OPPOSITION No B 2 995 705

Dreammore Limited t/a JoeyWears, Dreamore Limited, Flat 301 Bankside Lofts, 65 Hopton Street, London, SE1 9JL, United Kingdom (opponent), represented by Harper James Solicitors, Units 2-5 Velocity Square, 1 St Mary’s Square, Sheffield York S1 4LP, United Kingdom (professional representative)

a g a i n s t

Yao Yu, 24-98 Hubei Road Zhengda Street, Linghe District, Jinzhou City, Liaoning Province, People’s Republic of China (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative).

On 22/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 995 705 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 17 116 121 , namely against some of the goods in Class 25. The opposition is based on the non-registered mark for the territories of Belgium, Bulgaria, Czech Republic, 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, in relation to which the opponent invoked Article 8(4) EUTMR. In addition, the opposition is based on well-known trade mark for all the above territories, in relation to which the opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(a) EUTMR.

PRELIMINARY REMARK

The opponent based its opposition on, inter alia, earlier non-registered mark for the territory of the European Union (interpreted from the designation ‘EUIPO’ in the notice of opposition). However, the Opposition Division notes that European Union legislation does not provide any protection for EU non-registered marks and that such rights claimed for the territory of the Union cannot be an eligible basis for opposition.

NON‑REGISTERED MARKS — 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

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

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

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 evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

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, namely non-registered marks for the territories claimed in the notice of opposition (all the Member States). 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. Furthermore, as the opponent did not rely on online substantiation of the legal provisions either, the Opposition Division cannot take such substantiation into account.

As mentioned above, the conditions under Article 8(4) EUTMR are cumulative and failure to satisfy any one of them is sufficient for the opposition to be rejected as non-substantiated.

Therefore, the opposition is not well founded in relation to the opponent’s non-registered marks under Article 8(4) EUTMR.

EARLIER WELL-KNOWN MARKS — ARTICLE 8(2)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(a) EUTMR

In its notice of opposition, the opponent claims to have well-known marks in the sense of Article 6bis of the Paris Convention for the figurative mark in all the Member States listed above in relation to the following goods:

Class 25: Clothing, underwear, sports underwear.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ means:

trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Article 8(2)(c) EUTMR, in general, defines the earlier trade mark only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Thus, the grounds for refusal and opposition are those of Article 8(1) EUTMR.

In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) EUTMR to be applicable, both of the following must be established:

a) the earlier mark was well known in the relevant territory on the date when the contested EUTM application was filed, or, where appropriate, on the said priority date;

b) there is a likelihood of confusion on the part of the public in the relevant territory because the EUTM application is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is known.

Well-known character of the earlier trade marks

With regard to the first condition, the opponent had to prove, before the end of the substantiation period, that it was the owner of the allegedly well-known marks and that these marks became well known to the relevant public at least in a substantial part of the relevant territory (for each of the Member States designated) before the filing date of the contested trade mark, namely 16/08/2017.

The Opposition Division notes that, in practical terms, there is substantial overlap between establishing whether a trade mark is well known and whether it enjoys a reputation. This has been consistently confirmed by case-law (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22; 22/11/2007, C‑328/06, Fincas Tarragona, EU:C:2007:704; 11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 56-57, etc.).

In that sense, establishing that a trade mark is well known 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 goods concerned, generally clothing, will target the general public.

On 10/04/2018, within the substantiation period, the opponent submitted a batch of documents as follows.

General information

Exhibit 1 The certificate of incorporation of a private limited company, namely the opponent’s company ‘Dreamore Limited’, issued by the Registrar of Companies for England and Wales on 19/06/2015.

Exhibit 2 A copy of private email correspondence (dated 23/08/2016) between the opponent, JoeyWears (as a client), and a third party, regarding the creation of a portfolio containing three samples of logos and commercial materials depicting them, one of which was the alleged company logo of the opponent .

Social media presence of the brand

Exhibit 3 A printout from a social media page (Facebook) illustrating a piece of underwear, on which the letters ‘JW’ and the mark are depicted, dated 26/10/2016.

Exhibit 4 A promotional brochure giving brief information about the opponent’s products, underwear, with the sign appearing on the heading.

Exhibit 5 Screenshots introducing the Twitter account of the opponent’s company, ‘joeywears’ (913 followers), located in London, UK, featuring the sign as a profile image and reflecting its publishing history. Reference is made to the year 2017.

Exhibits 6-7 Screenshots introducing the Instagram account of the opponent’s company ‘joeywears’ (1 119 followers), featuring the sign as a profile image as well as some publications and picture materials on which the opponent’s products (underwear) are illustrated, some of which bear the aforementioned sign. The publications are dated between October 2016 and August 2017.

Exhibit 8 A single publication on Facebook, dated 16/03/2017, regarding some product details of the aforementioned men’s underwear.

General information about the project

Exhibit 9 Extracts from the website www.kickstarter.com (a fundraising website), demonstrating a publication entitled ‘JoeyWears: The Only Underwear Your Balls Deserve’ with a short introduction to the opponent’s product, underwear (presented with the sign ). As may be inferred from the text, the products are offered for sale to the public at large in order to co-fund a project launched in July 2017.

Media coverage

Exhibit 10 An article published at www.uk.askmen.com, entitled ‘Best New Kickstarters For July 14, 2017’, in which the crowdfunding website ‘Kickstarter’ is introduced as a concept and the opponent’s underwear is listed as one of the new products (projects) that may be of interest to the general public.

Exhibit 11 An article published on www.thunderclap.it, entitled ‘The Undies Your Balls Deserve’, in which the opponent’s underwear is again introduced as a new product (project) to be crowdfunded.

Exhibit 12 Screenshots illustrating the website www.revolution.truestart.co.uk and particularly the event ‘R:Evolution 4.0’ (dated 2017), as well as screenshots from a YouTube channel referring to ‘R:Evolution 3.0’. As may be deduced from the information contained therein, along with the opponent’s explanations, the event is hosted by the UK’s leading retail-focused private equity firm, TrueStart, and represents a ‘retail and consumer conference created for industry leaders and influencers, senior investors and entrepreneurs’. According to the opponent, its company had been selected as one of the eight (in total) retail start-ups in the UK to attend the fourth edition, and its attendance was demonstrated by some promotional materials, including, on 18/05/2017, an Instagram posting by the opponent from the event’s premises.

Exhibits 13-15

and 19-21 Screenshots dated 2017 from the opponent’s channel on YouTube (nine subscribers) illustrating advertising videos regarding its product.

Exhibit 25 Lists containing information about international orders of the opponent’s underwear by clients that participated in the crowdfunding (see the section ‘pledge amount’); these are, so to speak, the sales generated from the opponent’s product (project) between July 2017 and 4 August 2017, when the crowdfunding was ongoing.

For the sake of completeness, the Opposition Division notes that, contrary to what the opponent states, the evidence submitted by the opponent does not contain a USB stick, and neither the Opposition Division nor the other party has been made familiar with Exhibits 16-18 and 22-24. Nevertheless, given that the opponent explains the nature of the alleged evidence, namely other video materials on YouTube for advertising purposes, the Opposition Division notes that the addition of this evidence would not have significantly affected the conclusions below or provided more conclusive evidence than that already referred to above.

Having examined the above evidence, the Opposition Division considers that the opponent failed to prove that the alleged earlier marks were well known in any of the Member States for which this was claimed.

The opponent argues in its observations that it has used ‘solid media platforms to build up extensive interest in its branded products’ among the relevant public. Some examples have been presented in Exhibits 3-8, 13-15 and 19-21, in which the numbers of followers or subscribers have been emphasised by the opponent: for example, 913 followers on Twitter, 1 119 followers on Instagram, 9 subscribers on YouTube. However, the Opposition Division does not find these figures particularly impressive when isolated from the context of the market environment in which the opponent’s company operates. It is impossible for the Opposition Division to draw precise conclusions regarding exposure to the public of the opponent’s brand or the level of exposure in each individual Member State.

Furthermore, the opponent points out that the launch of its products for sale under crowdfunding projects (e.g. Kickstarter and Thunderclap referred to in Exhibits 9-11) has been extremely successful, with significant sales figures generated on a global level (Exhibit 25). In that respect, the Opposition Division notes that, even though the company logo and, in particular, the crowdfunding project it designated might be known by some consumers who participated in the crowdfunding campaigns and thereby purchased the opponent’s products, all the documents combined barely demonstrate anything other than commercial sales of the products. The figures and publications have not been sufficiently elaborated by the opponent or expressed as market share held by the mark, that is to say, the percentage of consumers who would recognise and know that particular mark among competing brands in the same commercial niche. Consequently, despite referring to some commercial success on the part of the opponent’s company (such as surpassing the fundraising threshold, as highlighted by the opponent), this evidence cannot on its own be conclusive for establishing that the marks are well known.

Finally, as ‘R:Evolution 4.0’ (Exhibit 12) is an annual event, the opponent’s participation cannot, on its own, be conclusive for the degree of exposure of the mark or any consequent recognition among relevant purchasers. The opponent did not elaborate on whether or how such participation had impacted on the brand’s development, for instance, what percentage of the public attending was reached or was informed about the opponent’s brand and products.

In summary, the Opposition Division considers that, although the opponent has provided some indications with respect to its market presence, mostly by means of its social media channels and public campaigns, the evidence submitted does not demonstrate that the marks are widely known and recognised by the public in the relevant territories in relation to the goods. Only if the evidence were coupled with sufficient indications of trade mark awareness and of the overall performance of the mark in the market would it be possible to establish with a reasonable degree of certainty whether or not the marks are well known. In the present case, the opponent failed to provide convincing indications of the level of public recognition.

Therefore, in the light of the above considerations and particularly in the absence of independent and objective evidence that would help establish such recognition among the relevant consumers, the alleged earlier marks are not found to have become well known in any of the Member States for which the opponent claimed this to be the case.

As seen above, for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) EUTMR to be applicable, it is a requirement for the earlier trade mark to have become well known in the relevant territory on the date when the contested EUTM application was filed for the goods and services on which the opposition is based. Since it has not been established that any of the earlier trade marks claimed are well known, one of the necessary conditions 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.

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

Inés GARCÍA LLEDÓ

Manuela RUSEVA

Teodora TSENOVA-PETROVA

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.