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).
Class 25: Headgear; footwear; clothing.
Class 28: Sporting articles included in this class.
Class 35: Sale services relating to clothing.
Union trade mark application No
3. Each party bears its own costs.
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:
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 produ