OPPOSITION Nо B 3 121 995

Sealup S.R.L., Piazza Sant’ Ambrogio 1, 20123 Milano, Italy (opponent), represented by Hoffmann Eitle S.R.L., Piazza Sigmund Freud, 1 – Torre 2 – Piano 22, 20154 Milano, Italy (professional representative)

a g a i n s t

Yongkang Lanka Fitness Equipment Co., Ltd., 2 F, No. 3, Bldg. 6, Lane 123, Jiuzhou West Rd., Dafenshan Village, Yongkang, Jinhua, Zhejiang, China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª Planta, 28050 Madrid, Spain (professional representative).

On 08/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 995 is rejected in its entirety.

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

REASONS

On 21/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 173 218 (figurative mark)namely against all the goods in Classes 12 and 28. The opposition is based on Italian trade mark registration No 2 015 000 043 708 ‘SEALUP’ (word mark). The opponent invoked Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Italy.

Reputation 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 contested trade mark was filed on 02/01/2020. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Tailor-made clothing.

The opposition is directed against the following goods:

Class 12: Locomotives; bicycles; pushchairs; mopeds; vehicle wheels; bicycle tyres; push scooters [vehicles]; electric vehicles; mobility scooters; motorcycles.

Class 28: Toys; scooters [toys]; badminton rackets; fishing tackle; table tennis bats; wrist guards for athletic use; body-training apparatus; machines for physical exercises; dumbbells for weight lifting; barbells for weight lifting; swimming pools [play articles].

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 12/01/2021 the opponent submitted the following evidence:

 list of all ‘SEALUP’ trade marks in Italy, the European Union and international registrations designating the European Union;

 copy of the first trade mark application for ‘SEALUP’, which is the trade mark on which the opposition is based;

 copy of some publications, prints, advertisements and pictures belonging to the historic archive of the company ‘SEALUP’ from 1941 to 2006, including some brochures and official documents dated from 1941 to 1991, 1962, 1966, 1978, 1996 and 2006, all showing use of the earlier mark ‘SEALUP’ in connection with clothing;

 copies of considerable press coverage, press reviews, press releases and advertisements in famous Italian and international daily newspapers and monthly fashion magazines such as Elle, Cosmopolitan, Vanity Fair, etc., all demonstrating the use of the earlier mark ‘SEALUP’, and published between 2008 and 2020. One of the publications, dated 2013, concerns an award given to SEALUP for the best jacket design.

The opponent also gave a brief history of the company and described its evolution from 1935 to the present day. It also referred to the collaboration of ‘SEALUP’ with the reputed fashion designer Karl Lagerfeld and submitted pictures (document dated 2014) to demonstrate this. These included a picture of Jacqueline Kennedy Onassis, the former first lady of the United States, wearing this special collection of clothes.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

The evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public.

From the information provided, it can be seen that the mark has sometimes been featured alongside fashion industry greats such as Karl Lagerfeld, Bailly, Coccinelle and Emporio Armani among others and it can be determined that the items protected under the mark belong to the luxury end of the scale. Nonetheless, there are only a handful of such instances and even then the reputation of the mark itself must be proved and the question of reputation implies a ‘certain degree of knowledge of the earlier mark among the public’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408). The Court has also concluded that this must be assessed principally on the basis of quantitative criteria to ensure that a significant part of the public knows the earlier mark ((14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22, 23; 25/05/2005, T‑67/04 Spa-Finders, EU:T:2005:179, § 34). It is also worth noting that despite showing that the opponent’s goods are luxury items, the relevant public is still the general public (29/05/2012, R 1659/2011‑2, KENZO /KENZO). Moreover, as mentioned above there is evidence showing that Jacqueline Kennedy Onassis also wore clothes under the brand ‘SEALUP’. However, this was in 1960, a long time ago, and therefore it has a reduced impact on the evaluation of reputation of the earlier mark on the relevant date of the contested application.

Considering the above, the evidence is flawed since the relevant public’s level of awareness cannot be determined, nor is there any information concerning the market share held by the mark or the intensity of use. There is no information concerning sales volume. The press articles do not refer to the ‘status’ of the brand as such, they mainly feature clothing under the brand and do not make reference to the brand as being reputed or as having a leading position in the market for clothing. The opponent has not provided almost any evidence of certifications or awards or made reference or evidenced its inclusion in any famous brands’ materials and there is nothing from which the value associated with the mark can be deduced.

As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public or, indeed, that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR 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, 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

Richard BIANCHI

Cristina CRESPO MOLTO

Frédérique SULPICE

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.