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OPPOSITION DIVISION |
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OPPOSITION No B 2 367 095
Achim Langer, Allerheiligenstr. 40, 60313 Frankfurt, Germany (opponent), represented by Tomáš Bejček, Bubenská 1, 170 00 Praha 7, Czech Republic (professional representative)
a g a i n s t
‘P.B.W.C.’ Spółka Z Ograniczoną Odpowiedzialnością, Kolonia 12, 62-085 Potrzanowo, Poland (applicant).
On
DECISION:
1. Opposition
No B
Class 25: Headgear; footwear; clothing.
Class 28: Sporting articles included in this class.
Class 35: Sale services relating to clothing.
2. European
Union trade mark application No
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
ON THE SUBSTANCE – Slovak trade mark registration No 225 905
According to Article 8(2)(a) EUTMR, an opposition can be based on ‘earlier trade marks’, which, for the purposes of paragraph 1, means EU trade marks, trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property, trade marks registered under international arrangements which have effect in a Member State, and trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks.
In the present case, the opposition was based on, inter alia, earlier Slovak trade mark registration No 225 905 for the word mark ‘Pit Bull’, which was applied for on 27/03/2009 and registered on 14/09/2009.
However, according to the latest extract from the registry of trade mark registrations of the Industrial Property Office of the Slovak Republic of 30/05/2016, submitted by the applicant on 08/06/2016, the trade mark has been cancelled and its current legal status is as follows: ‘registered trademark is declared as invalid’.
Since the earlier right ceased to exist within the meaning of Article 41(1)(a) EUTMR and Article 8(1) and (2) EUTMR, the opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.
The examination will continue in relation to the remaining earlier marks on which the opposition is based.
PROOF OF USE
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registrations No 2 089 978, No 30 562 510 and No 30 650 847.
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of, inter alia, German trade mark registrations No 2 089 978, No 30 562 510 and No 30 650 847, on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.
The contested application was published on 20/03/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany from 20/03/2009 to 19/03/2014, inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based.
As regards earlier German trade mark No 2 089 978, the opponent has claimed that the trade mark is protected for the following goods and services:
Class 25: Textile finishing by screen printing; printed clothing.
Class 40: Textile finishing by screen printing; printed clothing.
The Opposition Division considers that there is an obvious mistake in the structure of the translation of the goods and services. It is clear from the relevant extract from the registration of the abovementioned earlier mark that the goods and services in Classes 25 and 40 in German have been listed together on one line, but belong partly to Class 40 and partly to Class 25. Therefore, the Opposition Division considers that the correct list of goods and services for that earlier trade mark is the one listed below.
The goods and services of the abovementioned earlier marks on which the opposition is based are the following:
German
trade mark No 2 089 978 for the figurative mark
Class 25: Printed clothing.
Class 40: Textile finishing by screen printing.
German trade mark No 30 562 510 for the word mark ‘THE MIGHTY PIT BULLS’
Class 25: Clothing, headgear, footwear.
German
trade mark No 30 650 847 for the figurative mark
Class 14: Precious metals and their alloys and goods produced and coated therewith, not included in other checkout 14; jewelery, jewelery; horological and chronometric instruments; badges, pins, ashtrays, key rings, belt buckles, buckles, all goods included in class 14.
Class 24: Textiles and textile goods, included in class 24; bed and table covers; pennants and flags (not of paper).
Class 25: Clothing, footwear, headgear.
Class 26: Patches (haberdashery).
According to Rule 22(3) EUTMIR, 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.
On 21/01/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/03/2015 to submit evidence of use of the earlier trade marks. Following the opponent’s request of 25/03/2015, this time limit was extended by two months. On 26/05/2015, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The opponent has organised the evidence into two parts according to the earlier marks involved.
However, the Opposition Division has to make its own assessment of the evidence, in particular as regards which trade mark is displayed on the evidence. Therefore, the whole evidence is assessed in relation to all three abovementioned earlier marks in order to determine if the earlier marks have been put to genuine use.
Therefore, the evidence to be taken into account is the following:
First part:
Item 1: a written statement signed on 14/05/2015 by Achim Langer (the opponent), stating that Pit Bull Anziehsachen GmbH has been using the earlier trade marks on which the opposition is based for clothing, textile goods, accessories and related goods with the consent of the opponent.
Items 2-7: four invoices dated between 06/01/2009 and 17/07/2009 and issued to customers with addresses in the Czech Republic, Germany and Italy; four invoices dated between 04/01/2010 and 21/07/2010 and issued to customers with addresses in Austria, the Czech Republic and Germany; five invoices dated between 03/01/2011 and 25/11/2011 and issued to customers with addresses in Austria, the Czech Republic, France and Germany; five invoices dated between 09/01/2012 and 30/11/2012 and issued to customers with addresses in the Czech Republic, Germany and the Netherlands; eight invoices dated between 14/01/2013 and 25/11/2013 and issued to customers with addresses in the Czech Republic, Germany, Greece and France; and five invoices dated between 21/01/2014 and 20/03/2014 and issued to customers with addresses in the Czech Republic, Germany and the Netherlands. The invoices are in German and were issued by Pit Bull Anziehsachen GmbH, a German company with an address in Frankfurt am Main, Germany. Some of the goods in the invoices are referred to as T-shirts, sweatshirts, polo-shirts, shorts, etc. The goods are indicated by descriptions and article codes. The prices of the goods and the total amounts have been covered in some of the invoices but are left visible in others.
Item 8: two undated photographs of a label, showing the following sign:
.
Item 9: a copy of a product catalogue in German, issued by Pit Bull Anziehsachen GmbH, dated 2013 and showing the sign
on its front cover. It shows T-shirts, sweatshirts and other pieces
of clothing bearing, inter alia, the sign
,
printed on them in various colours, either alone or in combination
with other images.
Item 10: several extracts from the website www.pitbullfrankfurt.de, in German, obtained using the digital archive for information Wayback Machine and referring to dates between 2009 and 2014 (within the relevant period). The printouts show pictures of clothing. Some of the pictures are not visible and some show articles of clothing and headgear bearing, inter alia, the signs
and
.
Item 11: several extracts from the Facebook online shops of Casual.cz and Rascal Streetwear, obtained on 12/03/2015 and showing publications from 2009, 2011, 2012 and 2013 of clothing and headgear bearing, inter alia, the signs
and
.
Item 12: undated product catalogues in German, issued by Pit Bull Anziehsachen GmbH and showing the signs
,
,
,
,
and
on their covers. The catalogues mainly show various articles of
clothing (T-shirts, sweatshirts, jackets, shorts) bearing various
signs, including
,
and
,
depicted in different colours, either alone or in combination with
other images.
Second part:
Item 1: a written statement, which was already submitted as Item 1 of the first part of the evidence.
Item 2: extracts from product catalogues with the signs
and
on their covers, showing clothing on which various images are
printed, including, inter alia,
and
.
These extracts appear to be from the product catalogues that were
already submitted as part of Item 12 of the first part of the
evidence.
Item 3: eight invoices (one of them submitted twice) issued between 2009 and 2014, which were already submitted as part of Items 2-7 of the first part of the evidence.
The applicant argues that the opponent did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely the invoices and product catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.
The applicant also contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.
According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied, by analogy, to earlier marks registered in Member States.
The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).
Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.
The fact that earlier German trade mark No 2 089 978 is co-owned by two individuals, as pointed out by the applicant, does not change the aforementioned findings. The applicant argues that the other co-owner of the earlier mark, Volker Albishausen, has not given his consent for use of the mark by a third party. However, the Office cannot enter into disputes between co-owners of earlier marks, which need to be settled before the appropriate national authorities. As far as the Office is concerned, the co-owner of the earlier mark as recorded on the extract proving the registration of that trade mark is entitled to file an opposition. If an earlier mark has more than one proprietor (co-ownership), the opposition may be filed by any or all of them. Consequently, the facts that the opposition has been filed by Achim Langer, co-owner of the abovementioned earlier mark, and that he has been able to submit evidence of use of its mark by a third party are sufficient for the Opposition Division to accept such use as equivalent to use made by the opponent.
To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by another company was made with the opponent’s consent and thus is equivalent to use made by the opponent.
The applicant contests the probative value of the evidence of use filed by the opponent. As far as the written statement submitted as Item 1 is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the written statement are supported by the other items of evidence.
The applicant also argues that the invoices submitted by the opponent are not signed and may have been fabricated. However, the signature of the biller or its representative is not one of the formal requirements for invoices, and they cannot be invalidated solely on these grounds. Therefore, the Opposition Division considers that these documents are in order. There are no objective reasons to doubt the authenticity of the documents and the applicant has not put forward any evidence in this regard.
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent and nature of use of the goods and services for which the earlier marks are registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Earlier German trade marks No 30 562 510 and No 30 650 847 – Assessment of genuine use
Having
examined the material listed above, the Opposition
Division
finds that the evidence is insufficient to establish genuine use of
German
trade mark No 30 562 510 for the word mark ‘THE
MIGHTY PIT BULLS’ and German trade mark No 30 650 847
for the figurative mark
.
None
of the evidence relates to the word mark ‘THE MIGHTY PIT BULLS’.
The evidence shows use
of the sign
in various colours. Such use cannot be considered use of the earlier
mark ‘THE MIGHTY PIT BULLS’ as registered,
since the
distinctiveness of the sign is affected by the omission
of the first part of this mark, ‘THE MIGHTY’. The
Opposition Division considers that the use of the sign
cannot be considered to constitute a
form of the earlier mark ‘THE
MIGHTY PIT BULLS’ which
does not alter the distinctive character of the mark. In view of the
above, the Opposition Division considers that the evidence does not
demonstrate use of the sign ‘THE
MIGHTY PIT BULLS’ as
registered within the meaning of Article 15(1)(a) EUTMR for
the goods for which it is registered.
As
regards the figurative mark
,
it is true that the figurative element
is printed on some T-shirts and other clothing articles, just like
many other images, such as
,
,
,
,
,