DECISION

of the Fifth Board of Appeal

of 30 June 2016

In Case R 1055/2015-5

GO Outdoors Limited
Cuthbert House Arley Street Sheffield, South Yorkshire S2 4QP United Kingdom	Opponent / Appellant

represented by WILSON GUNN, 5th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom

v

Fox International Group Limited
56-58 Fowler Road Hainault Industrial Estate Hainault, Essex IG6 3UT United Kingdom	Applicant / Respondent

represented by BROMHEAD JOHNSON, Sovereign House, 212-224 Shaftesbury Avenue, London WC2H 8HQ, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 350 968 (European Union trade mark application No 12 476 024)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), A. Pohlmann (Member) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 3 January 2014, Fox International Group Limited (‘the applicant’) sought to register the word as amended

EDGES

for the following list of goods (as restricted during the course of the opposition proceedings):

Class 18 - Angling umbrellas; angling backpacks; angling rucksacks; angling luggage for retaining angling equipment; parts and fittings for all the aforesaid goods;

Class 25 - Angling clothing; angling suits, angling one-piece suits, angling salopettes, angling jackets and angling trousers; angling footwear; angling headgear;

Class 28 - Angling apparatus; angling accessories; parts and fittings for all the aforesaid goods.

2. The application was published on 5 February 2014.

3. On 28 April 2014, GO Outdoors Limited (‘the opponent’) filed an opposition against the registration of the published trade mark application for goods in Classes 18 and 25.

4. The grounds of opposition were those laid down in Article 8(1)(b), Article 8(5) and Article 8(4) EUTMR.

5. The opposition was based on the following earlier rights:

• Earlier EUTM registration No 2 968 501 for the word mark

THE EDGE

filed on 28 November 2002 and registered on 5 May 2006 for, inter alia, the following goods:

Class 25 - Clothing, headgear, footwear;

• Earlier United Kingdom registration No 2 489 309 for the word mark

THE EDGE

filed on 5 June 2008 and registered on 2 January 2009 for, inter alia, the following goods:

Class 25 - Articles of clothing, footwear and headgear; articles of clothing footwear and headgear for use in sporting and outdoor pursuits, including for use in camping, equestrian activities, fishing, hunting; thermal clothing; jackets; trousers; over trousers; breeches; sweatshirts; knit wear; shirts; hats; balaclavas; mitts; gloves; thermal underwear; socks; gaiters; boots; climbers boots;

• Earlier non-registered sign THE EDGE used in the course of trade in the United Kingdom for ‘clothing including ski wear, base layer, salopettes, ski pants, tops, jackets, hats, gloves, ear protectors’.

6. The applicant requested the opponent to submit evidence of genuine use of the earlier registered marks in accordance with Article 42(2) EUTMR.

7. The opponent submitted the following evidence relating to use of the earlier marks:

• Item 1: pp 4 – 6, witness statement, dated 17/09/2014, written by James Paul McNamare, the opponent’s employee since 2003. The statement explains that the opponent is a retailer of clothing, accessories and other equipment for use in outdoor pursuits and operates throughout the United Kingdom. The document also explains all parts of the evidence;

• Item 2: pp 8 – 15, according to the witness statement, this document contains instructions as to how new ‘the edge’ branded range of clothing is to be promoted and displayed in stores. The earlier mark is displayed together with clothing items (jackets and pants for men and women) dated November 2011;

• Item 3: pp: 17 – 34 - extracts from mail shots. According to the witness statement written by James Paul McNamare (the opponent’s employee), they were sent to a certain number of individual clients in the United Kingdom (from 605 048 – 1 407 729) between 2011-2013. The extracts of those mail shots show ski jackets, boots and socks, coats/jackets, stretch leggings, hats and mittens, ski wear and equipment, gloves;

• Item 4: pp. 35 – 37 displays a promotion bulletin regarding the launch of the Autumn /Winter 2013 promotion of ‘the edge’ ski wear;

• Item 5: pp. 39 – 43 shows an undated table referring to the quantity and values of the various items (clothing) sold under the mark ‘THE EDGE for the total value of EUR 737 000. According to the witness statement written by James Paul McNamare (the opponent’s employee), these items were sold between 05/02/2009 – 04/02/2014;

• Item 6: pp. 45 – 66 refers to photographs included in the table filed as Item 5 and showing the earlier mark ‘the edge’ on various clothing items.

8. By decision of 31 March 2015 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety on the ground that genuine use of the earlier registered marks had not been proved sufficiently. As regards Article 8(4) EUTMR, the Opposition Division considered that the opponent had not shown that use of the earlier sign was of more than local significance. The Opposition Division reasoned as follows:

• The evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based. In the present case, the evidence as a whole contains sales figures or other data that might show the extent and use of the earlier marks however they stem from the opponent, mainly they are undated and are not corroborated by other independent sources. It is to be noted that the evidence submitted by the opponent mainly consists of witness statement, promotional mail shots, undated table showing the quantity of the clothing items sold under the earlier marks, promotional bulletin or internal instructions explaining the launch of new lines of clothing. The probative value of those materials is rather low, since they only show the content displayed as of the moment of the promotional event and are not corroborated by any detailed material concerning the extent, place and time of use. The Opposition Division notes that the information and data contained in the table have not been compiled or revised by independent auditors what would confirm the commercial volume of the exploitation of the earlier trade mark indicated. Furthermore, the opponent did not submit any invoices or order forms which may confirm in another way the numbers mentioned in this part of the evidence;

• Consequently, the Opposition Division considers that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period;

• As regards the opposition under Article 8(4) EUTMR, the opponent has to prove that (i) 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; (ii) 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; and (iii) the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark;

• The evidence filed by the opponent does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. The documents filed, namely the witness statement, promotional mail shots without any reference which would confirm the existence of commercial correspondence between the opponent and its clients, undated table showing the quantity of the clothing items sold under the opponent’s sign, promotional bulletin or internal instructions, which according to the witness statement written by James Paul McNamare (the opponent’s employee), explain the launch of new lines of clothing are not corroborated by other independent sources, and therefore, they do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and frequency of use.

9. On 28 May 2015, the opponent filed an appeal against the contested decision and on 17 July 2015 submitted its statement of grounds of the appeal.

10. On 25 September 2015 the applicant filed its observations in reply.

Submissions and arguments of the parties

11. The opponent requests that the Board annul the contested decision and allow the opposition. Its arguments may be summarised as follows:

• The Opposition Division’s finding that the evidence is insufficient, of low probative value, not corroborated by any other detailed material and relates primarily to promotional activities, is incorrect. Only the mail shots and bulletins relate solely to promotional activities while the witness statement, table and photographs do not. There is no reason to consider this evidence of low probative value;

• Promotional mails and bulletins have not been drawn up by the opponent solely for the purpose of the opposition. They have a high probative value and they corroborate each other. There is no need that the information contained in them be corroborated by other material;

• The promotional bulletin dated November 2011 confirms the information in the witness statement and indicates the number of ‘GO’ stores in the UK. The 2013 promotional bulletin contains images of points of sale such as posters bearing the indication AW13 (i.e. Autumn / Winter collection 2013). The mail shots indicate that customers can access other ski wear products, including ‘THE EDGE’ in any of the stores nationwide. The dates show use between 2011 and 2013 and the opponent’s website (GOoutdoors.co.uk) and the telephone number shows that use is in the United Kingdom;

• As detailed in the witness statement, the number of individuals receiving the mail shots adds up to 10 million recipients in the United Kingdom. This information can only be obtained from the opponent’s records and cannot be corroborated by any independent source. However, a detailed breakdown of this data by month has been provided for the period 2011-2013 and there is no reason to cast doubt on its reliability;

• A table showing the quantity of sales has been also provided. These sales correspond, as regards the time of use, to the promotional bulletins;

• The Opposition Division considered the witness statement to be of a low probative value because it comes from the opponent. This is incorrect. The witness statement was executed in the UK and it contains a statement of truth. According to the UK Civil Procedures Rules, proceedings for contempt of court may be brought against a person if he or she makes a false statement. Furthermore, according to the EUIPO practice, such statements are valid means of evidence, especially when they contain detailed and concrete information (07/06/2005, T‑303/03, Salvita, EU:T:2005:200, § 42);

• The quantity of sales sufficiently demonstrate the extent of use;

• The evidence submitted was, therefore, sufficient to demonstrate genuine use of the earlier mark in the United Kingdom. Nevertheless, the opponent files additional evidence, consisting of a selection of manufacturer invoices, packing lists and sales order documents (the relevant items are highlighted) and a spreadsheet showing sales of ‘THE EDGE’ products. The evidence shows that the products were manufactured in China. Items in the invoices and sales orders can be matched by their name or code to those listed in the table of sales and further to the spreadsheet showing sales in particular stores. As an example, an Astrid Jacket (ZED1011) can be matched to invoices dated 5 August 2012 and 23 August 2013 and the table shows sales of a total of 2 479 Astrid jackets sold in 45 stores between November 2011 and February 2014. The supplementary evidence confirms the substantial sales volume under the mark ‘THE EDGE’.

12. The applicant requests that the Board dismiss the appeal and confirm the contested decision. Its arguments may be summarised as follows:

• The Opposition Division correctly assessed the evidence of use. As previously argued by the applicant, the evidence does not contain a single retailer invoice so it cannot be presumed that the goods were actually sold. The evidence relates to a promotional event;

• It is recalled that genuine use of the mark cannot be proven by means of probabilities and suppositions;

• As regards the witness statement, the opponent should not rely on the UK procedure when the matter is before EUIPO. The nature of evidence to be submitted before EUPIO is clearly set out in the Office’s guidelines and any witness statement needs to be corroborated by evidence as to the place, time and extent of use of the mark;

• If, what the opponent asserts is true, it should readily be able to provide evidence of sales. Such evidence was not presented here;

• The new evidence filed by the opponent before the Board should not be admitted. It is clearly an abuse of process as the opponent could have filed this evidence in a timely manner;

• In any case, the new evidence does not contain any reference to the trade mark in question. Even if, as argued by the opponent, it is possible to identify the goods bearing the mark on the basis of names and codes, the evidence at most shows that the opponent acquired these goods. It is unclear what it did with them afterwards;

• The opponent did not show genuine use of its earlier mark. In any case, all the indications of use relate to ski jackets. The applicant’s goods, after the restriction, only cover angling goods. Thus the channels of distribution and end-users of these goods are entirely different, so there can be no likelihood of confusion.

Reasons

13. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Article 8(1)(b) EUTMR

14. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion is to include the likelihood of association with the earlier trade mark.

The evidence of use

15. Article 42 EUTMR, as in force at the time when the opposition was filed, provided that upon request from the applicant ‘the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier trade mark has been put to genuine use in the relevant territory in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier trade mark has at that date been registered for not less than five years’.

16. In accordance with Rule 22(3) CTMIR, proof of use must evidence the place, time, extent and nature of use of the earlier trade mark.

17. Genuine use of a trade mark in the sense of Article 42(2) EUTMR in conjunction with Article 15 EUTMR must be understood to denote real use that is not merely token, serving solely to preserve the rights conferred by the mark (fictitious use). Genuine use of the mark entails use of the mark on the relevant market and not just internal use by the undertaking concerned (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 36 et seq. and 27/09/2007, T‑418/03, La Mer, EU:T:2007:299, § 54).

18. In order to examine whether the trade mark in question has been put to genuine use, an overall assessment of the evidence in the file must be carried out, which takes into account all the relevant factors of the particular case. That assessment must be based on all the facts and circumstances relevant to establishing whether the 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 share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (27/09/2007, C‑418/03, La Mer, EU:T:2007:299, § 53 et seq.).

19. Genuine use of a trade mark cannot be proved 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 (12/12/2002, T–39/01, Hiwatt, EU:T:2002:316, § 47; 06/10/2004, T–356/02, Vitakraft, EU:T:2004:292, § 28). It is for the opponent to prove what it is asserting (actori incumbit probatio).

20. In the present case, the opponent initially filed a witness statement, mail shots and an internal document containing instructions on how ‘THE EDGE’ products should be arranged in a retail establishment.

21. Concerning the witness statement, the Board recalls that in accordance with a settled case-law, a statutory declaration by an employee of the opponent must be supported by additional documentary evidence (16/12/2008, T–86/07, Deitech, EU:T:2008:577, § 50 and 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 39). Such an affidavit may, however, be taken into consideration if it is corroborated by other evidence external to the interested party (07/06/2005, T–303/03, Salvita, EU:T:2005:200, § 40 et seq.). Other means of (corroborating) evidence are accepted, provided that the documents submitted as a whole consist of indications concerning the place, time, extent and nature of use of the earlier trade mark in accordance with Rule 22(3) CTMIR.

22. The opponent argues that the documents filed corroborate each other (i.e. the witness statement is corroborated by the table of sales). However, it is recalled that the witness statement needs to be corroborated by objective, independent evidence. A table of sales elaborated by the opponent does not meet the standard of objective and independent evidence unless confirmed by other documents, such as invoices, audited financial statements and advertising materials with a clear publication date and distribution details. The brochure containing instruction as to how ‘THE EDGE’ products should be arranged in a retail establishments is an internal document, addressed to a retailer and not to consumers. It could be interpreted as indirectly confirming time and nature of use of the mark as it contains a date (AW 11 which indeed is likely to mean Autumn / Winter 2011) and the mark as shown on the products but in the absence of any other solid evidence demonstrating actual sales and advertising the mark among the relevant public, it has little value on its own. The mail shots, being undated and the data on their distribution can only be considered to be the opponent’s statements and not material evidence.

23. The opponent’s arguments as to the high probative value of witness statements under the UK law cannot be taken into account. The Board observes that there is nothing in either the EUTMR or CTMIR to substantiate a finding that the probative value of items of evidence relating to use of the mark, including written statements as referred to in Article 78(1)(f) EUTMR, must be assessed in the light of the national law of a Member State (see, to that effect 07/06/2005, T‑303/03, Salvita, EU:T:2005:200, § 42 and 13/05/2009, T–183/08, Jello Schuhpark II, EU:T:2009:156, § 38).

24. The Board notes that the opponent filed additional evidence before the Board (described and listed in § 11, last indent). This evidence shows purchases of various items from China. It is recalled that evidence of the mere purchase of goods outside the European Union is not sufficient to prove genuine use. Proof of actual sales in the European Union (or as the case maybe, its Member States), creating or maintaining a market share on the relevant territory, is necessary (09/12/2015, T–354/14, ZuMEX (fig.) / JUMEX, EU:T:2015:947, § 61 et seq.).

25. Furthermore, the documents filed contain no reference to the trade mark. Even if, as argued by the opponent, they can be matched (by name or code) to items mentioned in the table of sales, again it has to be stressed that the actual sales are only shown in an internal document drafted by the opponent and are not confirmed by invoices or financial documents of the company or documents and materials originating from an independent source.

26. As rightly pointed by the applicant, if, as argued by the opponent, the sales actually took place, it should not be too burdensome to provide actual invoices showing them.

27. The opponent was aware of the shortcomings in its evidence following the contested decision as it contained a very detailed and specific criticism of the initial evidence. Therefore, knowing that the stakes were high, the opponent could have provided solid evidence showing that the commercial use of its trade mark was ‘real’, i.e. that it could be regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark (08/07/2004, T–203/02, Vitafruit, EU:T:2004:225, § 40).

28. Nevertheless, the opponent decided to insist on the completeness of the initial evidence, submitted another internal sheet (while it should have known that such evidence is considered to be of a low probative value) and did not file any solid and convincing evidence before the Board.

29. In light of the foregoing, although it is not the Board’s aim to assess the commercial success of the opponent (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38), the actual sales were not demonstrated and the actual market for its goods was not shown by the opponent. It is recalled that the burden of proof was on it (actori incumbit probatio) and it is not for the Board to investigate the opponent’s internal undated documents (such as tables of sales and spreadsheets) in search of matching items. It has to be stressed once again that genuine use cannot be established by means of probabilities or mere suppositions but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (06/10/2004, T–356/02, Vitakraft, EU:T:2004:292, § 28 and 12/12/2002, T–39/01, Hiwatt, EU:T:2002:316, § 47).

30. In the view of the Board more corroboration would be required here – one would expect to see examples of sales or further distribution to retail establishments, including itemised sales figures to individual customers or retailers and sample invoices. Despite obvious shortcomings of the evidence filed before the Opposition Division, the opponent did not avail itself of the opportunity to file any of those before the Boards.

31. In the Board’s view, the evidence submitted by the opponent in the present case is of low probative value and has not been corroborated by independent documents and, therefore, even in its entirety is insufficient to show that the earlier mark has been used in the United Kingdom, let alone the European Union.

32. Consequently, the opposition based on Article 8(1)(b) EUTMR was rightly rejected for lack of evidence of genuine use in accordance with Article 42(2) EUTMR.

33. In addition, the Boards notes that any indications of alleged use of the earlier mark relate to ski jackets only. The applicant’s goods were restricted and they cover, in essence angling clothing and angling accessories. Even if both ski jackets and angling jackets fall within a category of sport clothing, it is clear that both have very particular uses and are likely to be found in different outlets or different sections of retail establishment. Also, their end-users are different (skiers vs. fishermen). Therefore, although they share the same general purpose (to cover the body against the external conditions), the similarity between them is very low.

Article 8(4) EUTMR

34. The opponent did not file any specific arguments regarding the contested decision’s findings under Article 8(4) EUTMR. However, as the general challenge to the Opposition Division’s assessment of evidence of use can also have a bearing on the findings under Article 8(4) EUTMR, the Board considers it necessary to address this issue.

35. According to Article 8(4) EUTMR, upon opposition by the proprietor of a nonregistered trade mark 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 EU legislation or the law of the Member State governing that sign rights to that sign were acquired prior to the date of application of the contested mark and that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

36. Therefore, for Article 8(4) EUTMR to apply, the following conditions must be fulfilled:

1. proprietorship of a non-registered trade mark or of another sign used in the course of trade;

2. use of the sign on a scale of more than mere local significance;

3. acquisition of the right prior to the contested mark under the law of the Member State governing that sign;

4. under the law of the Member State governing that sign, the sign gives its owner the right to prohibit the use of a subsequent trade mark.

37. The requirements indicated above are cumulative, which means that they must all be met for the request based on Article 8(4) EUTMR to succeed. If one of them is not fulfilled, then the request must be rejected (24/03/2009, T–318/06, General Optica, EU:T:2009:77, § 32, et seq. and § 47; 30/06/2009, T–435/05, Dr. No, EU:T:2009:226, § 35).

38. The first two requirements must be interpreted in light of European Union law. The EUTMR thus sets out uniform standards, relating to use of signs and their significance, which are consistent with the principles underlying the system established by that Regulation (24/03/2009, T–318/06 - T–321/06, General Optica, EU:T:2009:77, § 33 and 23/10/2013, T–581/11, Baby Bambolina, EU:T:2013:553, § 23).

39. In the present case, the indications relating to the use of the earlier mark were considered insufficient to demonstrate genuine use of the earlier mark by the Board. Even if the test for assessing the use under Article 8(4) EUTMR is not the same, the shortcomings in the evidence pointed out above will be relevant for examining the opposition under Article 8(4) EUTMR.

40. In order to determine whether the sign is used and whether such a use can be considered to be of more than a local significance within the meaning of Article 8(4) EUTMR, account must be taken of the geographical and economical dimension of the sign’s significance. The economic dimension of the sign’s significance is to be assessed in light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet. What must be examined for this condition is the impact of that sign in the territory in question after it has been used as a distinctive element (24/03/2009, T–318/06 – T–321/06, General Optica, EU:T:2009:77, § 37 et seq.).

41. In this connection, the Court of Justice has determined that the sign relied on under Article 8(4) EUTMR must be used in a sufficiently significant manner in the course of trade and, 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 (29/03/2011, C–96/09 P, Bud, EU:C:2011:189, § 159).

42. The opponent submitted the evidence described in detail above. This evidence consists virtually of the opponent’s own statements which are not confirmed by any independent or objective source. The opponent’s declarations of the sales of products bearing the sign ‘THE EDGE’ refer globally to the period 2009-2014. Even if this evidence were considered of a sufficient probative value in itself, it is not possible to determine when exactly the sales took place or what was the frequency and intensity of the alleged use of the mark. Therefore, it is not possible to conclude that the earlier mark was used and the use was of more than local significance.

43. The evidence of purchases of various items of clothing from China does not amount to the evidence of use of more than a local significance in the United Kingdom and it does not show an actual presence on relevant territory.

44. Furthermore, even if the evidence were accepted as demonstrating such use, it is recalled that, in order to successfully rely on Article 8(4) EUTMR in conjunction with the UK national law, the opponent has to prove that the conditions of the passing-off tort are fulfilled i.e. that: (i) the opponent has acquired a goodwill or reputation in the market under the non-registered mark and its goods are known by some distinguishing feature; (ii) there is a misrepresentation by the applicant (whether or not intentional) leading or likely to lead the public to believe that goods offered by the applicant are goods of the opponent; (iii) the opponent has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the applicant’s misrepresentation.

45. In order to demonstrate goodwill, the opponent needs to show genuine trading activities, which result in acquiring reputation and gaining customers. Even if witness statements are given, in principle, more evidential value under the UK law, they are also open to challenge by the other party and, in such a case, need to be corroborated or defended under cross-examination. In the present case, there is no real evidence of exposure of the name to the general public, in particular, an accumulation of material that fairly allows one to conclude that actual trade has taken place. There is no convincing promotional material – the reference to mailshots represents another uncorroborated claim by the opponent, unsupported by, for example, invoice evidence. The necessary data on the extent and the frequency of sales are missing. Consequently, it is not possible to assess whether the sign at issue enjoys goodwill amongst UK consumers.

46. Therefore, the Board considers that the contested decision correctly considered that Article 8(4) EUTMR did not apply in the present case. The opponent’s submissions do not prove that the non-registered mark was used in the course of trade of more than local significance within the meaning of Article 8(4) EUTMR. In particular, the opponent failed to prove the economic dimension of its non-registered mark.

47. The appeal is dismissed.

Costs

48. Since the opponent is the losing party in the appeal proceedings within the meaning of Article 85(1) EUTMR, it must bear the fees and costs pursuant to Article 85(6) EUTMR. It follows that it must bear the applicant’s costs in the appeal proceedings in the amount of EUR 550 specified in Rule 94(7)(d) CTMIR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear EUR 550 for the applicant’s representation costs in the appeal proceedings.

Signed G. Humphreys

Signed A. Pohlmann

Signed V. Melgar

Registrar: Signed H.Dijkema