CANCELLATION No 17 122 C (INVALIDITY)

Sport Direct B.V., Teugseweg 42, 7418 AM Deventer, The Netherlands (applicant), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP 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 (EUTM proprietor), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative).

On 28/03/2019, 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 25/10/2017, the applicant filed an application for a declaration of invalidity against part of the services of European Union trade mark No 13 104 716 (figurative mark) namely against the services in Class 35. The application is based on the trade name sportdirect.com and the company name Sport Direct B.V., both claimed to have been used in the course of trade for more than mere local significance in the Benelux countries, for the business activities 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 applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE

The applicant claimed that it has the right to prohibit use of the subsequent EUTM according to Art. 2.19 of the Benelux Convention on Intellectual Property Rights, Art 1 of the Dutch law of 05/07/1921 on trade names/company names (Handelsnaamwet) and Article 6:162 in the Dutch Civil Code (Burgerlijk Wetboek). It filed evidence to prove that its rights to the abovementioned trade and company names were acquired, and result from use prior to the registration of the contested mark, and that they were used in the course of trade of more than mere local significance in the Netherlands, for services in Class 35.

In support of its observations, the applicant filed the following evidence:

EXHIBIT I: Art. 2:19 Benelux Convention on Intellectual property rights. This document is not translated into English although the applicant claimed the contrary.

EXHIBIT II: Art. 1 of the Dutch law of 5 July 1921 on the trade names/company names (Handelsnaamwet), including a partial English translation;

EXHIBIT III: Art. 6:162 of the Dutch Civil Code (Burgerlijk Wetboek), including English translation;

EXHIBIT IV: Invoices;

EXHIBIT V: Extract from the Chamber of commerce regarding Sport Direct B.V.;

EXHIBIT VI: Whois details of www.sportdirect.com;

EXHIBIT VII: Copy of the judgement of the Dutch Court of Appeal of Arnhem dated 17/05/2011, and an English translation of the relevant parts, in which, the applicant claims, that the court has confirmed that the applicant owns valid rights to SPORT DIRECT and sportdirect.com;

EXHIBIT VIII: Various advertisement materials, labels, tags, packaging design and job advertisements, partly translated;

EXHIBIT IX: WayBackMachine results for www.sportdirect.com, past and present;

EXHIBIT X: Copies from applicant's product catalogues;

EXHIBIT XI: Sponsorships contracts;

EXHIBIT XII: Screenshots of soccer matches;

EXHIBIT XIII: Guidelines for Examination of EU trademarks Part C – Opposition - Section 4, version 23/03/2016;

EXHIBIT XIV: Copies of Statements of Grounds in other matters between the parties, namely appeals before the Board of Appeal of the EUIPO;

EXHIBIT XV: Copies of decisions of EUIPO in other matters between the parties.

The EUTM proprietor claimed that the applicant has not met the requirements of Article 8(4) as to the reliance on Dutch trade names, in particular it did not fulfil the second two conditions under the respective article, namely proving the acquisition prior to the EUTM application under the law of the Member State governing that sign and the right to prohibit the use of a subsequent trade mark under the law of the Member State governing that sign. In other words, the EUTM proprietor claims that the material submitted and relied upon to prove the applicability of the Dutch law provisions was insufficient. It referred to a previous decision of the Office between the same parties (opposition B 2 042 573) which has the same cause of action as the present invalidity request. In the respective case the opposition was rejected because the opponent has not submitted sufficient information on the legal protection granted to the type of trade sign involved (same earlier rights as in the present invalidity). The proprietor claims that the same decision should be taken in the case at issue.

Both parties reiterated their previous arguments and contested the claims of the opposing party.

The applicant reminded the EUIPO that it had held, in six other parallel opposition proceedings (Nos B 2 705 534, B 2 042 557, B 2 042 656, B 2 042 607, B 2 042 664 and B 2 490 764), in favour of the applicant, that identical/similar evidence of use, and of the applicable law, filed on behalf of the applicant, was accepted as sufficient to demonstrate the existence and validity of the applicant’s earlier rights invoked also in the present proceeding under the applicable law in the Netherlands.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 60(1)(c) IN CONNECTION WITH ARTICLE 8(4) EUTMR

According to Article 60(1)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

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 applicant acquired rights to the sign on which the application for a declaration of invalidity 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 application for a declaration of invalidity 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.

The right under the applicable law

In the present case, the applicant invokes in its observations only provisions of the Dutch laws as mentioned above in the previous section and filed in this sense exhibits I, II and III as well as exhibit XIII.

According to Article 7(2)(d) EUTMDR, if the opposition is based on earlier rights, namely the company and trade names mentioned above, within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of their acquisition, continued existence and scope of protection. The article is equally applicable to invalidity proceedings by virtue of Article 16(1)(b) EUTMDR.

Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the applicant to provide EUIPO ‘not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Cancellation Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the applicant must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. As explained in the Office’s guidelines (Part C, Section 4), the applicant must provide a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the applicant is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the applicant must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation. (emphasis added)

At this point, the Cancellation Division notes that, as the EUTM proprietor correctly observed, the applicant did not provide a translation into English of exhibit I which, from the outset is contrary to the abovementioned requirements. However, the respective translation was submitted later on by the proprietor who took it from the previous multiple parallel proceedings in which both parties were involved.

Furthermore, the applicant must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the applicant relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the applicant referred to the following legal provisions:

Art. 2.19 of the Benelux Convention (English translation provided by the EUTM proprietor):

1. With the exception of the holder of a trademark which is well known within the meaning of Article 6bis of the Paris Convention, and regardless of the nature of the action bought, no-one may claim in court protection for a sign deemed to be a trade mark as defined in Article 2.1.(1) and (2) unless that claimant can provide evidence of registration of the trade mark which it has filed.

2. If appropriate, non-admissibility may be set aside ex officio by the judge.

3. The provisions of this title shall not in any way detract from the right of the users of the sign which is not regarded as a trade mark within the meaning of Art.2.1.(1) and (2) to invoke ordinary law insofar as this allows an objection to be raised to unlawful use of that sign.

Art. 6:162 of the Dutch Civil Code (English translation provided by the applicant):

1. He who commits an illegal act towards someone else, which may be imputed to him, is obliged to compensate the damage the other party suffers as a result.

2. An illegal act is considered an infringement of a right and acting or failing to act in conflict with a legal obligation or with what is becoming in society, all this except for the presence of a ground of justification.

3. An illegal act may be imputed to the offender, if it is due to his fault or to a cause, which pursuant to the law or the opinions in society is at his account.

Art. 1 of the Dutch law on trade names/company names (Handelsnaamwet) (English translation provided by the applicant):

‘By company name/trade name this law understands the name under which a company is conducted.’

The Cancellation Division underlines at this point that, in order for a national earlier right falling under Article 8(4) EUTMR to be protected, that right has to confer upon its owner the right to prohibit the use of a later trade mark. This requires a finding that under the applicable Dutch national law, a trade name or a company name, in the abstract, is an exclusive right enforceable by means of an injunction vis-à-vis later marks. In other words, the applicant must establish that he has available to him a right to prohibit the use of a subsequent trade mark.

The applicant further explained in its observations that:

According to Art. 2.19 Benelux Convention on Intellectual Property Rights, the Dutch law of 5 July 1921 on trade names/company names (Handelsnaamwet) and art. 6:162 of the Dutch Civil Code (Burgerlijk Wetboek) in combination with consistent Dutch jurisprudence prior company name/trade name rights confer on the proprietor the right to prohibit the use of a subsequent trade mark, where there is a risk of confusion. In addition, in the Netherlands the right to a trade name/company name is acquired by its use; there is a possibility to have the trade name registered with the Trade Register at the Chamber of Commerce, but there is no obligation to do so, and doing so does not provide any right. There is no particular requirement that the trade name be distinctive and non-descriptive (see also The Manual concerning Opposition – Part 4, Article 8(4) EUTMR).

The rights conferred are the right to prohibit use of subsequent (registered) trade marks, and the condition is that likelihood of confusion is found (excerpt from the EUIPO guidelines, Part C, Section 4, Rights under article 8(4) and 8(4a) EUTMR, p.36 (exhibit XIII). ‘

However this is not sufficient to prove the conditions under which the applicable law gives the owner of an earlier trade name the right to prohibit use of a subsequent trade mark. The provisions of the Dutch Civil Code cited by the applicant do not contain sufficient indications on the scope of protection of the earlier right and in particular the injury against which protection is provided (e.g. likelihood of confusion, misrepresentation, evocation etc.) and do not support its allegations that the owner of a prior company or trade name has the right to prohibit the use of a subsequent trade mark where there is a likelihood of confusion.

The fact that the applicant submitted as Exhibit XIII a copy of the Opposition Guidelines (version: March 2016) or that it made a general reference to the Office’s Guidelines on Article 8(4) is not of such a nature as to lead to a different conclusion. As already shown above, the applicant has to prove the content of the national applicable law; therefore, it is not sufficient to make a general reference to the national legislation, which was listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR. The important footnote stating that the contents of the table above are largely based on information and feedback from trade mark offices and user associations in 2013/2014. However, it is not a legal source and is made available for information purposes only. It may not contain the latest legislative developments or an exhaustive list of all national rights that can be invoked under Article 8(4) EUTMR” appeared in the respective Annex on its first page. Last but not least, the respective Annex was taken out of the Guidelines coming into effect on 01/10/2017 (which was prior to the application for the invalidity), precisely to avoid the situation where users rely exclusively on the information available therein when invoking rights under Articles 8(4) or 8(4a) EUTMR.

Furthermore, the information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the EUTM proprietor to exercise the right of defence. In some cases it is particularly useful to submit evidence of relevant case-law and/or jurisprudence interpreting the law invoked. Although this was done in the present case (the judgment filed as Exhibit VII) the translated paragraphs are insufficient to compensate the lack of clarity of the invoked legal provisions. Contrary to the applicant’s claims, the inference from the partial English translation submitted by the applicant is that the judgment refers to a case involving the infringement of a trade mark by the use of a similar company/trade name and not to the infringement of a trade name by the use of a subsequent trade mark. Therefore, this document fails to demonstrate that under the applicable Dutch national law, a trade name or a company name, in the abstract, is an exclusive right enforceable by means of an injunction vis-à-vis later marks.

To sum up, apart from the reference to the abovementioned provisions of the Articles 2.19 of the Benelux Convention, 6:162 of the Dutch Civil Code and 1 of the Dutch law on trade names/company names, the applicant did not provide any evidence about the possible content of the invoked rights and what conditions are to be fulfilled in the present case in order for the applicant to be able to prohibit the use of the contested trade mark under such laws in the Member State mentioned by the applicant.

The Office must effectively assess the applicability of the ground for refusal invoked. In order to ensure the correct application of the law invoked, the Office has the power to verify, by whatever means it deems appropriate, the content, the conditions governing the application and the scope of the provisions of the applicable law relied upon by the applicant (27/03/2014, C 530/12P (cited above), Mano, EU:C:2014:186, § 44-46), while respecting the parties’ right to be heard. If, after verifying the evidence submitted, the Office is of the opinion that the parties’ proposed interpretation or application of the law invoked was inaccurate, it can introduce new and/or additional elements. In order to respect the parties’ rights to be heard, the Office will invite the parties to comment on these elements, where appropriate.

This power of verification is however limited to ensuring the accurate application of the law relied upon by the applicant. It does not therefore discharge the applicant from the burden of proof and it cannot serve to substitute the applicant in adducing the appropriate law for the purposes of its case (decision of 02/06/2014, R 1587/2013-4, GROUP, § 26, and decision of 30/06/2014, R 2256/2013-2, (+) ENERGY / ENERGETIX, § 26).

The Cancellation Division considers that the principles settled by the Court in the judgment of case C-530/12P cannot be applied in the present case. It is clear from the cited case-law, that the power of verification of the Office becomes incident only where the applicant points out, explains and demonstrates the provisions of the national law and the legal context relied upon in that regard, as a condition for the substantiation of the earlier rights relied upon, which the applicant ab initio failed to do. As explained in detail above, the applicant did not submit sufficient information on the legal protection granted to the types of earlier rights invoked, namely company name and trade name in the Netherlands.

The applicant refers to previous Office decisions to support its arguments, in particular to six previous opposition decisions in which the EUIPO’s Opposition Division considered that the applicant managed to prove that it has earlier rights under Article 8(4) in the Netherlands. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Cancellation Division are to some extent factually similar to the present case, the outcome may not be the same.

In addition, it should be noted that those previous decisions have been appealed and are not yet final.

The main reason for rejecting the opposition filed by the invalidity applicant in the decision of 18/07/2016, B 2 490 764, was the absence of the provisions of the applicable law in the original language (reasoning in line with the EUIPO’s Guidelines and following the Office’s practice at that moment); secondary, the same reasons mentioned above in the present decision were, for the sake of completeness, explained.

By decision of 25/04/2017, R 1703/2016-1, the Board of Appeal annulled the respective decision “insofar as the opposition was rejected under Article 8(4) EUTMR, on the ground that the opponent failed to prove the content of the national Dutch and Benelux laws, by filing a translation of the relevant provision, in English, which is the language of the proceedings”. Therefore, the Board of Appeal did not pronounce on whether the opponent (i.e. the applicant in this case) managed to prove the requirements of Article 8(4) EUTMR and, in particular, if it had a “right under the applicable law” to prohibit the use of a subsequent trade mark.

The Board of Appeal remitted the case back to the Opposition Division for further prosecution. On 30/08/2017, the Opposition Division issued a new decision in which it referred to the evidence submitted by the opponent and to the same provisions invoked in the present proceedings (i.e. Art.2.19 of the Benelux Convention, Art. 6:162 of the Dutch Civil Code and the Dutch law on trade names/company names). The Opposition Division reasoned that the rights conferred are the right to prohibit use of subsequent (registered) trade marks, that the condition is that likelihood of confusion is found, referring also in this sense to the Annex to the EUIPO Guidelines Part C, Opposition, Section 4, Rights under Article 8(4) and 8(4a) EUTMR and mentioning that the “opponent provided this information”. The rest of the opposition cases invoked by the applicant in its favour follow the same pattern and were reasoned identically on this specific issue by the Opposition Division.

It is not under the Cancellation Division’s powers to decide whether the above reasoning of the Opposition Division is flawed or not, considering the evidence submitted by the opponent. That prerogative to decide falls on the EUIPO’s Boards of Appeal, where the cases are currently pending a decision. Nonetheless, the Cancellation Division is not bound by the previous findings in opposition proceedings, otherwise the provisions of the EUTMR regarding applications for invalidity based on relative grounds would be, in the event of a prior opposition, deprived of any practical effects (14/10/2009, T 140/08, TiMiKinderjoghurt, EU:T:2009:400, § 36; appeal dismissed). As a result, in the case at issue, the Cancellation Division considers that based on the evidence submitted and the legal provisions invoked by the applicant it cannot infer that the latter has the right to prohibit the use of the EUTM and, therefore, a different decision than the one taken by the Opposition Division in the cases invoked by the applicant is required.

As at least one of the necessary requirements of Article 8(4) EUTMR is not met, the application for a declaration of invalidity is not well founded under Article 60(1)(c) in connection with Article 8(4) EUTMR.

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

Oana-Alina STURZA

Ioana MOISESCU

José Antonio GARRIDO OTAOLA

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.