OPPOSITION No B 3 043 323

Warrior Sports, Inc., 32125 Hollingsworth Ave., 48092, Warren, United States (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010, Madrid, Spain (professional representative)

a g a i n s t

KBF Enterprises Limited, Unit 1 Guinness Road Trading Estate, Guinness Road, Trafford Park, M17 1SB, Manchester, United Kingdom (applicant), represented by Keystone Law, 48 Chancery Lane, WC2A 1JF, London, United Kingdom (professional representative).

On 17/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 323 is upheld for all the contested goods.

2. European Union trade mark application No 17 185 612 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 185 612 for the word mark ‘WARRIOR’, namely against all the goods in Classes 25 and 28. The opposition is based on European Union trade mark registration No 3 671 583 for the word mark ‘WARRIOR’. 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, namely European Union trade mark registration No 3 671 583.

The date of filing of the contested application is 31/10/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 31/10/2012 to 30/10/2017 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 25: Sports clothing and apparel; clothing and apparel for use in playing lacrosse.

Class 28: Sports equipment; sports apparel; equipment and apparel for use in playing lacrosse; protective clothing and equipment for use in playing lacrosse; but not including angling apparatus or angling accessories.

For reasons of economy of the proceedings the examination of proof of use will focus on goods belonging to Class 28.

According to Article 10(3) EUTMDR, 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 07/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 12/01/2019 to submit evidence of use of the earlier trade mark. On 07/01/2019 the Office gave to the opponent an extension of the time limit until 12/03/2019. On 07/03/2019, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

 More than 300 invoices dated between 2012 and 2017 issued to clients in various European countries: Germany, France, the United Kingdom, Finland, Hungary, Austria, Poland, Bulgaria, The Netherlands, Italy, the Czech Republic, and Latvia bearing the earlier mark in stylised form for, among others, various equipment and apparel for playing lacrosse and protective clothing and equipment for playing lacrosse.

 Five catalogues dated between 2013 and 2017 bearing the earlier mark in stylised form for, among others, various equipment and apparel for playing lacrosse and protective clothing and equipment for playing lacrosse. The indications in the invoices respond to the indications in the catalogues for the same period (such as heads, handles, gloves, helmets, protective clothing and equipment: arm guard, arm pad, elbow guard, shoulder pad, rib pad, chest pad, leg pads).

If the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following Leno Merken, Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the European Union (para. 44).

In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor for establishing genuine use.

The documents submitted, in particular the invoices, show that the place of use is the European Union. They are issued to clients located in various countries of the EU territory and this can be inferred from some addresses in Germany, France, the United Kingdom, Finland, Hungary, Austria, Poland, Bulgaria, The Netherlands, Italy, the Czech Republic, and Latvia. Therefore, the evidence relates to the relevant territory.

The evidence is dated within the relevant period.

Some of the invoices are of the name of a licensee.

According to Article 18(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. This means that the owner must have given its consent prior to the use of the mark by the third party. Acceptance later is insufficient.

A typical case of use by third parties is use made by licensees. Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.) is similarly to be considered as authorised use (30/01/2015, T-278/13, now, EU:T:2015:57, § 38). Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered as use of the mark (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 73).

At the evidence stage it is prima facie sufficient that the opponent only submits evidence that a third party has used the mark. The Office infers from such use, combined with the opponent’s ability to present evidence of it, that the opponent has given prior consent.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They are numerous and distributed uniformly during the relevant period of time, they relate to several product ranges and issued to various countries of the European Union. The volume of sales is also considerable.

The evidence shows that the mark has been used in accordance with its function and as registered for at least equipment and apparel for use in playing lacrosse; protective clothing and equipment for use in playing lacrosse; but not including angling apparatus or angling accessories for which it is registered.

Some of the goods show their individual mark together with the earlier mark.

It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are being used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

Article 18 EUTMR states that use of the mark in a form different from that registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The evidence shows that the mark is used in stylised forms as

, or

which are merely decorative and serve to emphasise the verbal element. Therefore, they do not alter the distinctive character of the mark.

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).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory at least for Equipment and apparel for use in playing lacrosse; protective clothing and equipment for use in playing lacrosse; but not including angling apparatus or angling accessories belonging to Class 28.

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.

a) The goods

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

Class 28: Equipment and apparel for use in playing lacrosse; protective clothing and equipment for use in playing lacrosse; but not including angling apparatus or angling accessories.

Following final decisions in opposition proceedings Nos 3 050 432 and 3 050 536 the contested goods are the following:

Class 25: Clothing; Headgear; none for use relating to wrestling.

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

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

The contested goods are similar to a low degree to the opponent’s because they can have the same distribution channels, relevant public and producers.

b) The signs

WARRIOR	WARRIOR
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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. If a significant part of the relevant public of the goods or services at issue may be confused as to the origin of the goods or services, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are similar to a low degree and the marks are identical.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Considering all the above, there is a likelihood of confusion on the part of the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 671 583. It follows that the contested trade mark must be rejected for all the contested goods.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Maria SLAVOVA

Francesca CANGERI

Aurelia PEREZ BARBER

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.