CANCELLATION No C 41 965 (INVALIDITY) 

 

Diesel S.P.A., Via dell'Industria 4-6, 36042 Breganze (VI), Italy (applicant), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

 

a g a i n s t

 

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (EUTM proprietor), represented by SKW Schwarz Rechtsanwälte, Kurfürstendamm 21, Neues Kranzler Eck, 10719 Berlin, Germany (professional representative).

On 20/04/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is rejected in its entirety.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

REASONS

 

On 05/03/2020, the applicant filed a request for a declaration of invalidity against all the goods covered by the European Union trade mark registration No 18 187 200 ‘Joggjeans’ (word mark), (the EUTM), namely against clothing in Class 25. The application was based on two non-registered trade marks, both for the word sign ‘JOGGJEANS’, claimed to have been used in the course of trade of more than mere local significance in the United Kingdom and Italy, respectively, in relation to clothing. The applicant invoked Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

A. SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant submitted written observations and evidence in support of its application on 05/03/2020, 06/03/2020 and 10/09/2020.

In essence, it provides information on the creation of the ‘JOGGJEANS’ trade mark. In particular, it is shown that in 2011 Diesel created a new fabric and denim concept called ‘JOGGJEANS’. The collection distinguished by said sign was launched for the season 2011 and included ‘a wide range of trousers and jackets made with a special family of fabrics exclusively developed in partnership with denim specialist ISKO’. The applicant contends that ‘JOGGJEANS products are characterised by special material and garment design combining the denim fabric’s ruggedness with a sweatshirt material characterised by comfort and softness’ and that ‘in view of such special characteristics, the ‘JOGGJEANS’ collection had immediate success and the ‘JOGGJEANS’ trade mark was widely known by the relevant public since 2011’.

The applicant submits that the trade mark ‘JOGGJEANS’ has been used in the course of trade of more than mere local significance in Italy and respectively the UK and widely promoted in the respective territories, before the priority date of the contested EUTM and respectively the date of filing the invalidity application. It describes the contents of the evidence adduced to prove use of its non-registered marks and claims that pursuant to the Italian and UK national laws, the applicant has an earlier right as referred to in Article 8(4) EUTMR enabling it to prohibit the use of the contested EUTM. It further refers to the applicable legal provisions under the Italian and UK national laws, analysing in detail the respective requirements and concludes that the contested EUTM has to be cancelled pursuant to Article 60(1)(c) in conjunction with Article 8(4) EUTMR.

On 05/03/2020 and 06/03/2020 applicant filed the following evidence:

 Annex 1: Affidavit given on 06/02/2020 by Mr S.I., acting as Head of Legal Affairs of Diesel S.p.A.. The document provides information on: (i) the ‘JOGGJEANS’ products (‘characterised by the combination of the denim fabric with a more comfort and soft material’), (ii) the ‘JOGGJEANS’ collection (which ‘includes a wide range of trousers and jackets and was launched on the market in 2011’) and (iii) the turnover in EUR and the volume of sales during the period July 2011 to December 2019 with reference to ‘JOGGJEANS’ products, in the whole of the EU, in Italy and the UK respectively. With particular reference to Italy, the evidence shows the following quantity and turnover of sales:

 Annex 2a: A large selection of invoices issued by Diesel Italia S.p.A. or Diesel Italia S.R.L. between October 2011 and January 2019 and addressed to customers located in Italy (Arezzo, Milan, Rome, Lucca, Macerata, Trento, Varese, Treviso, etc.). The documents feature at the top the signs / and evidence the sale of clothing articles, identified by a product code, a description and various signs, such as for example ‘FAYZA L.32 PANTALONI’, ‘TEPPHAR L.32 PANTALONI’, ‘KROOLEY L.32 PANTALONI’, ‘THAVAR L.32 PANTALONI’, ‘WAYKEE-NE Sweat jeans’, ‘L-MARLENE GIACCA’, ‘FAYZA-N.E. Sweat jeans’, ‘GRACEY-NE Sweat jeans’, ‘GRACEY L.32 PANTALONI’, ‘KROOLEY-N.E. Sweat jeans’, ‘TEPPHAR-NE Sweat jeans’, etc.. The sign ‘JOGGJEANS’ appears only three times in an invoice of 29/01/2019 (to a client in Vicenza) in connection with ‘THOMMER CB-NE Sweat jeans’ – Rif. Tes. ‘JOGGJEANS CONTOVENDITA’ and ‘D-KROOSHORT-NE CALZONCINI’ - Rif. Tes. ‘JOGGJEANS CONTOVENDITA’. In addition, there is one invoice of 31/03/2015 (to a client in Rome) which itemises, inter alia, goods described as ‘JOGG-X Sweat jeans’.

 Annex 2b: A large selection of invoices issued by Diesel London Ltd between June 2011 and February 2019 and addressed to customers located in the UK (London, Brighton, Leicester, Northern Ireland, Glasgow, Essex, etc.) and Ireland (Cork). The documents feature at the top the signs / and evidence the sale of clothing articles, identified by a product code, a description and various signs, such as for example ‘KROOLEY-N.E. Sweat jeans’, ‘TEPPHAR-N.E. TROUSERS’, ‘JUZICON Sweat jeans’, etc. The sign ‘JOGGJEANS’ is not featured in any of the invoices. There is one invoice of 03/08/2015 (to a customer in West Midlands) which contains a reference to ‘AW15 Main Jogg Add’ in connection with goods described as ‘THAVAR -NE Sweat jeans’.

The applicant explains in its observations that the invoices filed in Annexes 2a and 2b refer to clothing items having the name-codes of the ‘JOGGJEANS’ collection, the main name codes being: ‘Tepphar’, ‘Krooley’, ‘Tintsie’, ‘Stapphy’, ‘Fayza’, ‘Faithlegg’, ‘Sonora’, ‘Grupee’, ‘Narrot’, ‘New Tepphar’, ‘Thavar’, ‘Waykee’, ‘Juzicon’, ‘Elshar’, ‘Kroshort’, ‘Eazee’, ‘Fringi’, ‘Marlene’, ‘Ruine’, ‘Dudu’, ‘Sprizzy’, ‘Jeomp’, ‘Isi’, ‘Sleenker’, ‘Bhonzer’, ‘Spender’, ‘Trackley’, ‘Doris’, ‘Zeppel’, ‘Run X’, ‘Krailey’, ‘Jiret’, ‘J-Dan’, ‘Jampet’, ‘Jeide’, ‘Kerbi’, ‘Prika’, ‘Belthy’, ‘Bakari’ and ‘Gracey’.

 Annex 3: Selection of internet printouts (from amazon.co.uk, diesel.com, denimblog.com, amazon.es, lyst.co.uk, amazon.fr, amazon.es, list.ca, baersden.com, etc.), retrieved in January 2020 and showing items of ‘Diesel’ clothing (mainly jeans for men and women and also denim jackets and shorts for men and women, men shirts and women jumpsuit overalls and dresses) identified by the name codes listed above, such as for example , , , , or . The same annex further includes an article of 26/01/2011 titled ‘Diesel creates Jogg-Jeans’, published on fashionunited.com and reporting on Diesel having presented during ‘Bread & Butter’ Berlin a new model called the jogg-jeans, which is a combination of a sweatpants and jeans. It is further stated that Diesel describes the jogg-jeans as a ‘electrifying new hybrid product range’ that combines denim and sweat fabric. The woven fabric has a jersey feel to it with 360^o of elasticity. The rotating weave techniques keep the fabric light and soft. The indigo colouring of the trousers give the illusion of a denim on the outside and sweatlook on the inside. The jogg-jeans will be available at Diesel stores across the globe from July 2011 for both men (Krooley) and women (Tintsie).

 Annex 4: Selection of historical screenshots obtained via the WayBackMachine, showing the website www.diesel.com between 2011 and 2019 and displaying references to ‘JOGGJEANS’.

 Annex 5a: Selection of cuttings from the Italian press and blogs dated between March 2011 and March 2018 and mentioning ‘Diesel’ and ‘JOGGJEANS’. Each document bears at the top an internal indication of the source and date, which in some cases are not corroborated by the evidence itself.

 Annex 5b: Selection of cuttings from UK press and blogs dated between 2011 and 2015 and mentioning ‘Diesel’ and ‘JOGGJEANS’. The same annex further includes a series of screenshots related to the USA and mentioning ‘Diesel’ and ‘JOGGJEANS’.

 Annex 6: Copy of the Italian Industrial Property Code (the ‘IPC’), document in Italian language.

 Annex 7: The English translation of the IPC.

 Annex 8: Extract from the Italian Civil Code (document in Italian language).

 Annex 9: Extract from Halsbury’s Laws of England/Trade Marks and Trade Names on the elements of the action for passing off.

 Annex 10: Extracts from a book (‘UK Kerly’, according to the applicant) detailing, inter alia, the protection of an unregistered trade mark – passing off and related rights and relative grounds for invalidity.

In its further submissions of 10/09/2020, the applicant rebuts the EUTM proprietor’s claims (see more on this further down below under ‘The case for the EUTM proprietor’ subsection) on the insufficiency of the evidence of use or the non-existence of prior exclusive rights to ‘JOGGJEANS’ under the Italian and respectively UK laws and maintains that the contested EUTM should be invalidated in its entirety. The applicant also submitted as Annex 11 extracts from DE JURE database (the official Italian case law database) concerning applicable jurisprudence (i.e. Tribunale Milano Sez. Proprieta' Industriale e Intellettuale, 02/05/2013, n.6095, Tribunale Roma Sez. Proprieta' Industriale e Intellettuale, 28/12/2006 and respectively Tribunale Milano Sez. spec. Impresa, 23/02/2016, n.2344) together with partial English translations thereof.

The case for the EUTM proprietor

 

The EUTM proprietor filed written observations on 26/06/2020 and 27/11/2020, respectively. In essence, it requests the dismissal of the invalidity application, since in its opinion the applicant failed to prove the existence of any prior national rights under the Italian and/or UK laws. While the applicant may have presented a kind of trousers combining denim jeans and jersey sweatpants material at the fashion event ‘Bread & Butter’ in Berlin in January 2011, it has not promoted products labelled with the designation ‘JOGGJEANS’ until the fall/winter campaign 2013. Hence, according to the EUTM proprietor, the general public, neither in Italy nor in the UK, could perceive the sign ‘JOGGJEANS’ in the course of trade in a way and to the extent required to establish a right under to Article 8(4) EUTMR before the priority date of the contested EUTM (i.e. 20/02/2013).

The proprietor provides certain background information on the contested EUTM in the present proceedings. It shows that on 23/01/2020, WIPO partially deleted clothing in Class 25 from the proprietor’s IR No 1 180 919 designating the EU. Pursuant to Article 204 EUTMR, the proprietor transformed this ‘deleted IR’ into a EUTM for clothing, invoking the German priority of 20/02/2013. Therefore, the contested EUTM (which was registered on 11/02/2020) must be treated as if it had been filed with the date of the IR, including its priority claim of 20/02/2013.

With particular reference to the non-registered mark ‘JOGGJEANS’ in Italy, the EUTM proprietor further contends that the applicant has not provided any evidence that would constitute a well-known and intensive reputation among a large proportion of the Italian public in the sense of Art. 12(1)(a) IPC before the priority date of the contested mark. The proprietor shows that from the evidence filed by the applicant it is unclear which intensity and scope of use of a sign is enough to constitute a trade mark pursuant to Article 12(1)(a) IPC, whether reputation is required or whether only a notoriously known trade mark is protected and therefore the application must be rejected in its entirety without further examination. The proprietor refers to the Office’s ‘Manual on Article 8(4) CTMR’, to previous Office decisions and ruling of Italian courts and claims that for the establishment of a marchio di fatto pursuant to Article 12(1)(a) IPC, it is required ‘a well/known and quite intensive reputation within the territory of Italy’.

The EUTM proprietor further contends that Article 2958 of the Italian Civil Code is not eligible under Article 8(4) EUTMR since it refers to an actual situation of unfair competition which arises from the way both signs are used on the market, whereas what is examined under Article 8(4) EUTMR is rather an abstract likelihood of confusion stemming from identity/similarity between the earlier (used) sign and the contested mark applied for and the earlier (used) goods and services and the contested goods applied for and refers in support of its claims to a previous decision of EUIPO’s Opposition Division taken on 14/04/2020 in case B 3 075 627.

It is further shown that the applicant did neither advertise nor sell ‘JOGGJEANS’ goods extensively between 2011 and 20/02/2013, so that the intensive notoriety required for a non-registered mark (‘marchio di fatto’) could have been achieved in Italy. Moreover, the applicant has not provided any information on its advertising expenditure, however the EUTM proprietor knows from the numerous other proceedings between the parties that the applicant admitted not having spent any budget at all in 2011 and 2012 in Europe for the marketing of ‘JOGGJEANS’. The applicant also failed to give any evidence for the circulation of the cited newspapers and privately operated fashion blogs. The EUTM proprietor further submits that under the Italian law a marchio di fatto must have all the characteristics of a registered trade mark, i.e. it must be distinctive. The sign ‘JOGGJEANS’ is, however, highly descriptive for the product sold by the applicant, which is a mix of a pair of jeans and a pair of jogging pants. In addition, several IP Offices in the EU decided that the sign ‘JOGGJEANS’ is descriptive for and lacks distinctive character in relation with clothing in Class 25.

The EUTM proprietor made available evidence in support of its claims (annexes P1 to P2 filed on 26/06/2020 and annexes P3 to P13 filed on 27/11/2020), whose contents can be summarised as follows:

 Annex P1: Screenshots of popsop.com containing an article of 09/10/2013 reporting on Diesel rolling out a campaign to push ‘Jogg Jeans’. The document states that ‘the lineup of the jeans modified with the soft fabrics touch to fit the active lifestyles was silently introduced back in 2011, but it’s the first time Diesel actually speaks loudly about this innovation’.

 Annex P2: Screenshots of videos on www.youtube.com and promotional adverts related to Diesel’s advertising campaign Fall/Winter 2013 for ‘JOGG JEANS’.

 Annexes P3 to P6: Four decisions taken by the Italian Courts (Bologna and respectively Bari Tribunal) on the protection of non-registered marks (so called ‘de facto trade marks’) under the Italian law (documents in Italian, accompanied by English translations).

 Annexes P7 to P9: Three decisions taken by the French, Austrian and respectively German Property Offices and refusing the registration of the sign ‘JOGGJEANS’¹ for, inter alia, clothing in Class 25 since it was descriptive and devoid of any distinctive character for such goods (documents in French and German, accompanied by English translations).

 Annex P10: Affidavit of 12/04/2019 given by the applicant’s Legal Counsel as handed in the proceedings before the Regional Court of Düsseldorf, Germany (2a O 223/18) and showing, inter alia, that according to the information provided by Diesel’s accounting department no direct marketing investments in the EU for ‘JOGGJEANS’ products were made in the years 2011 and 2012 respectively.

 Annex P11: Same documents as already filed on 26/06/2020 under Annex P2.

 Annex P12: Screenshots from the applicant’s website (https://de.diesel.com) showing that two of the models claimed by the applicant as being part of the ‘JOGGJEANS’ collection (i.e. ‘Fayza’ and ‘Tepphar’) are not used exclusively for ‘JOGGJEANS’ goods but also for regular jeans and trousers.

 Annex P13: An article titled ‘Passing Off Claims: Intellectual Property Rights (defences, remedies, business reputation)’ published on https://hallellis.co.uk.

 

B. NON-REGISTERED MARK ‘JOGGJEANS’ USED IN THE COURSE OF TRADE IN THE UNITED KINGDOM ─ ARTICLE 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR

 

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the United Kingdom non-registered trade mark ‘JOGGJEANS’ no longer constitutes a valid basis of the application for invalidity.

 

The application must therefore be rejected as far as it is based on this earlier right.

C. NON-REGISTERED MARK ‘JOGGJEANS’ USED IN THE COURSE OF TRADE IN ITALY ─ ARTICLE 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR

 

According to Article 60(1)(c) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier right, as referred to in Article 8(4) EUTMR, and the conditions set out in that paragraph are fulfilled.

 

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 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 60(1)(c) EUTMR in conjunction with 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;

 

 pursuant to the law governing it, prior to the filing or the priority date of the contested trade mark, the applicant must have acquired rights to the sign on which the invalidity action 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 must be fulfilled in respect of the contested trade mark.

 

The abovementioned conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the invalidity action based on a non‑registered trade mark or other sign used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

General considerations

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 Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR, if the application is based on an earlier right within the meaning of Article 8(4) EUTMR, the applicant must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, and a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

 

The applicant claimed to be the owner of a non-registered trade mark for the word sign ‘JOGGJEANS’ in Italy.

For non-registered trade marks, use constitutes the only factual premise justifying the existence of the right, including the ascertainment of the beginning of its existence. As such the national standard for use is relevant as it defines the scope of protection of the earlier rights, which are often not easily identifiable, all the more so since their protection is not harmonised on an EU level. This standard determines the existence of the national right and the conditions of protection. The national standard also prescribes the intensity of use under the relevant national law, which may vary from mere first use in trade to use requiring recognition or reputation.

In addition, the right invoked under Article 8(4) EUTMR must be earlier than the contested mark. In order to determine which of the conflicting rights is earlier, the relevant dates on which the rights were obtained must be compared. For EUTMs, this is the date of filing or any priority date validly claimed.

In the present case, the contested EUTM has been filed on 24/01/2020. However, as the EUTM proprietor rightfully held, the contested EUTM resulted from the transformation of IR No 1 180 919 designating the European Union. According to Article 204(2) EUTMR, in the event of the transformation of an IR after second republication (as is the case here), the full rights emanating from the IR designating the EU will continue to apply without interruption to the registered EUTM, meaning that the latter will, for the purposes of the determination of an ‘earlier mark’ within the meaning of Articles 8 and 9 EUTMR, benefit from the filing (or priority) date of the IR or the subsequent designation. As the IR No 1 180 919 had a priority date of 20/02/2013, it follows from the above that the contested EUTM also benefits from the respective priority date. Therefore, the applicant was required to prove that it acquired rights over the non-registered trade mark ‘JOGGJEANS’ in Italy prior to 20/02/2013. Furthermore, the invalidity request was filed on 05/03/2020. The evidence must also show that the applicant’s sign still existed at that time for the goods claimed, namely for clothing in Class 25. This condition derives from the wording of Article 60(1)(c) EUTMR, which states that an EUTM will be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’ (03/08/2011, R 1822/2010‑2, Baby Bambolina (fig.), § 15). The requirement of the ‘continued existence’ in the context of Article 8(4) EUTMR in invalidity proceedings is now explicitly set out in Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR.

 

In its observations of 05/03/2020, the applicant relied on several provisions of the IPC, as follows:

Article 1

For the purposes of this Code, the expression “industrial property” includes trade marks and other distinctive marks, geographical indications, designations of origin, designs and models, inventions, utility models, topographies of semiconductor products, trade secrets and new plant varieties.

Article 2

[…]

4. When the requirements of law are met, distinctive marks other than the registered trade mark, trade secrets, geographical indications and designations of origin are protected.

Article 12(1)(a)

1. Signs shall not be registered as trade marks if as of the date of filing of the application any of the following applies:

a) they are identical with or similar to a sign already known as a trade mark or a distinctive sign of goods or services manufactured, put on the market or provided by others for goods or services that are identical or similar, if due to the identity or similarity between the marks and the identity or similarity between the goods or services there exists a likelihood of confusion on the part of the public, that can also consist of a likelihood of association of the two signs. A trademark is also considered to be well known pursuant to Article 6-bis of the Paris Convention for the Protection of Industrial Property, Stockholm text of 14 July 1967, ratified by Law No. 424 of 28 April 1976, if it is well known by the relevant public, including due to a reputation acquired in the Country through the promotion of the trade mark. The previous use of the sign, when it does not lead to a reputation, or a purely local reputation, does not cause the lack of novelty, but a third party previous user may continue to use the trade mark, also for advertising purposes, within the limits of local circulation, despite the registration of the trade mark itself. The previous use of the sign by the applicant or his assignor is not an obstacle to registration.

Article 25(1)(a)

1. A trade mark shall be considered null:

a) if it lacks one of the requirements set forth in Article 7 or if one of the grounds for refusal established by Article 12 is present.

The applicant contended the above set of rules suffices for the purposes of Article 8(4) EUTMR. It referred to the judgement of the General Court of 07/07/2010, T-124/09, Carlo Roncato, EU:T:2010:290, § 20, 21 and stated that the Court accepted the above mentioned provisions of the IPC as a valid basis for applying Article 8(4) EUTMR. In addition, the applicant also quoted the provisions of Article 2598, 1² of the Italian Civil Code on unfair competition, which in its opinion would complete the protection of unregistered trade marks.

In its further observations of 10/09/2020 and in reply to the criticism of the EUTM proprietor as regards the requirements of the Italian national law, the applicant stated that non-registered trade marks deprive novelty of subsequent registered trade marks in case they are used and such use leads to a reputation or a non-purely local reputation. It further showed that in order to constitute an exclusive right under the Italian law, the sign must be known as a trade mark in the territory or at least in a non-purely local part of the territory. According to the applicant, the notion of reputation/non-local reputation must not be confused with ‘renown trade mark’, which would be regulated by a different provision of the IPC. The applicant went on to clarify that non-purely local reputation as set forth by Article 12(1)(a) is ‘a different concept and requires that the trade mark is used and known in a significant part of the Italian territory’. It showed that factors such as the use of the trade mark in numerous regions, the promotion of the mark, its presence online, catalogues or promotions in other languages constitute material in order to confirm a non-local presence of the trade mark for the purposes of Italian law. To support its claims the applicant referred to case law and more specifically to: (1) Tribunale Roma Sez. Proprietà Industriale e Intelletuale 28/12/2006 (‘the use of the unregistered trade mark must have acquired a reputation, which means an actual knowledge by a non-negligible part of the public residing in the area of use’), (2) Tribunale di Milano Sez. Proprietà Industriale e Intellettuale 2/5/2013 n. 6095 (‘Therefore, it seems useful to distinguish, in specific cases, a trade mark having purely local relevance, from another, of more widespread relevance: in fact, jurisprudence tends to speak of local diffusion and non-local diffusion, excluding the first when it affects a plurality of Regions. Naturally, it will be necessary to refer to different factors, linked to the times and to contemporary society, such as the advertising of the brand, to evaluate its expansive strength, as well as any other element that could prove a non-local spread of the same, such as the offer on the internet or the drafting of information brochures in several languages’) and (3) Tribunale Milano Sez. spec. Impresa, 23/02/2016, n.2344 (‘In the present case, the limited documentary findings, represented by the presence of some invoices proving the marketing of the product with the sign in dispute against a small number of customers and in a restricted territorial area, limited to a single region, have excluded that the use can be considered qualified by notoriety or not merely local notoriety’).

Preliminary remarks on some of the EUTM proprietor’s arguments

As detailed above, the proprietor claims on the one hand that the application should be rejected since the applicant failed to provide sufficient information on the conditions for obtaining protection and the scope of this protection pursuant to the Italian law and on the other hand that Article 2958 of the Italian Civil Code cannot be invoked for the purposes of Article 8(4) EUTMR.

Having regard to the arguments and evidence made available by the applicant and for reasons that will become apparent further down below, the Cancellation Division deems that it has, at least prima facie, sufficient information on file as regards the conditions governing acquisition of rights over a non-registered trade mark under the Italian law. Furthermore, the question whether Article 2958 of the Italian Civil Code could or not be invoked for the purposes of Article 8(4) EUTMR can remain open since this fact will be without prejudice to the EUTM proprietor, as it will be explained in the following sub-section of the decision.

Assessment of the applicant’s entitlement

As is apparent from the domestic provisions as interpreted by the national courts, the owner of a non-registered trade mark in Italy has the right to prohibit the use of a subsequent trade mark, where the non-registered mark is used and known in a significant part of the Italian territory (emphasis added), provided that the signs are identical or similar, that the goods or services are identical or similar, and that there is a likelihood of confusion including likelihood of association.

The paramount question the Cancellation Division is therefore called to answer is if the sign ‘JOGGJEANS’ was used in Italy in relation to clothing before the priority date of the contested EUTM and if the use was to such an extent that the sign has acquired a reputation/notoriety/not merely local notoriety, that is if it became sufficiently known by the Italian relevant public (see Article 12(1)(a) IPC, Tribunale Roma Sez. Proprietà Industriale e Intelletuale 28/12/2006 and Tribunale Milano Sez. spec. Impresa, 23/02/2016, n.2344, quoted above).

The evidence filed by the applicant has been listed in Section A. above. It essentially consists of an affidavit and several accompanying exhibits.

Admittedly the affidavit provides certain information on the volume of sales and the quantity of goods sold by the applicant in Italy in 2011, 2012 and 2013 (the amount that would have accrued after 20/02/2013 or the quantities of goods sold have however not been deducted). In this regard it is recalled that while in principle turnover and sales figures are usually indirect indications rather than direct proof of the degree of knowledge the public has of a sign, they are nevertheless significant indications of the number of consumers that are expected to have encountered the mark. The probative value of the affidavit is however rather low given that it originates from the applicant’s Head of Legal Affairs. Sworn statements given by persons related to one of the parties are generally of limited probative value because they are made for the purposes of the proceedings in question by people who naturally, can be presumed to have a direct or indirect interest in the case. The information in such statements must therefore be corroborated by other evidence or documents so that its probative value is founded on objective evidence (16/11/2011, T-308/06, Buffalo Mike, EU:T:2011:675, §58 and §59).

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the affidavit are supported by the other items of evidence and whether the latter documents furnished also provide further indications on the alleged ownership of the non-registered mark ‘JOGGJEANS’ in Italy.

The documents which the applicant provided to prove the use at the priority date of the contested mark consist primarily of about 17 invoices dated between October 2011 and December 2012 (annex 2a), one article of January 2011 (annex 3), five historical screenshots showing the website www.diesel.com on 04/08/2011, 09/09/2011, 31/12/2011, 04/05/2012 and 15/11/2012 (annex 4) and about 17 cuttings from the Italian press and blogs dated between 2011 and 2012 (annex 5a).

Having evaluated the evidence before it, the Cancellation Division takes the view that the documents on file essentially fall short on providing sufficient indications on the extent of use of the sign ‘JOGGJEANS’ and degree of knowledge by the relevant public in the territory concerned before the priority date of the contested mark (i.e. 20/02/2013).

The invoices itemize sales of, inter alia, articles of clothing to clients located in Arezzo, Treviso, Vicenza, Cagliari, Massa Carrara, Livorno, Milano and Florence. The goods are however identified by various other signs than ‘JOGGJEANS’ and the applicant did not make available any convincing evidence that would allow the Cancellation Division to conclude with the required degree of certainty that the respective goods have actually been marketed under the sign at issue between October 2011 and December 2012. The applicant made available a list of the name codes allegedly pertaining to the ‘JOGGJEANS’ collection and submitted a selection of internet printouts showing items of clothing identified by the sign ‘Diesel’ and the respective name code, with a reference to ‘JOGGJEANS’ (see list of the applicant’s evidence above). These documents were nonetheless retrieved in January 2020 and as such they cannot serve as irrefutable proof of use of the sign ‘JOGGJEANS’ in connection with the respective model before the relevant date in Italy. Moreover, some printouts appear to relate to other territories than the one of interest for the present case (USA, Canada, France, Spain, UK). It is further noted that the applicant did not highlight in the invoices the goods allegedly designated by the sign ‘JOGGJEANS’. After thoroughly analyzing the invoices and cross-referencing the code names provided by the applicant, the Cancellation Division came to the following findings: out of the 40 names claimed to be part of the ‘JOGGJEANS’ collection, more than half are referenced in invoices dated after 20/02/2013 or do not appear at all, in any invoice whatsoever. As for the models³ itemized in the relevant invoices, as already stated, there is no mention of ‘JOGGJEANS’. If anything some of them contain in the description the indication ‘Sweat jeans’. Moreover, as the EUTM proprietor rightfully showed, the applicant appears to use, at least for some models, the same name code for more than one type of good (TEPPHAR L.32 PANTALONI and TEPPHAR-NE Sweat jeans or FAYZA L.32 PANTALONI and FAYZA-NE Sweat jeans), all of the foregoing casting further doubt on the evidentiary value of the applicant’s claims and the data from the affidavit.

The screenshots from diesel.com refer to ‘JOGGJEANS’ as being a ‘revolutionary product’, a ‘prototype denim-crossbreeds, that mix sweatpants and classic Diesel jeans’, made of a ‘new woven jersey fabric’, ‘totally unique to the market’ that ‘uses the same weaving method employed to make denim, but thanks to a special patented technique it looks like denim on the outside and jersey sweatpants fabric on the inside’. Furthermore, two of the printouts contain a reference to the ‘JOGGJEANS’ collection ( ) and one lists under Diesel Female and Diesel Male sections ‘Jogg Jeans Denim’ ( ). However, these documents do not provide information apt in showing that the applicant’s claimed sign was effectively present in the Italian market, generating transactions and sales in connection with the goods invoked. Further information and evidence would be needed (such as for example complementary data as to the actual use of the Internet site by potential and relevant consumers, showing the specific website has been visited and, in particular, that orders for the relevant goods have been made through the website by a certain number of customers in the relevant period, complementary advertising regarding the goods or photos of the goods with the corresponding sign), which the applicant failed to adduce.

The article of January 2011 does not serve to shed light on the extent of the applicant’s trading activities, amount of sales and/or promotion of the sign in Italy, either. It reports on the applicant having presented at the ‘Bread & Butter’ event in Berlin a new model called the jogg-jeans, which is a combination of a sweatpants and jeans and that it will be available at Diesel stores across the globe from July 2011 for both men (Krooley) and women (Tintsie). However, as shown above, the invoices do not show that the applicant actually marketed the claimed goods to customers in Italy under the sign ‘JOGGJEANS’. In addition, the article was published (in English) on the website fashionunited.com. There is no further information and evidence as to whether it has actually reached Italian consumers and, more importantly, to what extent.

Turning finally to the cuttings from the Italian press and blogs, they essentially show pictures of clothing items with references to ‘Diesel’ and ‘JOGGJEANS’ or consist of blog entries or some articles mentioning ‘Diesel’ and ‘JOGGJEANS’. They are however neither particularly numerous nor persuasive in supporting the applicant’s claims on the setting up of ‘a significant commercial activity for the sale of clothing under the sign ‘JOGGJEANS’’ and its promotion. Even assuming the internal indications of the date and source were accurate⁴ (which is the best light in which the applicant’s case can be examined), the fact remains that, as correctly pointed out by the EUTM proprietor, there is no further complementary information and supporting evidence as regards the circulation figures or the number of visits to the respective websites that could serve to determine the extent to which said articles, blog entries or advertisements reached the relevant public and/or which is the awareness Italian consumers have of the sign concerned.

In its observations of 05/03/2020, the applicant stated that the press review shows that the JOGGJEANS collection was promoted since 2011 on numerous magazines, the most relevant being PAMBIANCO, ‘the most important fashion magazine in Italy with over 70.000 registered users’. Nevertheless, such information derives directly from the applicant and lacks any objective confirmation, since no evidence in support thereof has been made available to the Cancellation Division. On a side note it is also noted that the respective article refers to the sign ‘JOGGJEANS’ in the context of the special fabric created by Diesel, rather than as an indicator of commercial origin for clothing articles. In its further submissions of 10/09/2020 and in reply to the proprietor’s criticism on the press/blogs clippings, the applicant limited itself to stating that the press is mainly composed by magazines/newspapers which are capable to reach thousands of readers. It listed some of them and provided some general information such as for example ‘Leggo Milano, a free newspaper distributed in most of the Italian cities’, ‘Zalando – a very famous e-commerce platform’, ‘Frizzifrizzi, a digital magazine created in 2006 which has a consistent number of readers in the fashion field’. As regards the blog entries, the applicant claimed that fashion bloggers could not be, per se, qualified as websites having a “couple of readers”, to the contrary, fashion bloggers have more and more importance and they have a considerable impact on how people dress. The fact that ‘JOGGJEANS’ was discussed by numerous fashion bloggers means, according to the applicant, that the JOGGJEANS trade mark was immediately perceived as a successful product by fashion bloggers who generally follow or anticipate fashion trends. However, other than inserting in its observations some hyperlinks, the applicant did not adduce any documents apt in supporting such claims. At this point, it must be stressed that the burden of proof lies solely with the cancellation applicant and it is not up to the Cancellation Division to substitute itself to the applicant and conduct ex officio investigations by accessing the respective link or by performing internet searches in order to gather information on the respective publications or fashion bloggers.

More importantly, aside from the mentioned press articles/blog entries, there is no other information on the nature and/or scale of the promotional activities undertaken by the applicant before the relevant date that would help to show that the sign ‘JOGGJEANS’ has been publicised to such an extent that the relevant Italian public already knew it at 20/02/2013. In fact, as shown by the EUTM proprietor, the applicant appears to have admitted in proceedings in Germany that in the years 2011 and 2012 respectively, it made no direct marketing investments in the EU for ‘JOGGJEANS’ products.

For the sake of completeness, it is noted that except for a partial English translation in the applicant’s observations of 05/03/2020 (for an advertisement in, allegedly, the magazine ‘PAMBIANCO’) and for a blog entry which is in Italian and English, the applicant did not submit translations into English of the remaining cuttings from the Italian press/blogs. In this regard it is recalled that the applicant is not under any obligation to translate the evidence filed with a view to proving use in the course of trade of the earlier sign, unless it is specifically requested to do so by the Office (Article 16(2) EUTMDR in conjunction with Article 24 EUTMIR). In the present case and taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, the Cancellation Division considers that there is no need to request a translation. This is either because of the self-explanatory character of the evidence or because the remaining materials on file allow for the pertinent information to be extracted and understood without the need for an English translation from the applicant.

It is upon the applicant to adduce all necessary evidence to prove that it is the owner of the earlier sign relied upon. Rights over a non-registered trade mark in Italy are not acquired from mere use of a sign. What must be demonstrated is an actual knowledge by a non-negligible part of the public residing in the area of use. As illustrated above the evidence fails to provide sufficient indications that the claimed goods were actually offered or sold to clients in Italy under the earlier non-registered mark invoked. Moreover, the evidence is also not persuasive in showing that the sign ‘JOGGJEANS’ was advertised/promoted to such an extent as to safely allow for a conclusion that the applicant used the respective sign in a trade mark sense prior to 20/02/2013.

b) Conclusion

It follows that the applicant failed to prove that it acquired rights to the non-registered trade mark ‘JOGGJEANS’ in Italy prior to the priority date of the contested EUTM. Since one of the requirements of Article 8(4) EUTMR is not fulfilled, the application has to be rejected insofar as it is based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.

Final Conclusion

Since the applicant did not succeed on any count, the application for declaration of invalidity must be rejected in its entirety.

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

 

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

 

 

The Cancellation Division

 

Michaela SIMANDLOVA

Oana-Alina STURZA

Richard BIANCHI

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.