OPPOSITION DIVISION

PPOSITION No B 2 968 975

NBA Properties, Inc., Olympic Tower, 645 Fifth Avenue, New York, New York 10022, United States (opponent), represented by Stratagem IPM Ltd, Meridian Court Comberton Road, Toft, Cambridge CB23 2RY, United Kingdom (professional representative)

a g a i n s t

POWRX GmbH, Robert-Bosch-Str. 7, 73257 Köngen, Germany (applicant), represented by Hans Baumann, Am Wallgraben 99, 70565 Stuttgart, Germany (professional representative).

On 08/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 968 975 is partially upheld, namely for the following contested goods:

Class 25: Suits; Layettes [clothing]; Babies' pants; Swimming costumes; Bathing drawers; Bathrobes; Swimming caps; Bath sandals; Bath slippers; Bandanas [neckerchiefs]; Berets; Clothing; Clothing of imitations of leather; Motorists' clothing; Paper clothing; Boas; Bodies; Brassieres; Gowns; Insoles; Fishermen's smocks; Football boots; Studs for football boots; Footmuffs; Waist belts; Money belts; Headgear; Footwear, other than shoe caps (toe caps and heel caps); Mittens; Clothing for gymnastics; Gymnastic shoes; Half-boots; Scarves; Gloves [clothing]; Shower caps; Slippers; Ladies' shirts; Shirts; Wooden shoes; Trousers; Braces for clothing [suspenders]; Girdles; Hats; Jackets [clothing]; Jumpers; Hoods [clothing]; Headgear; Camisoles; Corsets; Collars; Neckties; Clothing of leather; Leather clothing; Coats; Corselets; Robes; Caps [headwear]; Ear muffs [clothing]; Combinations [clothing]; Slippers; Sweaters; Pyjamas; Cyclists' clothing; Mackintoshes; Skirts; Sandals; Neck scarfs [mufflers]; sashes (for wear); overall sleepwear; Knickers; Lace boots; Low shoes; Footwear; Overalls; Briefs; Socks; Athletics shoes; Boots; Headbands [clothing]; Stockings; Sweaters; Knitwear [clothing]; Singlets; Tee-shirts; Uniforms; Underwear; Pants; Wetsuits for water-skiing; Waistcoats.

Class 28: Motorised and hand-operated training apparatus; Racing track mats; Horse-riding machines; Vibration plates (sporting apparatus); Bodybuilding apparatus; Elbow guards (sport articles); Chest expanders [exercisers]; Exercise cycles; Gymnastic articles; Bar-bells; Fitness exercise machines; Balls; Baseball gloves; Leg guards Decision on Opposition No B 2 968 975 page: 2 of 25

(sporting articles); Bob-sleighs; Boxing gloves; Gut for rackets; Discuses for sports; Kites (sporting articles); Skates (ice- ); Protective elbow pads (sporting articles); Fencing gauntlets; Fencing masks; Fencing weapons; Shuttlecocks; Foils for fencing; Rifles (sporting articles); Weight lifting belts (sporting articles); Paragliders; Golf gloves; Golf clubs; Golf bags, with or without wheels; Climbers' harness; Hang gliders; Climbing belts (sporting articles); Knee guards (sport articles); Tennis nets; Darts; Paint guns (sporting articles); Quoits; Punching bags; Surfboard leashes; Slides [playthings]; Rollers for stationery exercise bicycles; Roller skates; Strings for rackets; Archery implements; Ice skates; boots with skates attached; Snow shoes; Snowboards; Flippers for swimming; Sole coverings for skis; Ski bindings; Skis; Bags, specially adapted for skis and snowboards; Slot machines [gaming machines]; Toys; Rackets; Catapults (sporting articles); Masts for surfboards; Harness for sailboards; Golf club bags; Tennis ball throwing apparatus; Tables for table tennis; Indoor football tables; Clay pigeons [targets]; Clay pigeon traps; Spring boards (sporting articles); Waterskis.

2. European Union trade mark application No 16 203 564 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union

trade mark application No 16 203 564 . The opposition is based on European Union trade mark registrations No 12 739 751

and No 14 103 824 . The opponent invoked Article 8(1) (b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. Decision on Opposition No B 2 968 975 page: 3 of 25

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 27/12/2016.

Earlier trade marks No 12 739 751 and No 14 103 824 were registered on 22/08/2014 and on 26/10/2015, respectively. Therefore, the request for proof of use is inadmissible.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods and services on which the opposition is based are the following:

EUTM No 12 739 751

Class 9: Audio recordings and video recordings featuring entertainment and information in the field of basketball; audio discs, video discs, computer laser discs, pre-recorded audio and video cassettes, pre-recorded audio and video tapes, pre-recorded compact discs, pre-recorded computer laser discs, all featuring entertainment and information related to basketball; computer accessories, namely flash drives, computer stands, mouse pads, mice, disc cases, computer carry-on cases, computer sleeves, keyboard wrist pads, all related to basketball; computer programs for viewing information, statistics or trivia about basketball; computer software, namely screen savers featuring basketball themes; computer software to access and view computer wallpaper; computer browser software for use in viewing and displaying data on the Internet; computer skins, namely, fitted plastic film for covering and providing a scratch proof barrier for computer devices; computer game software; video game software, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely headsets, skins, Decision on Opposition No B 2 968 975 page: 4 of 25

face plates and cell phone covers; electronics accessories, namely skins, covers and stands for MP3 players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; sunglasses; eyeglass frames; eyewear straps and chains; eyeglass and sunglass cases; magnets; disposable cameras; credit cards and pre-paid telephone calling cards magnetically encoded; downloadable video recordings, video stream recordings, and downloadable audio recordings in the field of basketball provided over the Internet; downloadable computer software for viewing databases of information, statistical information, trivia, polling information, and interactive polling in the field of basketball provided over the Internet; downloadable computer game software; downloadable interactive video games and downloadable trivia game software provided over the internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing data on the Internet, for use in designing plastic film computer skins to protect computer monitors, for use in creating avatars for playing games and for use in remotely manipulating computer cursors over the Internet; downloadable electronic publications in the nature of magazines, newsletters, coloring books, game schedules all in the field of basketball provided over the Internet; downloadable catalogs provided over the Internet featuring an array of basketball-themed products; downloadable greeting cards provided over the Internet.

Class 25: Clothing; footwear, basketball shoes, basketball sneakers, sandals, beach sandals; hosiery, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties, nightshirts, warm-up suits, warm-up pants, warm-up tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts, slacks, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey dresses, dresses, cheerleading dresses and uniforms; swim wear, bathing suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps, beach hats, sun visors, swim caps, bathing caps; hats, caps, visors, novelty headwear with attached wigs.

Class 28: Toys, games and sporting goods; basketballs, golf balls, playground balls, sports balls, rubber action balls and foam action balls, plush balls for games, plastic balls for games; basketball nets, basketball backboards, miniature basketball backboards, pumps for inflating basketballs and needles therefore; golf clubs, golf bags, golf putters, golf accessories, namely, divot repair tools, tees, ball markers, golf bag covers, club head covers, golf gloves, golf ball sleeves, golf putting greens; billiard cue racks, billiard balls, billiard ball racks, dart board cabinets, electronic basketball table top games, basketball table top games, basketball board games, action skill Decision on Opposition No B 2 968 975 page: 5 of 25

games, adult's and children's party games, trivia information games and electronic video arcade game machines, basketball kit comprised of a net and whistle; dolls, decorative dolls, collectible dolls, toy action figures, bobblehead action figures, stuffed toys, plush toys; jigsaw puzzles, toy building blocks; Christmas tree ornaments and Christmas stockings; toy vehicles in the nature of cars, trucks, trains and vans, all containing basketball themes, novelty foam toys in the shapes of fingers and trophies, toy trophies, playing cards, card games, toy noisemakers, pet toys; beach toys, namely, beach balls, inflatable balls, toy pails, toy shovels, sand toys, sand box toys, water-squirting toys; pool accessories, namely swim floats, pool floats, toy water rafts, foam floats, swim rings, pool rings, foam rings, body boards, surf boards, swim fins, surf fins, arm floats and water wing swim aids, all for recreational use; volleyball game kits comprised of ball, net, sidelines and whistle, and water polo game kits comprised of ball, net and whistle; decorative cloth wind socks; miniature stadium reproductions, namely, small toy plastic models of a stadium; snow globes; video game machines for use with television and video game hand held controllers for use with console video gaming systems.

EUTM No 14 103 824

Class 9: The same as EUTM No 12 739 751 plus decorative cloth wind socks.

Class 16: Publications and printed matter; basketball trading cards, trading cards, stickers, decals, commemorative basketball stamps, collectible cardboard trading discs, postcards; memo boards, clipboards; paper coasters, place mats of paper, facial tissues; note cards, memo pads, note pads, scrap books; ball point pens, crayons, felt tip markers, rubber bands, pencils, pen and paper holders, desktop document stands, rubber stamps, drafting rulers; paper banners and flags, 3-ring binders, stationery folders, wirebound notebooks, portfolio notebooks, unmounted and mounted photographs, posters, calendars, bumper stickers, book covers, bookmarks, wrapping paper, children's activity books, children's coloring books; statistical books, guide books, and reference books, all in the field of basketball; magazines in the field of basketball, catalogs in the field of basketball, commemorative game and souvenir programs related to basketball; paper pennants, stationery, stationery-type portfolios, invitation cards, printed certificates, greeting cards, Christmas cards, holiday cards; informational statistical sheets for basketball topics; newsletters, brochures, pamphlets, and game schedules in the field of basketball; bank checks, check book covers, check book holders, comic books; non-magnetic credit cards and telephone calling cards not magnetically encoded; money clips. Decision on Opposition No B 2 968 975 page: 6 of 25

Class 18: Athletic bags, shoe bags for travel, overnight bags, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote bags, drawstring pouches, luggage, luggage tags; canes, umbrellas, patio umbrellas, beach umbrellas, golf umbrellas; valises, attaché cases, billfolds, wallets, briefcases, business card cases, book bags, all-purpose sports bags, gym bags, purses, coin purses, fanny packs, waist packs; cosmetic cases sold empty, garment bags for travel, handbags, key cases, leather key chains, suitcases, toiletry cases sold empty, trunks for traveling and rucksacks; foot lockers; pet clothing, pet leashes, and pet collars.

Class 25: The same as EUTM No 12 739 751 plus headgear and slippers.

Class 28: The same as EUTM No 12 739 751, but golf accessories, beach toys, pool accessories and miniature stadium reproductions not limited to the goods expressly mentioned, and except decorative cloth wind socks (here classified in Class 9).

Class 35: Retail store services, computerized on-line retail store services, online ordering services, electronic retail store services via computer, and electronic mail order catalog services, all featuring an array of basketball-themed merchandise; promoting the goods and services of others by arranging for sponsors to affiliate these goods and services with a basketball program; promoting the sale of goods and services of others through the distribution of promotional contests provided over the internet; conducting public opinion poll surveys and public opinion poll surveys in the field of basketball for non-business, non-marketing purposes over the internet.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions; the production and distribution of radio and television shows featuring basketball games, basketball events and programs in the field of basketball; conducting and arranging basketball clinics and camps, coaches clinics and camps, dance team clinics and camps and basketball games; entertainment services in the nature of personal appearances by a costumed mascot or dance team at basketball games and exhibitions, clinics, camps, promotions, and other basketball- related events, special events and parties; fan club services; entertainment services, namely providing a website featuring multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings in the field of basketball; providing news and information in the nature of statistics and trivia in the field of basketball; on-line non- downloadable games, computer games, video games, interactive video games, action skill games, arcade games, adults' and children's party games, board games, puzzles, and Decision on Opposition No B 2 968 975 page: 7 of 25

trivia games; electronic publishing services, publication of magazines, guides, newsletters, coloring books, and game schedules of others on-line through the Internet, all in the field of basketball; providing an online computer database in the field of basketball.

The contested goods are the following:

Class 25: Suits; Layettes [clothing]; Babies' pants; Swimming costumes; Bathing drawers; Bathrobes; Swimming caps; Bath sandals; Bath slippers; Bandanas [neckerchiefs]; Berets; Clothing; Clothing of imitations of leather; Motorists' clothing; Paper clothing; Boas; Bodies; Brassieres; Gowns; Insoles; Fishermen's smocks; Football boots; Studs for football boots; Footmuffs; Waist belts; Money belts; Headgear; Fittings of metal for shoes and boots; Footwear, other than shoe caps (toe caps and heel caps); Mittens; Clothing for gymnastics; Gymnastic shoes; Half- boots; Scarves; Gloves [clothing]; Shower caps; Slippers; Ladies' shirts; Shirt yokes; Shirts; Wooden shoes; Trousers; Braces for clothing [suspenders]; Girdles; Hats; Jackets [clothing]; Jumpers; Toe caps; Hoods [clothing]; Headgear; Camisoles; Corsets; Collars; Neckties; Clothing of leather; Leather clothing; Coats; Corselets; Robes; Caps [headwear]; Cap peaks; Ear muffs [clothing]; Combinations [clothing]; Slippers; Sweaters; Pyjamas; Cyclists' clothing; Mackintoshes; Skirts; Sandals; Neck scarfs [mufflers]; sashes (for wear),; overall sleepwear; Knickers; Lace boots; Non-slipping devices for boots and shoes; Low shoes; Footwear soles; Footwear; Overalls; Briefs; Socks; Athletics shoes; Boots; Headbands [clothing]; Stockings; Sweaters; Knitwear [clothing]; Singlets; Tee-shirts; Uniforms; Underwear; Pants; Wetsuits for water-skiing; Waistcoats.

Class 28: Motorised and hand-operated training apparatus; Racing track mats; Horse-riding machines; Vibration plates (sporting apparatus); Bodybuilding apparatus; Elbow guards (sport articles); Chest expanders [exercisers]; Exercise cycles; Gymnastic articles; Bar-bells; Fitness exercise machines; Balls; Baseball gloves; Leg guards (sporting articles); Bob-sleighs; Boxing gloves; Gut for rackets; Discuses for sports; Kites (sporting articles); Skates (ice- ); Protective elbow pads (sporting articles); Fencing gauntlets; Fencing masks; Fencing weapons; Shuttlecocks; Foils for fencing; Rifles (sporting articles); Weight lifting belts (sporting articles); Paragliders; Golf gloves; Golf clubs; Golf bags, with or without wheels; Climbers' harness; Hang gliders; Climbing belts (sporting articles); Knee guards (sport articles); Tennis nets; Darts; Paint guns (sporting articles); Quoits; Punching bags; Surfboard leashes; Slides [playthings]; Rollers for stationery exercise bicycles; Roller skates; Strings for rackets; Archery implements; Ice skates; boots with skates attached; Snow shoes; Snowboards; Flippers for swimming; Sole coverings for skis; Ski bindings; Skis; Edges of skis; Bags, specially adapted for skis and snowboards; Slot machines [gaming machines]; Toys; Rackets; Catapults (sporting articles); Masts for surfboards; Harness for sailboards; Decision on Opposition No B 2 968 975 page: 8 of 25

Golf club bags; Tennis ball throwing apparatus; Tables for table tennis; Indoor football tables; Clay pigeons [targets]; Clay pigeon traps; Spring boards (sporting articles); Waterskis.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

The contested suits; layettes [clothing]; babies' pants; swimming costumes; bathing drawers; bathrobes; swimming caps; bath sandals; bath slippers; bandanas [neckerchiefs]; berets; clothing; clothing of imitations of leather; motorists' clothing; paper clothing; boas; bodies; brassieres; gowns; fishermen's smocks; football boots; footmuffs; waist belts; money belts; headgear; footwear, other than shoe caps (toe caps and heel caps); mittens; clothing for gymnastics; gymnastic shoes; half- boots; scarves; gloves [clothing]; shower caps; slippers; ladies' shirts; shirts; wooden shoes; trousers; braces for clothing [suspenders]; girdles; hats; jackets [clothing]; jumpers; hoods [clothing]; camisoles; corsets; collars; neckties; clothing of leather; leather clothing; coats; corselets; robes; caps [headwear]; ear muffs [clothing]; combinations [clothing]; slippers; sweaters; pyjamas; cyclists' clothing; mackintoshes; skirts; sandals; neck scarfs [mufflers]; sashes (for wear); overall sleepwear; knickers; lace boots; low shoes; footwear; overalls; briefs; socks; athletics shoes; boots; headbands [clothing]; stockings; sweaters; knitwear [clothing]; singlets; tee-shirts; uniforms; underwear; pants; wetsuits for water-skiing; waistcoats are identical to the opponent’s goods in this class, either because they are identically contained in all lists (including synonyms, such as cap peaks and visors) or because the opponent’s goods (namely clothing, footwear, hats, caps) include, or are included in, the contested goods (such as suits, football boots, berets, swimming caps, headgear).

The contested insoles and studs for football boots can have the same producers, end users and distribution channels as the opponent’s footwear. Furthermore they are complementary. Therefore, these goods are considered similar.

The contested cap peaks, shirt yokes, footwear soles, fittings of metal for shoes and boots and toe caps are parts and fittings of clothing, headgear and footwear. The mere fact that a certain product can be composed of several components does not automatically establish similarity between Decision on Opposition No B 2 968 975 page: 9 of 25 the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, are present. This is not the case here. The contested goods are addressed at manufacturers, not at the end users of the opponent’s clothing, headgear or footwear, and they are not sold independently, for example as replacements. It follows that these goods do not have the same producers, distribution channels or end users, and that they cannot be considered complementary.

A similar reasoning applies to the contested non-slipping devices for boots and shoes, which have a different nature and purpose from the opponent’s footwear, and different producers and distribution channels. The mere fact that these goods are used together cannot lead to a finding of similarity.

Consequently, the contested cap peaks, shirt yokes, footwear soles, fittings of metal for shoes and boots, toe caps and non-slipping devices for boots and shoes are dissimilar to the opponent’s articles of clothing, headgear and footwear in Class 25 and, a fortiori, to all the other goods and services covered by the earlier marks, which comprise audio-visual content, accessories for computer and electronic equipment, software, optical apparatus and accessories in Class 9, printed matter, stationery, goods made of paper, payment cards and money clips in Class 16, bags, purses and other containers, key chains, luggage tags, umbrellas and pet accessories in Class 18, toys, games, sporting goods and accessories therefor, Christmas decoration in Class 28, retail and promotional services in Class 35 and educational, sporting and cultural services, entertainment and training in Class 41. None of these goods and services has any points of contact under the abovementioned criteria with the contested goods.

Contested goods in Class 28

Toys are identically included in all lists of goods and encompass the contested slides [playthings] which are, therefore, identical to the opponent’s goods.

The contested slot machines [gaming machines] are included in the opponent’s games. Therefore, these goods are identical.

The contested motorised and hand-operated training apparatus; racing track mats; horse-riding machines; vibration plates (sporting apparatus); bodybuilding apparatus; elbow guards (sport articles); chest expanders [exercisers]; exercise cycles; gymnastic articles; bar-bells; fitness exercise machines; balls; baseball gloves; leg guards (sporting articles); bob- sleighs; boxing gloves; discuses for sports; kites (sporting articles); skates (ice- ); protective elbow pads (sporting articles); fencing gauntlets; fencing masks; fencing weapons; shuttlecocks; foils for fencing; rifles (sporting articles); weight lifting belts (sporting articles); paragliders; golf gloves; golf clubs; golf bags, with or without wheels; climbers' harness; hang gliders; climbing belts (sporting articles); knee guards (sport articles); tennis nets; darts; paint guns (sporting articles); quoits; punching bags; roller skates; archery implements; ice skates; boots with skates attached; snow shoes; snowboards; flippers for swimming; skis; rackets; catapults (sporting articles); harness for sailboards; golf club bags; tennis ball Decision on Opposition No B 2 968 975 page: 10 of 25 throwing apparatus; tables for table tennis; indoor football tables; clay pigeons [targets]; clay pigeon traps; spring boards (sporting articles); waterskis are identical to the opponent’s goods in this class, either because they are identically contained in all lists (including synonyms) or because the opponent’s goods (sporting goods; golf bags) include the contested goods.

The contested goods gut for rackets; surfboard leashes; rollers for stationery exercise bicycles; strings for rackets; sole coverings for skis; ski bindings; bags, specially adapted for skis and snowboards; masts for surfboards are parts of and accessories for the opponent’s sporting goods. These goods usually have the same producers, end users and distribution channels. Therefore, they are considered similar.

The contested edges of skis, on the other hand, are addressed at manufacturers, not at the end users of the opponent’s sporting goods, and they are not sold independently, for example as replacements. These goods do not have the same producers, distribution channels or end users, and that they cannot be considered complementary. It follows that they are considered dissimilar to all of the opponent’s goods in Classes 9, 16, 18, 25, 28, 35 and 41, which comprise different categories of goods and services (listed above). None of these goods and services has any points of contact under the abovementioned criteria with the contested goods.

Since the goods that have been found similar or identical are all covered by earlier EUTM No 12 739 751, the Opposition Division finds it appropriate to examine the opposition in relation to that mark only.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed both at the public at large and at professionals in the sports sector with specific knowledge or expertise.

The degree of attention may vary from average (e.g. in relation to general clothing, footwear in Class 25 or toys in Class 28) to above (insofar as professional sporting gear and equipment is concerned), depending on the specialised nature of the goods, the frequency of purchase and their price. Decision on Opposition No B 2 968 975 page: 11 of 25

c) The signs

Earlier trade mark Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is made up of a stylised depiction of a bull’s head in black and white. The depiction is very simplified and consists mainly of black lines, with some more detailed features delineating a frown, giving it a feisty expression.

The contested sign is composed of the stylised depiction of a bull’s head on the upper part of a muscular male body with flexed arms. The depiction is very simplified, black lines sketching the main features on a white silhouette, all this depicted against a black rectangular background. The image conveyed is that of a feisty creature with a bull’s head on a human body.

The figurative elements depicting a bull’s head, constituting the entire earlier mark and included in the contested sign, have no meaning in relation to the relevant goods. They are, therefore, distinctive.

The element depicting the upper part of a beefy male body with flexed arms of the contested sign will be associated with athletic characteristics. Bearing in mind that the relevant goods comprise sporting gear and equipment, this element is weak for most of these goods, with the exception of those goods not related to sport, such as footmuffs in Class 25, and toys and slot machines [gaming machines] in Class 28.

The black background of the contested sign is of a rather decorative nature and, therefore, less distinctive than the figurative element depicted against it. Decision on Opposition No B 2 968 975 page: 12 of 25

Visually, the signs coincide, in principle, in the depiction of a bull’s head. Although the depiction of this element is more detailed and bordered by a black outline in the earlier mark, whereas in the contested sign it is silhouette-like, the cheeks are more rounded, and there are differences in the particular stylisation of the nose, eyes and horns, the stylisation is similar in both marks: both are very simplified depictions, the main characteristics of a bull’s head are sketched in black lines, the proportions are almost identical, and both convey a feisty impression. The marks differ in the human upper body contained in the contested sign only.

Considering that the depiction of the human upper body is weak in relation to most of the relevant goods, the signs’ similarity varies from an average to a low degree, depending on the particular goods.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the concept of the earlier mark is contained in the contested sign, where it is combined with an additional concept which is weak for most of the goods, the signs are conceptually similar to an average to high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the trade marks on which the opposition is based have a reputation in the European Union in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). The Opposition Division finds it appropriate to carry out this assessment in relation to both earlier trade marks on which the opposition is based.

The opponent submitted the following evidence:

 Affidavit by Mr. Anil V. George, Vice President and Assistant General Counsel – Intellectual Property of NBA Properties, Inc. of 19/04/2018. Mr George declares the following: Decision on Opposition No B 2 968 975 page: 13 of 25

The National Basketball Association (NBA) is the world’s premier men’s professional basketball league and consists of 30 member teams located in the US and Canada, established in 1946 and operating under its current name since 1949. The NBA is one of the most well-known, famous and largest providers of sports events and sports entertainment content in the world in all aspects of media, including television, internet, radio, multimedia and print content.

Furthermore, the NBA and its member teams are well known to consumers all over the world, and the NBA’s global consumer merchandising program is extensive, the licensing partners including many well-known companies. NBA league and team branded consumer products are available through the NBA’s licensees through traditional sales outlets as well as internet retailers, and in the NBA’s own online store since 1995, available at several web addresses including one for the European Union, in English, Spanish, French, Italian and German. The NBA online store and the Chicago Bulls online store have offered for sale a large and assorted variety of merchandise depicting the Chicago Bulls team name, the ‘Bulls’ nickname, and/or the bull head logo. NBA merchandise has been sold in thousands of stores in dozens of countries on six continents, with sales of wholesale merchandise in Europe bearing the CHICAGO BULLS & Bull Head Design trade marks amounting to over USD 50 million from 2009 to 2014. Reference is also made to worldwide sales figures for the years 2009 to 2012. In the European Union, NBA merchandising partners include Adidas, DekoGraphics, For Bare Feet, Fox, Sports, Iniziative Comerciali, Mitchell & Ness, New Era Cap, and Sun City Fashion Group.

The Chicago Bulls are a professional basketball team based in Chicago, Illinois. The team began operations and joined the NBA in 1966. The earlier marks have been subject to extensive use in the European Union since then, inter alia, for goods in Classes 9, 14, 16, 18, 20, 25 and 28. They have achieved world wide fame, popularity, iconic status in sports, and household recognition in popular culture, including in the European Union, due to the world wide media coverage of the NBA and its athletes and the tremendous investments to promote, inter alia, Bulls branded consumer products, as well as the phenomenal athletic successes of the Bulls, including superstar Michael Jordan, and the six NBA championships won by them.

Mr. George refers to the amount of ‘NBA and Chicago Bulls websites’ visits from the EU between 2012 and 2017, as well as to sales numbers of ‘CHICAGO BULLS branded merchandise’, ‘CHICAGO BULLS Decision on Opposition No B 2 968 975 page: 14 of 25

player-related merchandise’ and ‘wholesale merchandise’ in the EU/in Europe.

He further refers to the presence of Chicago Bulls and NBA on social media platforms in the EU, listing links to Twitter, Facebook, Instagram and YouTube websites and mentioning the amount of followers in relation to each of them.

Online digital content regarding the NBA is provided on the NBA website www.nba.com and on the Chicago Bulls team website www.nba.com/bulls, depicting the ‘Chicago Bulls’ team name, the ‘Bulls’ nickname, and/or the bull head logo. The website is heavily trafficked and is used by Bulls fans throughout the world and in the European Union, offering merchandise, entertainment, programming, community outreach, Bulls team news and other content. The websites received an average of over 26 million unique visitors internationally each month from 2009 to 2014, including an average of over 1 989 000 unique visitors from the European Union per month.

Moreover, the NBA broadcasts/telecasts its basketball games and other NBA programming in dozens of countries around the world. In the European Union, NBA games, including Bulls games, are broadcast on major networks, including SPORTS+, ESPN Europe, Canal+ Deportes, MCS Extremes, Orange Sport, Sportitalia (NBA TV), Sky Sport and beIN Sports (NBA TV).

Official exhibition games have been hosted internationally and throughout Europe, including in Paris, on 17 and 18/10/1997. More than 80 NBA Global Games have been held in Europe since 1984, spread across Italy, Germany, Spain, France and the UK.

Furthermore, new and refurbished basketball courts, libraries, playgrounds, homes, fitness facilities and technology rooms have been created in conjunction with the NBA league and team community and business partners. Since October 2005, there have been more than 440 of these places created in more than 20 countries, 85 of which internationally, including, as regards the European Union, Italy, Spain, France, Germany, Lithuania, Slovenia and the UK.

NBA Madness events (annual interactive basketball, music and lifestyle events that provide sports and music entertainment in major international cities) have been held in Europe in 2007. NBA Basketball Challenge has established itself as Europe’s preeminent outdoor Decision on Opposition No B 2 968 975 page: 15 of 25

basketball tournament. Reference is made to Germany and France, where the Bouygues Telecom NBA Basketball Challenge contained more than 12 000 players and 200 000 participants. The Budweiser NBA Basket Jam is a touring mobile pop-a-shot competition touring through Barcelona, Spain and Italy.

The NBA has three official European magazines in Italy, Germany and Spain, which routinely provide NBA and Chicago Bulls coverage. They also contain promotional and advertising placements for NBA and Chicago Bulls merchandise.

Mr. George further refers to the following evidence:

 Schedule of trade mark registrations around the world, and certificates of registration of Chicago Bulls marks.

 Documents of unknown origin showing statistics and titled ‘Website visits from Europe between 2012 and 2017. NBA.com and Chicago Bulls related websites’, ‘Site Visits from France for NBA’, ‘Europe End of Season: All Games by Type and Country 2009-2010’, ‘NBA 2010/11: End of Season Summary: Europe: Results by channel and Type of Programming (2010/11)’, with similar documents for 2011/12, 2012/13, 2013/14, 2016/17.

 Printouts from youtube.com, instagram.com, twitter.com, plus.google.com, linkedin.com, facebook.com dated January 2018, showing the NBA’s, NBA Europe’s and the Chicago Bulls’ channels/accounts, including game scores, posts, and pictures of games and players, as well as the number of subscribers/views, where applicable. Some accounts explicitly refer to, inter alia, Chicago Bulls Spain, France or Italy and are in Spanish, French and Italian language, respectively.

 Statistics with regard to the leading brands ranked by number of Instagram followers, dated 2017. The NBA is mentioned.

 Printout from the websites neurope.eu, eurofora.net, theguardian.com showing articles dated between 2009 and 2014 with news on the Chicago Bulls basketball team.

 Screenshots of the NBA store and Chicago Bulls online team store websites dated 06/11/2013 and 12/06/2015, and extracts from the German websites adidas.de, zalando.de, def-shop.com and kickz.com dated 16/10/2013 and amazon.de dated 08/11/2013, with various goods offered for sale, including mainly clothing articles, headgear, Decision on Opposition No B 2 968 975 page: 16 of 25

bags and fashion accessories, as well as some wrist watches, and

merchandise such as key rings. The mark is depicted against a red background at the top, the items themselves partly bear the same sign or the bull’s head device. One screenshot refers to international shipping rates, including the European Union. Prices are listed in USD, GBP and EUR.

 Extracts from the website footlocker.co.uk dated 26/03/2018 and a screenshot from a website named ‘FOOTASYLUM’, undated and not showing the site’s address, showing clothing, footwear and headgear articles, some of which bear the bull’s head logo.

 Extracts of rather bad quality from what appears to be a catalogue, showing articles of clothing, undated.

 ‘Chicago Bulls Apparel Sales – nbastore.eu’ from September 2012 to September 2013 from an unknown source. 41 different items appear to have been sold, some bearing one of the earlier marks, whereas it is not apparent from the document to what extent these sales have taken place. Next to the prices, which are indicated in GBP, there are numbers possibly representing sales numbers. If that is the case, sales numbers appear to have been ranging from 1 to 23 units per item.

 List of ‘2014-2015 NBA Global Broadcast Distribution’ dated 28/10/2014, showing the telecasters per country, without reference to the earlier marks; broadcasting schedules for ‘all games’ of 2014 for Germany, Spain, Italy and the UK, the playing teams being represented in three-letter codes, and showing negligible numbers of broadcasts for the code ‘CHI’ with their exact dates and times (mostly late at night/early in the morning); broadcasting schedules for 2009/2010 for NBA games televised in Italy, where the word ‘Chicago’ appears 26 times. The schedules do not refer to the earlier marks. 42 individual Chicago Bulls games broadcasted in Germany between 2006 and 2013 are listed separately, accompanied by screenshots depicting the verbal elements ’CHICAGO’, ‘CHICAGO Decision on Opposition No B 2 968 975 page: 17 of 25

BULLS’ or the bull’s head logo in various scenarios, such as on the court or with reference to the game score:

Only in three incidences the bull’s head logo is shown with the additional verbal elements ‘CHICAGO BULLS’.

 Extracts from the websites nba.com, biography.com and en.wikipedia.org with the biography of Chicago Bulls player Michael Jordan, describing his accomplishments, acclaim and recognition.

 Extracts from the website nba.com dated 14/02/2018, with a history of the NBA Global Games, and a ‘list of NBA international exhibition games 1988 through 2005’.

 Covers of NBA magazines and advertising material. While the covers of German ‘Basket’ 05/2014 and 05/2011, as well as the Spanish ‘NBA REVISTA OFICIAL’ No 269 of 2015 do not make any reference to the Chicago Bulls or the earlier marks, different versions of the bull’s head logo are depicted on the cover of the Italian ‘NBA Rivista Ufficiale’ of March 2015: Decision on Opposition No B 2 968 975 page: 18 of 25

However, some contain advertisements for basketball shirts and other articles of clothing and headgear, including some depicting the bull’s head logo, with a reference to the website nbastore.eu. Furthermore, some contain posters and advertisements for sticker albums and trading card games, including items showing Chicago Bulls players, as well as information on rankings etc.

 Quarterly statement with regard to three issues of ‘BASKET’ magazine for the period of 15/04/2011 to 15/07/2011 by abcverlag BUSINESS MEDIA PUBLISHING, dated in Heidelberg on 21/11/2011, showing that 30 942 copies have been sold at newsstands, 18 126 copies to subscribers, and that invoiced advertisement sales amounted to EUR 20 310, making up for a total revenue of EUR 126 774. The document is unsigned.

 Extracts from the book ‘The $100 Billion Allowance – Accessing the Global Teen Market’ by Elissa Moses. It is referred to a certain ‘Wave II’ of the ‘New World Teen Study’, in which 27 600 high school students in 44 countries were shown logos of international products to gauge their brand awareness and usage. Apple, Johnson&Johnson and the Chicago Bulls share rank 10. Augmented samples of 1000 or more are said to have been established in the United States, Indonesia, Germany, Mexico, Brazil, India and China, and it can be seen from a table that the study involved teens from EU Member States such as Estonia, Hungary, Latvia, Lithuania, Poland, Belgium, Denmark, England, Finland, France, Germany, Greece, Italy, the Netherlands, Spain and Sweden. However, the results are not broken down per country.  Copy of the ‘NBA International Research Study’ of January 2014, with 200 interviews conducted in China and Canada, and 1000 interviews each in other markets including the UK, France, Italy, Germany and Spain. The study mainly refers to the NBA in general, to favourite sports persons (including outside basketball), and basketball in general. It also lists favourite NBA teams with the Chicago Bulls on rank 2 (however, not broken down per country). The study does not refer to the recognition of any of the earlier marks.

 NBA brand ranking, ‘Top Sports Brands on Facebook’ and ‘Most Popular Brands on Instagram’ listing the NBA. No reference is made to the earlier marks.

 Extract from the website simplyzesty.com with an article on ‘How 10 of the World’s Top Sports Brands are Engaging on Facebook’, listing the NBA. No reference is made to the earlier marks. Decision on Opposition No B 2 968 975 page: 19 of 25

 Forbes NBA Team Values with the Chicago Bulls ranking third; Forbes/Statista rankings with regard to the Chicago Bulls’ franchise value from 2003 to 2015, the team’s number of Twitter followers, team revenue 2013/14, the team’s number of Facebook fans 2014, its brand value 2012. No reference is made to the earlier marks.

 Documents of unknown origin named ‘Chicago Bulls EU Sales 2009- 2014’ and ‘League Royalties & Retail Sales in Europe, by Country’ (2011 to 2017), showing numbers per country and year for EU Member States. No goods or services are indicated, and it remains unclear what the numbers refer to.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation or a high degree of distinctiveness through their use.

As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(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 declaration are supported by the other items of evidence.

The internet extracts and screenshots of online stores show that goods bearing the earlier marks or variations thereof have been offered for sale on five particular dates in 2013, 2015 and 2018 and, in principle, within the relevant territory. This is also suggested by the indication of shipping fees to the European Union, as well as of the prices indicated in GBP and Decision on Opposition No B 2 968 975 page: 20 of 25

EUR, and by the fact that some of these websites have ‘.de’ as their top level domain and are presented in German. However, there is no evidence as regards the extent of the alleged trade mark use, this in the absence of any convincing evidence as regards the frequency the sites have been visited and the amount of items sold. Only one document of unknown origin supposedly refers to actual sales figures, presumably in the UK. Next to the prices, which are indicated in GBP, there are numbers possibly representing sales numbers. However, even if that is the case, sales numbers appear to have been rather low, ranging from 1 to 23 units per item within the period of one year. From the document ‘Chicago Bulls EU Sales 2009-2014’ it cannot be seen what goods or services have been sold, and it is not clear what the numbers refer to.

Similarly, it can be seen from the broadcasting schedules that basketball games featuring the Chicago Bulls have been broadcasted at least in Germany and, assuming that the term ‘Chicago’ in the ‘away’ and ‘home’ columns refers to the Chicago Bulls, also in Italy. Although the screenshots of these games show some use of the earlier marks, or at least variations thereof, there are no indications as regards the number of viewers of these games, which were televised, possibly due to the time difference, mostly late at night or early in the morning, so not exactly during prime time. The two Chicago Bulls games that took place in Paris in 1997 and the one in London in 2009 do not allow for any conclusions as to the use of the earlier marks or their recognition by the relevant consumers within the EU either. Firstly, these three incidences appear to be isolated cases of Chicago Bulls games taking place in the European Union, and secondly, no information is provided as to the attendance of these games or in how far attendees were exposed to the earlier marks.

It also appears from the evidence that official NBA magazines have been distributed in Germany, and that such magazines and advertising were also destined for the Italian, Spanish and French market. Some of these documents also show some use of the earlier marks or variations thereof. The distribution numbers provided in relation to the German magazine, however, are not particularly conclusive, since it is unclear in how many of the distributed magazines the earlier marks appeared. As regards the French market or other markets within the EU, no distribution numbers have been provided.

For similar reasons, the evidence referring to social media is not conclusive either. Although it shows the number of followers, no conclusions can be drawn with regard to the recognition of the earlier marks in the relevant territory in relation to the goods and services covered by them. The statistics of website visits have internal character and lack probative value.

The statements made in the affidavit as regards ‘NBA Madness’, ‘NBA Basketball Challenge’ and ‘NBA Basket Jam’ events in Europe are not supported by any evidence. Again, the exposure of visitors or participants to the earlier marks cannot be inferred from the information provided. The Decision on Opposition No B 2 968 975 page: 21 of 25 same is true with regard to the new and refurbished basketball courts, libraries, playgrounds, homes, fitness facilities and technology rooms. No information is provided on how many of the 85 facilities that have been opened internationally are located in the European Union, or in what way they are connected to the earlier marks.

As regards the market studies, since the results are not broken down per country, no conclusions can be drawn as to the recognition of the earlier marks in the relevant territory. The results may, moreover, be distorted by the replies given by participants from the United States, who are presumably more familiar with the Chicago Bulls basketball team than consumers in the EU. Furthermore, one of the studies does not refer to the recognition of either of the earlier marks, but mainly refers to the NBA in general, to favourite sports persons (including outside basketball), and basketball in general. Although it also lists favourite NBA teams with the Chicago Bulls on rank 2, these results are, again, not broken down per country, and no conclusions can be drawn with regard to the relevant territory.

The opponent’s global trade mark registrations cannot demonstrate the use of the earlier marks, let alone their recognition in the relevant market. The same applies to the news articles, the biography of Chicago Bulls player Michael Jordan, the NBA brand ranking, ‘Top Sports Brands on Facebook’, ‘Most Popular Brands on Instagram’ and ‘How 10 of the World’s Top Sports Brands are Engaging on Facebook’, and the Forbes rankings and statistics. No reference is made to the earlier marks.

It follows that, despite showing some use of the earlier trade marks, the evidence, taken as a whole, provides little information on the extent of such use. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public in relation to the goods and services for which the marks are registered in Classes 9, 16, 18, 25, 28, 35 and 41.

Apart from the fact that reference to the earlier marks in most of the evidence is missing, the Chicago Bulls is just one of the 30 teams in the NBA league. The fact that the NBA games, in which the Chicago Bulls appear from time to time, are broadcasted and very occasionally played in Europe for real basketball lovers does not prove that the marks are known by the relevant public at large. Rankings and popularity of the NBA and basketball in general, apart from the fact that these are irrelevant as it has not been shown that they relate to Europe, are not conclusive for the level of awareness of a team ‘Chicago Bulls’, let alone for the earlier trade marks’ figurative elements.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation or acquired a high degree of distinctiveness through their use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the Decision on Opposition No B 2 968 975 page: 22 of 25 perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The signs are visually similar to an average to low degree, and conceptually similar to an average to high degree, depending on the distinctiveness of the main differing element in the contested mark (the depiction of an upper body) in relation to the particular goods designated. The degree of attention of the relevant public is likely to vary from average to above.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Therefore, it has to be taken into account that the distinctiveness of the aforementioned main differing element leads to a lower degree of similarity between the signs only in relation to identical goods, whereas the signs’ degree of similarity is of an average/high degree in relation to all the goods that have been found similar.

Furthermore, it has to be considered that a higher degree of attention is only paid in relation to professional sporting gear and equipment, i.e. goods for which the aforementioned element is weak, and the similarity of the signs, therefore, of an average/high degree.

Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Decision on Opposition No B 2 968 975 page: 23 of 25

Therefore, consumers may be mistaken about the origin of the goods found to be identical or similar. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar to all the goods and services covered by both earlier marks. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful. The assessment of the opposition will continue insofar it is based on Article 8(5).

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. Decision on Opposition No B 2 968 975 page: 24 of 25

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected. In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs. Decision on Opposition No B 2 968 975 page: 25 of 25

The Opposition Division

Oana-Alina STURZA Natascha GALPERIN Judit NÉMETH

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.