OPPOSITION DIVISION




OPPOSITION No B 2 042 664


Sport Direct B.V.,Teugseweg 42, 7418 AM Deventer, The Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative)


a g a i n s t


Sportsdirect.com Retail Limited, Unit A, Brook Park East, Shirebrook NG20 8RY, United Kingdom (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative).


On 28/04/2017, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 042 664 is partially upheld, namely for the following contested goods and services:



Class 25: Football boots; gaiters; football jerseys; replica football kits; studs for football boots [shoes]; armbands [clothing]; all of the aforesaid excluding clothing for cyclists, including gloves, in Class 25


Class 28: Balls; stomach protectors [adapted for use in a specific sport]; knee protectors adapted for use whilst playing sports; leg guards adapted for playing sport; shin pads [sports articles]; elbow guards (sport articles); hip-guards specially made for playing sports [parts of sports suits]; shin guards for athletic use; wrist guards for athletic use; hand protectors adapted for sporting use; gloves for sporting purposes [specifically adapted for]; apparatus for use in the game of football; football gloves; sporting articles for use in playing football [other than clothing or articles for protective purposes]; football or soccer goals; training apparatus for use in relation to football; goal nets; soccer ball goal nets; goal posts; whistles.


Class 35: Retail clothing shop services; the bringing together, for the benefit of others, of a variety of goods enabling customer to conveniently view and purchase those goods, namely footwear, headgear, MP3 players, personal stereos, headphones, audio speakers, cellular phones, phone appliances, phone covers, helmets, eyewear, goggles for skiing, sunglasses, straps for sunglasses, carrying cases adapted for sunglasses, batteries, battery chargers, programmable timers, telecom apparatus, flexible covers for the controls of electrical apparatus, encoded plastic covered cards bearing printed matter, odontoguards, watches, clocks, chronometers, jewellery, jewellery cases, cases for pens, ink pens, pencils, stationery, adhesive for stationery purposes, calendars, agendas, diaries [printed matter], wall charts for use as diaries, printed matter, photographs, artists materials, greeting cards, cards made of plastic, goods made of leather and imitation leather, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, luggage, belts made of leather, belts made of imitation leather, wallets for attachment to belts, wallets, purses, pouches, golf umbrellas, luggage straps, garment bags, briefcases, portfolios, attache cases, knapsacks, waist packs, billfolds, business card cases, credit card cases, key cases, key holders, key pouches, backpacks, schoolchildren's backpacks, framed carrying apparatus in the nature of rucksacks for carrying babies, bedlinen, sleeping bags,  pillows, inflatable pillows [other than for medical use] for fitting around the neck, foam camping mattresses, camping furniture, mugs, containers for food, lunch boxes, containers for household use for storage purposes, cocktail shakers, mixers, manual [cocktail shakers], non-electric mixers for mixing drinks, storage receptacles for household use, thermally insulated flasks for household use, tents, Christmas decorations, children’s seats for use in cars, sporting articles and parts and fittings for all of the aforesaid good, shopping (carrier) bags of plastic, block notepads, desk note pads, removable self-stick notes, catalogues, decalcomanias, removable tattoos, magazines, books, indexed books for the recordal of information relating to fitness training, discs bearing video recordings books recorded on disc, protective ware, discs bearing video recordings, playing cards, snack bars, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, mouthwashes, preparations for freshening the breath [not medicated], toiletries, towels containing non-medicated toilet preparations, hair colorants, hair waving preparations, hair care products, hair spray, gels for use on the hair, skincare preparations, hand care preparations, body care products [non-medicated], oil for the body, deodorants, antiperspirants, non-medicated toilet preparations, depilatory preparations, artificial tanning preparations, sun tanning preparations, shaving preparations, non-medicated preparations for use after shaving, dyes for the beard, hair bleaching preparations, lip balms (non-medicated-), nail care preparations, nail varnish, emery boards, emery paper, emery cloth, bath salts, not for medical purposes, talcum powder, beard softeners, vitamin and mineral supplements, nutritional and dietary supplements, meal replacement powders, meal replacement and dietary supplement drink mixes, stimulants made of vitamins, medicated food for sportsmen, muscle relaxants, cold creams for the treatment of sporting injuries, gauze bandages [dressings], tapes for bandaging, powdered dietary food concentrates for use in a weight reduction programme for medical purposes, dietetic substances for medical use in weight control, foods for persons having complex metabolic disorders, dietetic food preparations having a low fat content [adapted for medical purposes]; all of the aforesaid excluding retail services connected with the sale of cycle parts or cycle accessories, cycle helmets, cycle bags, cycling gloves and clothing for cycling.




2. European Union trade mark application No 10 746 808 is rejected for all the above goods and services. It may proceed for the remaining goods and services.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 746 808. The opposition is based on the Dutch company names/trade names ‘Sport Direct B.V.’ and ‘sportdirect.com’, both used in the course of trade of more than mere local significance in the Netherlands in connection with trade, both wholesale and retail, in sports and leisure goods, including (sports) fashion articles, such as clothing, footwear and headgear, as well as sports accessories, whether or not via the Internet.


The opponent invoked Article 8(4) EUTMR.



NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR


The opposition is based on more than one earlier right. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Dutch trade name ‘sportdirect.com’, which the opponent claimed have been used in the course of trade and is of more than mere local significance and, pursuant to the law governing it, confers to its proprietor the right to prohibit the use of a subsequent trade mark.


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 shall not be registered where and to the extent that, pursuant to the 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 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 prior to the filing of the contested trade mark;


  • pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition 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 are fulfilled in respect of the contested trade mark.


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



  1. Prior use in the course of trade of more than mere local significance


The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.


It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).


In the present case, the contested trade mark was filed on 21/03/2012. However, the contested trade mark has a priority date of 04/10/2011. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the Netherlands prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for trade, both wholesale and retail, in sports and leisure goods, including (sports) fashion articles, such as clothing, footwear and headgear, as well as sports accessories, whether or not via the Internet.


On 07/12/2012 the opponent filed, in particular, the following evidence:


Exhibit 1: A set of 17 invoices from 26/04/1995 to 20/12/2002 (most of them from 2001), one invoice from 04/07/2006 and over 100 (113) from 01/09/2008 to 20/07/2012, to customers in many cities in the Netherlands, containing the sign ‘SPORT DIRECT’ on top – from 1995 to 2002 in conjunction with a figurative element, and after 2006 without the figurative element; and with a reference to the company name ‘Sport Direct B.V.’ on the foot of the invoices. The invoices refers to clothing and sports articles, inter alia, polo’s, back packs, aqua slippers, windjammers, sweaters, socks, bag, poly suit, keeper shirt, jackets, street balls, fleece, handballs, jogging pants.

Exhibit 2: Extracts from the trade register of the Dutch Chamber of Commerce, inter alia, for the legal entity SPORT DIRECT B.V., and the trade names of the undertaking, for example ‘Sport Direct B.V.’, ‘sportdirect.com’ and ‘hummelsport.nl’. Start date for the undertaking is 06/06/2006, and activities are stated as ‘Shops in sports articles (no water sports)’.


Exhibit 3: An extract showing the registration of the domain name ‘sportdirect.nl’ 1997.


Exhibit 4: A copy of the judgment of the Dutch Court of Appeal of Arnhem dated 17 May 2011, translated in parts, stating that the applicant owns valid rights to the company/trade name SPORT DIRECT/SPORTDIRECT.COM.


Exhibit 5: Various advertisement materials, labels, tags, packaging designs and job advertisements, some of them dated between 2007-2011, partly translated, all mentioning the company/trade names SPORTDIRECT.COM and/or www.sportdirect.com, for example:


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