OPPOSITION Nо B 3 086 686

 

Brütting & Co. EB-Sport-International GmbH, Weinbergstr. 10, 96328 Küps, Germany (opponent), represented by Heinrich Meyer, Bahnhofstr. 33, 96231 Bad Staffelstein, Germany (professional representative) 

 

a g a i n s t

 

Tomasz Stefański, Polna 20, 96200 Rawa Mazowiecka, Poland (applicant), represented by Maciej Marian Priebe, Ul. Grzybowska 45, 00-844 Warszawa, Poland (professional representative).

On 31/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 086 686 is rejected in its entirety.

 

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

 

REASONS

 

On 19/06/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 025 705 (figurative mark), namely against some of the goods in Class 25 and all the services in Class 35. The opposition is based on European Union trade mark registration No 3 675 741 (figurative mark). The opponent invoked Article 8(1)(a) and (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.

The date of filing of the contested application is 20/02/2019. 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 20/02/2014 to 19/02/2019 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 and services on which the opposition is based, namely the following:

Class 25: Shoes, ankle boots, boots, shoe soles, insoles, clothing, caps, hats, hoods, headbands, gloves, jackets, Tshirts, stockings, belts, knitwear, sweaters, coats, jumpers.

Class 35: Business management and organisation consultancy, business management consultancy, professional business consultancy, professional business and organisational consultancy, business information, advertising, presentation of goods and services.

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 21/05/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 26/07/2020 to submit evidence of use of the earlier trade mark. On 20/07/2020 and 23/07/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Annexes 1-2: catalogues for footwear for spring-summer 2017 and autumn-winter 2017, showing the sign at issue, as , on the front page of the catalogues. The earlier mark depicted as, for example, , , , or is visible on outer parts of some shoes and the sign represented, as and is depicted in the upper right corner of some pages of the catalogues.

 Annex 3: order form (undated, although the opponent argues it refers to 2017) showing the following signs depicted in its upper right part .

 Annexes 4-5: catalogues for footwear for spring-summer 2018 and autumn-winter 2018, showing the sign at issue, as , on the front page of the catalogues. The earlier mark depicted as, for example, , , , or is visible on outer parts of some shoes and the sign represented as and is depicted in the upper right corner of some pages of the catalogues.

 Annexes 6-13: invoices, issued by Deutsche Post Business Services and by WVD Services GmbH to Geka-Sport GmbH, dated between 01/07/2017 and 26/01/2018, referring to ‘Geka’ catalogues for spring-summer 2018 and autumn-winter 2018.

 Annexes 14-16: screenshots of www.bruetting-diamond-brand.com (undated), showing various items of clothing and footwear (T-shirts, sweaters, caps, sport shoes). The mark at issue is not visible, only on some of the shoes the rhombus-like shape is visible, as .

 Annexes 17-19: screenshots of www.bruetting-diamond-brand.com, showing an overview of orders from the online shop for the calendar year 2016. There is no reference to the goods the orders concern nor the earlier mark at issue.

 Annex 20: an undated picture of a sport shoe bearing the sign at issue, as . According to the information in the opponent’s submission it refers to the ‘Astroturfer’ shoe model.

 Annexes 21-24: invoices, issued by AWC Footwear - Adolf Werner GmbH to Brütting & Co. EB Sport International GmbH, dated between 2014 and 2016. They refer to ‘Astroturfer’ product.

 Annex 25: an invoice, issued by the opponent to a client in Germany, dated 27/01/2015, concerning 46 pairs of ‘Astroturfer’, amounting to EUR 3.725,60. The earlier mark is displayed on the top left of the invoice, as .

 Annex 26: an undated picture of a sport shoe. The sign at issue is not visible but only the rhombus-like shape, as . According to the information in the opponent’s submission, it refers to the ‘Marathon’ shoe model.

 Annexes 27-29: invoices, issued by AWC Footwear - Adolf Werner GmbH to Brütting & Co. EB Sport International GmbH, dated between 2014 and 2017. They refer to ‘Marathon’ product.

 Annex 30: an invoice, issued by the opponent to a client in Germany, dated 12/08/2016, concerning 11 pairs of ‘Marathon’ product, amounting to EUR 718,25. The earlier mark is displayed on the top left of the invoice, as .

 Annex  31: an undated picture of a sport shoe bearing the sign at issue, as. . According to the information in the opponent’s submission, it refers to the ‘Road Runner’ shoe model.

 Annexes 32-34: invoices, issued by AWC Footwear - Adolf Werner GmbH to Brütting & Co. EB Sport International GmbH, dated between 2014 and 2017. They refer to ‘Road Runner’ product.

 Annex 35: an invoice, issued by the opponent to a client in Germany, dated 19/10/2015, concerning 2 pairs of ‘‘Road Runner’ and 1 pair of ‘Astroturfer’ products, amounting to EUR 245,51. The earlier mark is displayed on the top left of the invoice, as .

 Annexes  36-37: two undated pictures of T-shirts bearing the sign at issue, as and .

 Annexes  38-39: two invoices, issued by Merz b. Schwanen to Brütting & Co. EB Sport International GmbH, dated between 2016 and 2017, concerning T-shirts and sweaters. There is no reference to the mark at issue.

 Annexes 40-42: three invoices, issued by the opponent to clients in Germany, dated 03/07/2014, 16/10/2015 and 17/06/2016, concerning T-shirts, referred as ‘Brütting T-shirt ‘IRONMAN’ ‘XXL’. The invoices refer in total to four T-shirts. The earlier mark is displayed on the top left of the invoices, as .

 Annex 43: an undated picture of a cap; the sign displayed is illegible.

 Annex 44: an invoice, issued by Werc to Geka-Sport GmbH, dated 04/11/2016, concerning beanies. There is no reference to the mark at issue.

 Annex 45: an invoice, issued by Gebr. Klein GmbH to Brütting & Co. EB Sport International GmbH, dated 28/07/2016, concerning the trade fair stand for ‘122.GDS Düsseldorf’. There is no reference to the mark at issue.

 Annex 46: an invoice, issued by Go Green Design S.R:L. to Brütting & Co. EB Sport International GmbH, dated 19/11/2018, concerning ‘stand decoration for 91 Expo Riva Schuh – January 2019’. There is no reference to the mark at issue.

 Annexes 48-54: undated pictures of a footwear fair stands. The earlier mark is displayed on the stand´s walls, as .

 Annex 55: an undated picture of pens, displaying the mark at issue, as .

 Annex 56: an invoice, issued by the opponent to a client in Germany, dated 05/03/2014. According to the information in the opponent’s submission, they concern pens. There is no indicated price of the goods nor the total amount of the invoice. The earlier mark is displayed on the top left of the invoice, as .

 Annex 57: a plexiglas displaying the sign as .

 Annex 58: an invoice, issued by J.S. Wasikowski GmbH & Co. EB to Geka Sport GmbH, dated 27/01/2017. According to the information in the opponent’s submission, they concern plexiglas. There is no reference to the mark at issue.

 Annex 59: an undated picture of footwear. The sign is displayed on the wall of the shop.

 Annex 60: an invoice, issued by Schreinermeister TIM Fleischmann Co. EB to Brütting & Co. EB Sport International GmbH, dated 06/03/2014. According to the information in the opponent’s submission, they concern ‘goods carriers’. There is no reference to the mark at issue.

 Annex 61: a good carrier, according to the information in the opponent’s submission, showing the sign as .

 Annex 62: an undated picture of footwear bearing the mark at issue, as . The shop stand show the following sign .

 Annexes 63-64: an invoice, issued by Eremit Display to Geka-Sport GmbH, dated 14/02/2017 and 27/06/2017. According to the information in the opponent’s submission, they concern ‘goods carriers’. There is no reference to the mark at issue.

 Annex 65: an undated picture showing the sign in its upper part.

 Annex 66: an invoice, issued by Eremit Display to Geka-Sport GmbH, dated 30/04/2018. According to the information in the opponent’s submission, they concern ‘operator outdoor’. There is no reference to the mark at issue.

 Annex  67: an undated picture of a cotton bag bearing .

 Annex 68: an invoice, issued by AWC Footwear - Adolf Werner GmbH to Brütting & Co. EB Sport International GmbH, dated 19/10/2016. They concern cotton bags. There is no reference to the mark at issue.

 Annexes 69-70: two undated pictures of a sport bag bearing .

 Annexes 71-72: an invoice, issued by Tosa Sportartikel KG to Brütting & Co. EB Sport International GmbH, dated 14/02/2014, concerning bags. There is no reference to the mark at issue.

 Annexes 73-74: an undated pictures of shoe boxes bearing .

Assessment of the evidence

According to Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the contested trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements. The sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The Opposition Division finds it appropriate to begin the assessment in relation to the factor of extent of use.

Regarding the extent of use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, as well as the frequency of those acts, on the other (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

When assessing whether use of the trade mark is genuine, regard must be taken of all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38).

The requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (16/06/2015, T‑660/11, POLYTETRAFLON / TEFLON, EU:T:2015:387, § 44).

Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22). Genuine use implies real use of the mark on the market concerned for the purpose of identifying goods or services. Genuine use is, therefore, to be regarded as excluding minimal or insufficient use for the purpose of determining that a mark is being put to real, effective use on a given market.

As regards the invoices submitted as annexes 21-24, 27-29 and 32-34, it must be stated that they concern the sale of footwear to the opponent, not the sale of footwear with the trade mark at issue to end consumers. The only fact proven by those invoices is that these goods were sold to the opponent, but they do not prove the opponent’s own sales of the same. This is in particular, taking into account that from the evidence submitted, such as the catalogues, it can be seen that the opponent owns several trade marks for shoes, for example and . Therefore, this evidence cannot prove that the goods as shown in these invoices and sold to the opponent by the third party were subsequently sold by the opponent under the mark at issue. These materials only show the existence on the market of this third party’s commercial activity. Therefore, it is not suitable for proving the opponent’s external use (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 50).

Similarly, the invoices concerning sale of clothing (annexes 38 and 39), refer to sale of these items by the third party to the opponent, but they do not prove the opponent’s own sales of the same under the mark at issue to end consumers. Furthermore, from this evidence it cannot be assumed by mere supposition that those goods were actually re-sold by the opponent under the mark at issue, since the invoices concerning sale of clothing items by the opponent to end consumers (annexes 40-42), do not refer to the earlier mark at issue, but they contain the following indication only: “‘Brütting T-shirt ‘IRONMAN’ ‘XXL’”. In addition, the invoice referring to the sale of beanies (annex 44) refers to sale of these goods by third party not to the opponent, but to another entity, namely Geka-Sport GmbH.

The fact remains that the use must be public, that is to say it must be external and apparent to actual or potential customers of the goods or services. The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). Therefore, the above invoices issued to the opponent are not relevant for showing that the mark has been used publicly and outwardly on the market and has been offered for sale to customers by the opponent.

Further, the opponent submitted three invoices issued to end consumers, showing that a very limited number of products, namely 60 pairs of footwear, were sold during the relevant period, for a total sum of almost EUR 4.000 (annexes 25, 30 and 35). The evidence submitted in annexes 17-19 and referring to an overview of orders from the online shop for the calendar year 2016 cannot be taken into account, as there is lacking information as the goods they concern and the mark at issue. Further, as to the screenshots of the Internet website (annexes 14-16), they show that items of clothing and footwear (T-shirts, sweaters, caps, sport shoes) have been offered for sale to the public. However, the mere presence of a trade mark on a website is, of itself, not sufficient to prove genuine use. The further evidence submitted does not allow to conclude that the orders were made for the relevant goods bearing the mark at issue.

In this regard, it has to be evaluated whether, in view of the nature of the goods and the relevant market, that small turnover and the very modest quantities of articles sold over the relevant period allow the conclusion to be drawn that there was genuine use of the earlier mark.

These invoices refer to articles, which are goods of everyday consumption, they are not, therefore, specialised goods, sold in a narrow market, but goods to be sold to a large number of consumers through the relevant territory. The total amount of transactions over the relevant period is so token as to indicate that, in the absence of supporting documents or convincing explanations to demonstrate otherwise, the use of the earlier mark cannot be held to be warranted, in the economic sector concerned and taking account of the nature of the goods concerned, for the purpose of maintaining or creating market shares for the goods protected by the earlier word mark (21/06/1999, No B 70 716).

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37). It does not mean that the proprietor has to reveal the entire volume of sales or submit a copy of all invoices issued during the relevant period. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed (11/05/2006, C‑416/04 P, Vitafruit, EU:C:2006:310, § 72).

The remaining evidence, in particular the catalogues (annexes 1, 2, 4 and 5), does not convincingly prove that use of the trade mark has taken place to an extent which would amount to genuine use. It is true that under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). In the present case, it must be observed that the catalogue excerpts, which could have supported the information about sales of products under the mark at issue and provided proof of the extent of the use of the earlier mark, have not, however, been coupled with any additional information about the number of stores where the catalogues were distributed and in which circulation numbers. It is noted that the invoices submitted in annexes 6-13 do not refer to the opponent’s catalogues, but to “‘Geka’ catalogues for spring-summer 2018 and autumn-winter 2018”. Also, these invoices were issued to Geka-Sport GmbH, and the opponent did not indicate any link between itself and the aforementioned company. The pictures of footwear, shoe boxes and the shops displays including the trade mark do not, as such, give any indications concerning the extent of use of the mark at issue on the market either. Further, showing that the opponent exhibited at a fair by providing pictures of the sign on the stands’ walls (but not indicating any use of the trade mark at issue on the relevant goods) cannot add to demonstrate extent of use. These materials cannot prove the provision of goods to potential clients or distributors, nor can they prove the number of sales or contracts made for the relevant goods, that would allow the Opposition Division to extract objective information about the extent of use of the mark.

Further, the opponent’s submission that the documents submitted in particular in annexes 45-54 prove use of the sign for advertising in Class 35 do not find support in the evidence submitted. The mere fact that the opponent’s mark appears on promotional items (such as pens, as shown in annexes 55 and 56) or that the opponent took part in trade fairs, and providing pictures of exhibition stands and invoices from third parties for decorating the exhibition stand for the opponent, do not amount to genuine use in relation to advertising nor other services of Class 35. The services covered in Class 35 comprise economic activities provided to third parties. Advertising one’s own goods is not a service but running an advertising agency (designing advertising campaigns for third parties) is. These materials only prove the existence on the market of third parties’ commercial activities. Furthermore, contrary to the opponent’s claim, depicting the sign at issue on the invoices and order forms does not either prove use of the mark for the services in Class 35. Therefore, since this evidence does not demonstrate that the services of Class 35 were provided by the opponent to third parties, they are not a suitable evidence to prove use of the opponent’s services.

Although the opponent has a free choice of the means of proving the extent of use (08/07/2004, T 203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark in the relevant territory at least to an extent sufficient to dispel any possible belief that this use might be merely internal, sporadic or token. The materials listed above do not alone enable the Opposition Division to determine genuine use of the trade mark in the relevant territory. It is pointed out that the methods and means of proving genuine use of a mark are unlimited, and the above finding that genuine use has not been proven in the present case is not due to an excessively high standard of proof (15/09/2011, T 427/09, Centrotherm, EU:T:2011:480, § 46).

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 for which it is registered, in order to create or preserve an outlet for those goods. 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).

As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil any of the conditions means that genuine use has not been proved. As extent of use of the mark for the goods and services for which the mark is registered has not been established, it is not necessary to discuss the other requirements.

In view of all the above and an overall assessment of the evidence submitted, the opponent cannot be deemed to have proven, to the requisite legal standard, the extent of the use of the earlier mark. The evidence, in its entirety, does not allow the Opposition Division, without resorting to probabilities, speculations or presumptions, to establish that there was genuine use of the earlier mark in the European Union within the relevant period for the relevant goods and services (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43). Therefore, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

 

 

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

 

 

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

 

 

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.