PPOSITION No B 2 968 975 NBA Properties, Inc., Olympic Tower, 645
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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