign has any element that could be considered more dominant (eye-catching) than other elements.

Visually, the signs are similar to the extent that they depict a stylised letter ‘S’ placed in a parallelogram-shaped frame with rounded corners. Although there are some differences in the inclination of the middle parts of the letter ‘S’ in the signs, in the shapes of the parallelogram frames and in the fact that the lower part of the letter ‘S’ of the earlier mark is connected with the frame, these differences are not so striking as to have a substantial influence on the overall visual impression created by the marks.

Therefore, the differences between the marks are not of such a nature as to completely divert the relevant consumers’ attention from the perception of the coinciding letter ‘S’ in the parallelogram or to create significant visual differences between the marks. Consequently, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‘S’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The graphical element of a parallelogram, seen in both signs, will not be associated with any particular concept, since the relevant public will perceive them as forming a frame to the letter ‘S’, with no influence on the meaning of the signs. As both signs will be perceived as the letter ‘S’ (as explained above), the signs are conceptually identical.

As the signs have been found similar or identical in all aspects 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.

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/or 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 contested goods are partly similar and partly dissimilar to the opponent’s goods and they target the public at large, which has an average degree of attention. The degree of inherent distinctiveness of the earlier mark is normal.

The signs are similar to the extent that they both contain a letter ‘S’. The differences between the signs are limited to some aspects in their stylisation, which, although they create some visual differences between the marks, cannot outweigh the similarities resulting from the fact that both signs depict the letter ‘S’ in a very similar manner and framed in a very similar geometric shape. Therefore, as explained in section c), the signs are visually similar to at least an average degree and aurally and conceptually identical.

Even taking into account the fact that for the relevant goods in Class 25 the visual aspect plays a greater role (since generally in shoe and clothes shops customers can themselves either choose the goods they wish to buy or be assisted by the sales staff and, therefore, the visual perception of the marks in question will generally take place prior to purchase), the visual differences between the signs, arising from slight differences in their stylisation cannot counteract the similarities. This is especially relevant taking into account 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). Therefore, it is highly conceivable that the relevant consumer will confuse the marks and will be led to believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

The applicant argues that it has used the mark , which represents a simplified version of its mark, , for ten years in the field of motorcycle accessories, which makes the relevant public and distribution channels of the conflicting goods different. However, the applicant’s argument cannot be taken into account as the earlier mark was not required to demonstrate genuine use of the relevant goods and, therefore, must be examined as specified in the registration.

Consequently, the comparison of the goods must be based solely on the wording of the list of goods registered or applied for. Any actual or intended use not stipulated in the list of goods is, in contrast, irrelevant (16/062010, T‑487/08 Kremezin, EU:T:2010:237, § 71). Likewise, the particular circumstances in which the goods in question are marketed must not be taken into account in the analysis of the likelihood of confusion (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 414 035, .

It follows, that the contested trade mark must be rejected for the goods found to be 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 extensive use or reputation as claimed by the opponent and in relation to 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.

Similarly, there is no need to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same verbal component, ‘S’, constitute a ‘family of marks’ or ‘marks in a series’. The result would be the same even if it was proven that the opponent used a family of ‘S’ marks in the field of clothing and footwear.

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

1) European Union trade mark registration No 3 867 579, , registered for footwear in Class 25;

2) European Union trade mark registration No 5 546 981, , registered for footwear and apparel in Class 25;

3) European Union trade mark registration No 12 645 313, , registered for footwear and apparel in Class 25;

4) European Union trade mark registration No 16 290 629, , registered for clothing; footwear; headgear in Class 25;

5) European Union trade mark registration No 12 103 081, , registered for footwear in Class 25.

Although some of these earlier trade marks are registered for a wider list of goods in Class 25, the outcome cannot be different with respect to the contested goods in Classes 12 and 16 for which the opposition has already been rejected, as such goods as apparel present in earlier marks 2) and 3) and clothing, headgear, present in earlier mark 4) are, for the same reasons as indicated in section a) of the present decision, dissimilar to the contested goods. Therefore, no likelihood of confusion exists with respect to those goods.

As the opposition is upheld only for part of the goods on the ground set out in Article 8(1)(b) EUTMR, the examination of the opposition will continue in relation to the other grounds invoked, namely Article 8(5) and Article 8(4) EUTMR.

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.

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union and the United Kingdom.

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 29/06/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and the United Kingdom 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:

European Union trade mark registrations No 3 867 579, No 10 414 035 and No 12 103 081

Class 25: Footwear.

European Union trade mark registrations No 5 546 981 and No 12 645 313

Class 25: Footwear and apparel.

European Union trade mark registration No 16 290 629

Class 25: Clothing; footwear; headgear.

The opposition is directed against the following remaining goods:

Class 12: Vehicles and conveyances.

Class 16: Paper and cardboard.

In order to determine the marks’ 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 marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 17/05/2018 the opponent submitted evidence to support its claims.

Before proceeding to listing the evidence, it is noted that the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Opposition Division accepts this request insofar as it relates to part of the evidence (specifically the financial and/or other sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already in the public domain (including that available to the public, either in mass media or on the websites of the opponent).

In relation to the claim of reputation, the evidence consists of the following documents:

 Confidential witness statement, dated 14/03/2018 and signed by an authorised representative of the opponent. The document states that the opponent was established in 1992 in Manhattan Beach, California, and is part of the world famous ‘Skechers’ group of companies which operate around the globe. The opponent designs, develops and markets a diverse range of lifestyle footwear for men, women and children, as well as performance footwear for men and women. The opponent has wholly owned subsidiaries in the United Kingdom, Germany, France, Spain, the Netherlands and Italy. The opponent’s shoes, bearing ‘S’ marks, are available for purchase through a variety of channels, including third-parties retail and department stores, such as Harrods, Brantano, Schuh, Jones Bootmaker, Debenhams and John Lewis in the United Kingdom and ABC Schuhe, Aktiv Schuh in Germany. The opponent’s central website www.skechers.com includes the option to redirect to various country-specific websites such as www.skechers.com/en-gb, www.skechers.dk and www.skechers.com/de-de which enable consumers to purchase the opponent’s goods, bearing ‘S’ marks, in their local language and currency. ‘Skechers’ footwear is available in over 120 countries and territories worldwide via department and speciality stores, ‘Skechers’ retail stores and the opponent’s e-commerce websites. The document also indicates that virtually all shoes sold by the opponent bear one of the various iterations of the ‘S’ logo marks and these marks are also used on the packaging and on purchase materials (including swing tags and literature which accompanies the shoes). The marks are also used extensively in advertising and marketing materials, in TV commercials, on the opponent’s e-commerce sites and social media, as well as on retail storage signage. The witness statement describes and refers to Exhibits PY1 - PY13 (attached to the witness statement).

 Exhibit PY1: contains extracts from the eSearch database of the opponent’s European Union trade marks, which form the basis of the claim under Article 8(5) EUTMR:

 Exhibit PY2: 18 photographs of the opponent’s shoes and packaging (undated), on which the following of the opponent’s marks can be seen:

 Exhibit PY3: five printouts from the Internet Archive Wayback Machine showing the opponent’s goods offered on the ‘Debenhams’ website www.debenhams.com (dated 08/07/2016 and 12/07/2016) and the ‘aktivschuh’ website www.aktiv-schuh.de (dated 15/03/2016); two printouts (dated 16/03/2017) showing the opponent’s goods offered on the ‘John Lewis’ website www.johnlewis.com; six printouts (dated 16/03/2017) showing the opponent’s goods offered on the ‘schuh’ website www.schuh.co.uk; one printout (dated 16/03/2017) showing the opponent’s goods offered on the ‘Schuhbode’ website www.schuhbode.de. The opponent’s goods in these printouts are referred to as ‘Skechers’ and on the majority of them one of the following marks can be seen:

 Exhibit PY4: a list of ‘Skechers’ retail stores in various countries of the EU (no source indicated). The list indicates stores in Austria (3), Belgium (2), Croatia (4), Czechia (5), Denmark (7), Estonia (5), France (16), Germany (5), Greece (2), Italy (10), Latvia (2), Malta (3), the Netherlands (3), Poland (4), Portugal (11), Ireland (13), Romania (2), Slovakia (2), Spain (16), Sweden (4), United Kingdom. No further information regarding these stores is submitted.

 Exhibit PY5: nine printouts from the Internet Archive Wayback Machine showing the opponent’s goods offered on the opponent’s websites www.skechers.com. www.skechers.se and www.skechers.gr (dated 01/08/2016, 12/02/2017 and 13/07/2016 respectively) and one printout (undated) from google.co.uk, containing a picture of the opponent’s ‘Skechers’ shop on Oxford Street in London. The printouts from the opponent’s websites contain various shoes referred to as ‘Skechers’, part of them bearing the marks , or . The mark can also be seen on the exterior signage of the opponent’s shop together with the sign ‘SKECHERS’.

 Exhibit PY6: 13 printouts from the opponent’s social media pages: Facebook (www.facebook.com/SKECHERSUK), Instagram (www.instagram.com/skechers, Skechers UK (@skechers_uk)) and Twitter (twitter.com/skechers, SKECHERS_UK (@SKECHERS_UK)) containing pictures of the opponent’s goods on which some of the above indicated opponent’s marks can be seen. The printouts are dated 16/03/2017 and one 04/05/2018. The printouts show that the opponent’s Twitter account was created on August 2011 and as of 16/03/2017 had 3 370 tweets and 4 420 followers; it also shows some tweets from the year 2016. Printouts of the opponent’s Facebook page shows that by 16/03/2017, 3 408 391 people had liked the opponent’s Facebook page and on the printout dated 04/05/2018 this number is 4 831 946. The printouts of the opponent’s Instagram account show 421 posts and 2 593 followers as of 16/03/2017.

 Exhibit PY7: printouts of five articles, namely: ‘Sketchers celebrity endorsements celebrate the brands’ California dream’ dated 21/12/2017 from ‘Retail & Stores’ mentioning the names of celebrities (actors, models, musicians and athletes) who endorsed Sketchers products, as well as providing some figures related to the revenues and the opponent’s stores in 2015 and 2016; ‘Skechers Makes A Really Odd Choice For Its Next Spokesmodel’ from ‘Business Insider UK’ (uk.businessinsider.com), dated 21/10/2014 indicating the former Beatles drummer Ringo Star as the new face for Skechers; ‘Rob Lowe Signs on with Skechers, The Iconic Actor Returns for new Men’s Footwear Campaign’ from www.footweartoday.co.uk, dated 22/02/2017, indicating that the legendary film and television actor will return to the brand for a new Skechers men’s footwear marketing campaign set to launch in Spring 2017; two articles ‘Christina follows in Britney’s steps with Skechers deal’ from www.campaignlive.co.uk and from an unidentified source, both dated 26/08/2003, indicating that Christina Aguilera is now to endorse Britney’s former sponsor, the footwear brand ‘Skechers’. Neither of the opponent’s trade marks can be seen in the printouts.

Printouts of some Skechers commercials on YouTube, published on 26/11/2013 ‘Tessa Brooks — sketchers Bella Ballerina Nickelodeon Commercial’, having 316 590 views on 06/04/2018; published on 27/02/2017 ‘Skechers Skech-Knit commercial with Brooke Burke-Charve’, having reached 1 453 256 views on 06/04/2018 and published on 24/05/2017 ‘Skechers Wide Fit commercial with Kelly Brook’, having reached 888 618 views on 06/04/2018. The footwear shown on these commercials bear some of the opponent’s marks (in different colours).

 Exhibit PY8: 31 samples of invoices for 2014 (2 invoices), 2015 (3 invoices), 2016 (18 invoices) and 2017 (8 invoices), issued to buyers in the United Kingdom and Ireland for Skechers Sport Mens, Skechers Sport Womens, Skechers Women’s Active, Skechers Girls and Skechers Boys footwear. Each invoice bears the sign on the top left corner. Invoices indicate quantities of the goods, without prices.

 Exhibit PY9: extract from the Annual Report filed by Skechers U.S.A., Inc. (a related company to the opponent), dated 01/03/2018 and covering the period from 01/01/2017 to 31/12/2017. The report lists ‘Skechers’ brands and lines (for clothing and footwear) and provides other information related to product design and development, sourcing, advertising and marketing, distribution channels, number of stores, international subsidiaries, intellectual property rights, risk factors, etc. The report indicates global net sales (in USD billions) as well as stating that the largest sales increases during the year came from subsidiaries in the United Kingdom, Germany and Spain (and indicating that the increases are primarily attributable to sales of Women’s and Men’s Go, Women’s Active and Men’s and Women’s Sport lines). However, the information in the report is not broken down into figures for these countries or the European Union.

 Exhibit PY10: extracts from Annual Reports filed by Skechers U.S.A., Inc. (a related company to the opponent), dated 26/02/2016 and 01/03/2017 and covering the periods from 01/01/2015 to 31/12/2015 and from 01/01/2016 to 31/12/2016 respectively. The reports indicate global net sales (in USD billions) for the years 2015 and 2016, state that the largest sales increases during the year came from subsidiaries in the United Kingdom, Germany and Spain and provide additional information (as indicated above in Exhibit PY9). However, the information in the reports is not broken down into figures for the European Union or particular EU countries. Furthermore, in paragraph 15 of the witness statement the net sales figures for ‘Skechers’ shoes are submitted for the year 2015 for Germany, France, Spain and Italy (in EUR millions) as well as net sales figures of the opponent’s goods by the opponent’s UK subsidiary, Skechers USA Ltd. for the years 2013, 2014, 2015, 2016 and 2017 (in GBP millions). It is also claimed that these sales figures relate to the opponent’s shoes bearing the ‘S’ marks.

 Exhibit PY11: extracts from the Annual Reports and Financial Statements of Sketchers USA Ltd (the opponent’s UK subsidiary) for the years 2011, 2012, 2013, 2014, 2015, 2016 and 2017, independently audited and filed at Companies House in the United Kingdom, confirming the above mentioned figures submitted in the witness statement in relation to net sales in the United Kingdom. However, these global figures are not broken down to the opponent’s brands and lines.

 Exhibit PY12: a selection of evidence regarding the awards received by the opponent for the years 2013 - 2017 at the Footwear Industry Awards. For example, it received the ‘Footwear Brand of the Year’ in 2017 and 2015, ‘Fashion Brand of the Year’ in 2015 and 2014, ‘Sports Footwear Brand of the Year’ in 2013.

 Exhibit PY13: printouts from magazines, such as: Triathlon PLUS (triradar.com) of May 2014, showing that ‘Skechers GoRun Ultra’ was rated as ‘Triathlon Gold Award’, ‘Triathlon Peak Performer’ and ‘Triathlon Top Value’. None of the opponent’s marks is seen in this printout; ‘Women’s running’ (www.womensrunninguk.co.uk) of December 2013, showing that ‘Skechers GoRun 2’, bearing the opponent’s mark was rated ‘GOLD’ as ‘2013 womensrunning Awards Minimalist Shoe’; ‘Men’s Running’ (www.mensrunning.co.uk) of December 2013, showing that ‘Skechers GoRun 2’, bearing the opponent’s mark was rated ‘GOLD’ as ‘Men’s Running magazine 2013 Awards Minimalist Shoe’.

In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned for the goods or services covered by that trade mark (judgments of 14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 34).

The Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 25, 27).

Having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent is not sufficient to demonstrate that the earlier trade marks have acquired a reputation.

The abovementioned evidence indicates that at least some of the earlier trade marks have been used for at least five years for footwear. However, the evidence does not provide sufficient indications of degree of recognition of the opponent’s trade marks by the relevant public in the European Union, it does not indicate market share of the trade marks and sales volumes in relation to the goods bearing the marks in question.

The net sales figures indicated in the extracts from the Annual Reports and Reports and Financial Statements (Exhibits PY10 and 11), although high, are too general and do not provide any information about sales volumes of the goods bearing the marks in question. In addition, the information submitted in these Reports and Statements is related to the opponent’s company in general, but not to the relevant marks. The invoices (Exhibit PY8), although bearing one of the relevant opponent’s marks on the top and relating to the relevant territory, do not show any sales figures, only quantities, which however are not so high (considering the goods in question are for everyday use) as to allow the Opposition Division to safely draw a conclusion as to the exposure of the relevant public to the earlier mark.

The printouts from the opponent’s Facebook, Twitter and Instagram accounts, showing the number of followers or likes, or commercials on YouTube, showing the number of viewers (Exhibits PY6 and 7), due to the global nature of social media pages, do not provide any information from which territories the followers and the viewers are. Furthermore, as far as the number of viewers is concerned, the same commercial may be viewed more than one time and it does not reflect the actual number of people that saw it. The printouts of five articles about celebrities endorsing ‘Sketchers’ products relate to the opponent and do not contain any information about the marks in question.

Although the evidence from Internet Archive Wayback Machine (Exhibits PY3 and 5) shows that the opponent was offering footwear for sale (bearing some of the opponent’s trade marks) on the opponent’s website and on websites of third parties during the years 2016 and 2017, it does not provide any information related to the extent of these sales. The same applies to the photographs of the opponent’s shoes (Exhibit PY2), which although they show how some of the opponent’s trade marks were used, do not provide any further information and are undated.

The evidence related to the awards received by the opponent for the years 2013 - 2017 at Footwear Industry Awards (Exhibit PY12) is related to the opponent’s business and does not contain any reference to the marks in question. The printouts from the magazines Women’s running and Men’s Running, showing a ‘Gold’ award for the goods bearing one of the opponent’s trade marks (Exhibit PY13) are dated quite far back from the relevant date and are not supported by any information related to the actual sales of these magazines or number of readers.

Considering all the above, despite showing the use of, at least, some of the opponent’s trade marks, the evidence does not show clearly to what extent they relate to the relevant territory and/or cannot clearly be linked with the relevant goods or trade marks. Furthermore, the evidence does not clearly indicate sales volumes or market share, the extent to which the trade marks have been promoted or the intensity with which the public has been exposed to the opponent’s trade marks in the relevant territory. Moreover, the opponent did not provide any market surveys or opinion polls on the trade marks’ recognition from independent market research companies in support of its claim.

As a result, the evidence does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation in the European Union.

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

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

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

The opposition under Article 8(4) EUTMR is based on the following earlier non-registered trade marks, used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, and the United Kingdom for the following goods:

	Class 25: Footwear.
	Class 25: Footwear and apparel.
	Class 25: Footwear and apparel.
	Class 25: Footwear and apparel.
	Class 25: Clothing; footwear; headgear.

In the Notice of Opposition, the opponent also referred to the European Union in the context of Article 8(4) EUTMR. The Opposition Division notes that non-registered trade marks are not harmonised at EU level and these rights are completely governed by national laws. Consequently, an EU non-registered trade mark as such does not exist and it is only at member state level that such rights can form a valid basis for opposition under these grounds.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade signs invoked by the opponent, namely non-registered trade marks in relation to Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) EUTMR as far as these earlier rights are concerned.

The examination under Article 8(4) EUTMR will continue on the basis of the opponent’s non-registered trade marks in the United Kingdom.

The opponent claims that as the owner of the above indicated unregistered trade marks, it has the right to prohibit the use of a contested trade mark in the United Kingdom under the tort of passing off.

On 17/05/2018 the opponent submitted a copy of the Och-Ziff case, No HC09C04142, of the High Court of Justice (as Annex 6) and on 26/10/2018 (after expiry of the time limit), an extract from the leading UK textbook Kerly’s Law of Trade Marks and Trade Names confirming the test for ‘passing off’ (as Annex 7). The Opposition Division considers it unnecessary at this point to examine whether the evidence, submitted after expiry of the time limit, namely Annex 7, is acceptable or not, because even if it was taken into account it would not be to the applicant’s prejudice, as will be seen from the further assessment below.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing/priority (if applicable) date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its marks.

The evidence examined above indicates that, by the filing date of the contested trade mark, some of the opponent’s goods had been present in the market in the United Kingdom for some time, generating transactions and income. As the whole body of evidence relate only to footwear, the examination of the opponent’s claims will proceed as if goodwill is established in relation to those goods.

b) The opponent’s right vis-à-vis the contested trade mark

Misrepresentation (passing off)

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built (which in this case was assumed). Therefore, the contested goods must be compared with the goods for which the opponent has shown that it has acquired goodwill through use.

1. The goods

The remaining contested goods are the following:

Class 12: Vehicles and conveyances.

Class 16: Paper and cardboard.

The opponent’s non‑registered trade marks are used for: footwear.

In essence, the same goods have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are applicable mutatis mutandis here.

Since the contested goods in Classes 12 and 16 are not only dissimilar to the goods for which good will has been assumed, but also belong to different business sectors, one of the necessary conditions is not fulfilled, and the opposition must be rejected as far as these goods are concerned.

The opponent claims that the misrepresentation is that there is a connection between the opponent and the goods being provided by the applicant under the highly similar mark. According to the opponent, such ‘connection’ includes a belief that the applicant’s goods are the opponent’s or that such goods have somehow been endorsed by, or connected with, the opponent. As a result, use of the applicant’s mark in relation to the goods in Classes 12 and 16 constitutes such a misrepresentation.

In this regard, the Opposition Division notes that the contested goods in Classes 12 and 16, being vehicles and paper and cardboard respectively, are used in different fields from that of the opponent. All of them show vast differences vis-à-vis the goods of the opponent, namely footwear. Therefore, the Opposition Division finds that the opponent’s arguments in this regard are not convincing and, as such, must be rejected.

Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the remaining contested goods for the goods of the opponent even taking into account the similarity of the signs.

It follows that, even including the evidence that was submitted after the time limit, the submissions of the opponent are insufficient for succeeding under Article 8(4).

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

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

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

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Rasa BARAKAUSKIENE

Solveiga BIEZA

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.