OPPOSITION No B 3 031 427

Hi-Tec Sports International Holdings B.V., Paasheuvelweg 22 A, 1105 BJ, Amsterdam-Zuidoost, Netherlands (opponent), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN, Amsterdam, Netherlands (professional representative)

a g a i n s t

AdventureCORPS Inc., 638 Lindero Canyon Rd. #311, 91377, Oak Park, United States (applicant), represented by Schwarz & Partner Patentanwälte OG, Wipplingerstrasse 30, 1010, Wien, Austria (professional representative).

On 03/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 427 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 050 113 for the mark ‘BADWATER’. However, on 10/08/2018 it limited the opposition only against the goods in Class 25. The opposition is based on non-registered trade mark ‘BADWATER’ used in the course of trade in the United Kingdom for footwear. The opponent invoked Article 8(4) EUTMR.

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) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the opposition is directed against the EUTM application’s Class 25 in its entirety: Socks; Thermal socks; Anklets [socks]; Jackets; Shoes, in particular recreational shoes, fashion shoes, athletic shoes, climbing shoes, cycling shoes, training shoes, mountaineering shoes, and running shoes; Clothing, in particular t-shirts, hats, long-sleeve shirts, women's camisoles, sports bras, shorts, pants and skirts.

The contested trade mark was filed on 28/07/2017 and there is a valid priority date of 05/05/2017 regarding Socks; thermal socks; anklets; jackets. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to those dates respectively. The evidence must also show that the opponent’s sign has been used in the course of trade for footwear.

On 10/08/2018 the opponent filed the following evidence:

Annex 1: print out dated 07/08/2018 from the Heritage section of the Hi-Tec Sports website (https://www.hi-tec.co.uk/heritage/) providing a brief history of the company. The extract does not contain a reference to the earlier right.

Annex 2: copy of the 1989 Hi-Tec Sports plc Annual Report including images of the BADWATER 146, in addition to a colour copy of the products.

Annex 3: is a copy of the 'Hi-Tec (1989/90) Designed to be First' catalogue, which features the BADWATER 146 and LADY BADWATER shoes.

Annex 4: is a copy of the 'Hi-Tec ABC Concept – Into 1990 – catalogue (1990)', which features the ABC LADY BADWATER.

Annex 5: Extract undated from hitec.hts74 that does not contain a reference to the earlier right.

Annex 6: Copy of an unknown press release titled ‘Hi-Tec HTS 74 – AW17’ collection bearing a reference to Badwater 146.

Annex 7: screenshot of an email dated 17/11/2015 stating that the date the Badwater Mens Trainers product page was added to the opponent’s website is 17/11/2015.

Annex 8: copy of the Hi-Tec HTS74 Lookbook AW2018 containing a reference to BADWATER for training shoes.

Annex 9: an extract from the opponent’s website dated 25/07/2018 showing training shoes bearing the sign BADWATER.

Annex 10: a print-out from the opponent’s website dated 03/08/2018 showing 13 BADWATER training shoes.

Annex 11: print-outs dated 03/08/2018 from the Hanon website containing few pictures of training shoes bearing the sign BADWATER.

Annex 12: copy of an unknown sheet containing a list of the orders shipped up to 31/01/2017 and bearing a reference to the sign BADWATER.

Annex 13: Two invoices dated 2016 and 2017 one issued to a client in Germany and the other one to a client in Denmark. The first invoice is for a total quantity of 24 products bearing the sign Badwater and the second invoice is also for a total quantity of 24 products.

Annex 14: Customer list. The document is undated and does not contain a reference to the earlier sign.

Annex 15: An unknown list of Purchase orders placed by HI-TEC Europe LTD for Badwater products in 2017 and 2018. The list does not include the quantities.

Annex 16: A copy of the Hi-Tec Catalogue from 1989-1990.

Annex 17: A copy of the Hi-Tec Catalogue (Intro 1990).

Annex 18: A copy of the Opponent's Facebook, Twitter and Instagram pages.

Annex 19: Extracts from the Opponent's Instagram and Facebook pages.

Annex 20: Instagram posts by third parties dated 2016/2017 showing images of training shoes bearing the sign BADWATER.

Annex 21: A copy of Badwater Coverage dated 05/04/2017.

Annex 22: A copy of the Shortlist article "25 trainers to freshen up your collection in time for summer" dated 03/08/2018 showing a picture of training shoes bearing the sign BADWATER.

Annex 23: a print-out from Feefo dated 03/08/2018 containing some reviews about Badwater men’s trainer shoes.

Having examined the evidence, the Opposition Division notes that the evidence does not provide a convincing picture of the use of the opponent’s signs in the course of trade in Germany at the time of the filing date and the priority date of the contested trade mark.

On the basis of the evidence filed, the Opposition Division is not able to appreciate whether the economic extent of use is sufficient in relation to the respective goods.

The Annual Report and the catalogues are dated very far in time (1989 and 1990). The printouts and extracts merely show pictures of shoes bearing the earlier sign. Some of the materials are dated or contain references after the filing of the contested application, for example Annexes 8, 11, 22, 23. The list of purchase order does not indicate the source and the quantity that would presumably have been sold. The invoices are only two and the amounts mentioned therein are insignificant, especially taking into account the sizes of the markets in question. The pages of Facebook, Twitter and Instagram do not provide any clear indication about the extent of the use of the earlier right. Furthermore, Annex 6 is a document defined by the opponent as ‘press release’, but there is no evidence that it was distributed or taken into consideration for publishing and Annex 7 does not show use in a certain territory and in relation to the link included in this document, it is not for the EUIPO decision-taking bodies to search in the opponent's website for the relevant data to prove the notoriety of the earlier mark (04/10/2018, T 820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63).

Rights falling under Article 8(4) EUTMR may only be invoked if their use is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) EUTMR, that is, both to unregistered trade marks and to other trade signs identifying commercial origin. The proprietors of rights the use of which is of mere local significance retain their exclusive rights under the applicable national law pursuant to Article 138 EUTMR.

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

The Court of Justice clarified that the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a European Union trade mark, even though the sign might be used only to a very limited extent in the course of trade. The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 158-159).

Therefore, the Opposition Division concludes that while the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. It is not apparent from the evidence that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) EUTMR. The economic dimension of the use demonstrated by the evidence is insufficient.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Considering all the above, it is concluded that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the relevant territory. It is to be noted that the use of a sign of more than mere local significance cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the sign on the market concerned.

The condition requiring use of more than mere local significance in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected in its entirety as unfounded.

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, 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

Irena LYUDMILOVA LECHEVA

Francesca CANGERI

Riccardo RAPONI

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.