OPPOSITION No B 3 050 536

Liberty Footwear Company, Liberty House 4/42 Punjabi Bagh, 110 026 New Delhi, India (opponent), represented by Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 München, Germany (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 Wood IP Limited, 2 Ivy Court, NN11 4EP Daventry, United Kingdom (professional representative).

On 21/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 536 is upheld for all the contested goods, limited as follows:

Class 25: Footwear none for use relating to wrestling.

2. European Union trade mark application No 17 185 612 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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 some of the goods in Class 25. The opposition is based on European Union trade mark registration No 14 439 69, 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 No 14 439 69.

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: Shoes and boots for women, men and children excluding athletic footwear, sneakers and basketball shoes.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 07/11/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 12/01/2019 to submit evidence of use of the earlier trade mark. On 12/03/2019, within the extended time limit granted by letter dated 14/01/2019, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Exhibit 1 (a-o): Screenshots from the opponent´s website showing content from two separate dates in the years 2015, 2016 and 2017 respectively. WARRIOR products are clearly displayed and six EU countries are listed among those in respect of which the products displaying the mark in question may be ordered or purchased. Exhibit 1 (g-o) shows further versions of such screenshots every year from 2014 to 2017 inclusive (retrieved using WayBackMachine).

• Proof of participation in major trade fairs/exhibitions in consecutive years between 2012 and 2017 together with yearly invoices to a Hungarian company and to one Cypriot company, each invoice being to a value of between 5 and 20,000 euros for the branded products ie boots and shoes numbering in the hundreds or thousands for each invoice.

• (Summary of data relating to) annual sales figures covering the relevant period in several EU countries for products bearing the mark including details of large quantities shipped to the Czech Republic, Hungary and the UK for each consecutive relevant year and showing considerable sales growth in the Netherlands in 2017 and notable sales volumes in Germany, Belgium and Cyprus within more specific periods.

• Samples of products bearing the marks from throughout the relevant period.

• Evidence that the products bearing the brand in question are certified by German and UK certification companies from the relevant period verifying the suitability of the products for EU consumption.

When assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place, time and extent

The evidence as a whole shows that the goods in question are made available for EU distribution. The opponent has provided photographic and documentary evidence of having attended significant trade fairs throughout the relevant period within the relevant territory e.g France and Germany. The photographs in particular show the brand name and a selection of the all-terrain footwear products in question.

The opponent has also exhibited yearly invoices (particularly but not exclusively) to an entity in Hungary throughout the relevant period. All of the invoices reflect significant amounts in euros for the branded footwear. Therefore, the evidence prima facie relates to the relevant territory and is corroborated by the applicant’s website screenshots and the EU certification evidence (CE). In this context, the opponent’s data relating to its significant annual sales figures for products bearing the mark to the Czech Republic, Hungary and the UK and showing considerable sales in countries such as the Netherlands, Germany, Belgium and Cyprus within the relevant period, may be deemed to be persuasive evidence that the mark was continuously used in the EU for the goods in question during the relevant time/frame.

Said documents provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the mark WARRIOR for footwear in order to deduce that the use of the mark is genuine.

Nature

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).

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the invoice evidence in particular shows use of the sign as a brand name in relation to gents (gentlemen´s) footwear i.e boots and shoes (and not athletic footwear, such as trainers, for example, or sneakers and basketball shoes, as correctly specified in the limitation). The photographic evidence displays get up or packaging which shows the sign in conjunction with figurative elements which do not detract from the distinctiveness of the word WARRIOR in relation to modern footwear. Although such footwear may be suitable for women and children too, the invoices make specific reference to the fact that the footwear is for men (gents). In those circumstances, the Opposition Division is not satisfied that the opponent has shown use of its products for women and children too.

Therefore, the evidence shows that the mark has been used in accordance with its function and as registered for shoes and boots for men excluding athletic footwear, sneakers and basketball shoes.

Conclusion

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25: Shoes and boots for men excluding athletic footwear, sneakers and basketball shoes.

Therefore, the Opposition Division will consider the abovementioned goods in its further examination of the opposition.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.

The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(b) EUTMR.

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it 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 protected.

The signs are identical word marks (WARRIOR). The opponent´s shoes and boots for men excluding athletic footwear, sneakers and basketball shoes include the contested footwear none for use relating to wrestling. Therefore, the goods are identical too and the opposition is successful.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Birgit FILTENBORG

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.