B | Decision 2448085

Date Published: Oct 1, 2017

OPPOSITION No B 2 448 085

Speedo Holdings B.V., Claude Debussylaan 24, 1082 MD Amsterdam, Netherlands (opponent), represented by Stevens Hewlett & Perkins, 1 St Augustine’s Place, Bristol BS1 4UD, United Kingdom (professional representative)

a g a i n s t

Brooks Sports Inc., 3400 Stone Way N, 5th Floor, Seattle, WA 98103, United States of America (holder), represented by Heuking Kühn Lüer Wojtek – Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Neuer Wall 63, 20354 Hamburg, Germany (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 448 085 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 194 633. The opposition is based on European Union trade mark registration No 493 536 and United Kingdom trade mark registration No 1 422 578. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 of 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: the 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.

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 holder establishes due cause for the use of the contested trade mark.

In the present case, the holder 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.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union and the United Kingdom.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the EU was designated in the contested international registration on 09/01/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed a reputation, namely:

EUTM No 493 536

Class 25:        Clothing, footwear and headgear

United Kingdom trade mark No 1 422 578

Class 25:         Swimwear, shorts, towelling robes, swimming caps, swim socks, pool shoes, beach sandals, leotards, tracksuits, shirts, shorts, T-shirts; all included in Class 25.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The evidence consists of the following documents:

• Annex A: a document entitled ‘Speedo – a brand with a rich history’, outlining the development of the Speedo brand from its origins in 1928 to 2013. It includes photographs in which the following signs (some being colour versions) appear: , ,  and .
• Annexes B, C and D: copies of an Australian trade mark registration and some United Kingdom trade mark registrations.
• Annex E: copies of advertisements that ran as part of an advertising campaign carried out in 2013, including copies of advertisements that ran in publications such as Men’s Fitness, Men’s Health and L’Express (French publications or French editions) and The Guardian. These advertisements include photographs showing the signs ‘SPEEDO’ and  used on swimwear and swimming accessories (e.g. swimming trunks, swimming costumes, swimming caps and swimming bags). One of the images shows the figurative element alone.
• Annex F: photographs of products for sale in retail outlets in France (Go Sport, Decathlon) and the United Kingdom (Decathlon, Harrods). This evidence features the signs ‘SPEEDO’ and .
• Annex G: details, published on www.lexpress.fr, of the ‘Speedo Fit Dating’ event held in France on 14/09/2013, with the participation of the French athlete Florent Manaudou, who was sponsored by Speedo; the sign (sometimes in colour versions) appears.
• Annex H: details of the ‘Speedo Fit’ app, published on a UK third party’s website.
• Annex I: details of some of the high-profile athletes sponsored by the opponent, including Michael Jamieson, who is an Olympic silver medallist, Selina Hocke and Aschwin Wildeboer. In the past, the opponent has sponsored Michael Phelps and Rebecca Adlington. This evidence features the sign  (sometimes in colour versions).
• Annex J: details of the opponent’s sponsorship of several national teams and official bodies worldwide. In the European Union, these include the Royal Spanish Swimming Federation, British Swimming, Swim Wales, Team Scotland, the Romanian Water Polo Association and the ASA (the English national governing body for swimming, diving, water polo, open water and synchronised swimming). This evidence features the signs ‘SPEEDO’, (including in colour versions, for example as ) and .
• Annex K: evidence relating to the 2013 FINA World Championship, held in Barcelona, Spain, which was sponsored by the opponent. The evidence gives details of the sponsorship of the event and the use of the marks. Extracts from the European press confirming Speedo’s presence at this event are given, for example extracts from articles published on Sentragoal in Greece and Zwemkroniek in the Netherlands. The evidence also includes details of the ‘Get Speedo Fit Media Clinic’, which was hosted by Michael Phelps and attended by 10 high-profile journalists from China, France, Spain, the United Kingdom and the USA. This evidence features the sign .
• Annex L: details of ‘Get Speedo Fit’, a campaign centred on the 15th FINA Word Championships (the World Aquatics Championships), sponsored by the opponent. The evidence features the sign .
• Annex M: copies of printouts from the Speedo websites for several EU countries (i.e. Italy, Greece, France and Germany), presenting the ‘Speedo Fit’ collection or app.
• Annex N: copies of decisions by the WIPO Arbitration and Mediation Center. Although these decisions concern domain names, they do make reference to the reputation of the ‘SPEEDO’ trade mark in general. For example:

• The decision in Case No D2010-0281 of 18/05/2010 states that ‘the complainant’s SPEEDO mark has a strong reputation and is internationally known’.
• The decision in Case No D2007-0911 of 24/08/2007 states that ‘the complainant [the opponent in the present case] is one of the world’s largest and best-known makers of swimwear, particularly swimsuits used in competition swimming …. The SPEEDO trade mark at issue is undeniably famous (in the trademark sense) and is (at the very least from the perspective of a customer or prospective customer of Complainant) being tarnished by the Respondent’s unauthorized use’.
• The decision in Case No D2003-0440 of 30/07/2003 states that ‘Speedo is a well-known trade mark for swimwear … the Complainant’s trade mark … which has been well known for such type of swimwear since the Australian participants of the Olympic Games in Melbourne in 1956, and in Rome 1960, wore SPEEDO swimwear made by the Complainant’.

• Annex O: printouts from the iTunes website, from which Speedo Fit, which is a swimming fitness app, can be downloaded. The sign  appears.
• Annexes P and Q: printouts from the opponent’s UK Facebook page, showing use of the signs  and .
• Annex R: evidence intended to demonstrate that the opponent’s customers and the general public in the European Union and worldwide have a high degree of awareness of the Speedo mark, as Speedofit hashtags are regularly used on Twitter.
• Annex S: evidence of images tagged ‘Get Speedo Fit 2014’ on pinterest.com.
• Annex T: details of the opponent’s YouTube activities, with videos showing its products, as well as fitness advice, advice on swimming techniques and interviews with sponsored athletes. In particular, the videos feature the great Olympian Michael Phelps endorsing the ‘Speedo Fit’ brand.
• Annexes U and V: copies of online retail websites (e.g. Amazon) where the opponent’s goods, i.e. swimming items, are sold. The documents show the sign ‘Speedo’ used alone or associated with a figurative element; however, few documents show the use of the figurative element alone.
• Annex W: a list of tweets mentioning speedo with the hashtag #stavote25 voting for Speedo as ‘Fan Brand of the Year’ in 2014, and a copy of an article dated 07/04/2014 and published on pentland.com describing Speedo as the world’s leading swimwear brand and stating that Speedo won the ‘Fan Brand of the Year’ award.
• Annex X: a list of countries where Speedo products are sold.
• Annex Y: printouts from the Superbrands UK website, where ‘speedo’ (word mark) appears in a list of consumer superbrands in 2015 for sportswear and sports equipment. However, the brand is not in the top 20 consumer superbrands for 2015.
• Annex Z: copies of the Superbrands Poland website, where ‘speedo’ (word mark) is listed.

It must be pointed out that, according to case-law, in order to satisfy the requirements for reputation, a mark must be known to a significant part of the relevant public for the goods covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (12/02/2015, T-76-13, QUARTODIMIGLIO QM, EU:T:2015:94, § 87).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate the reputation of the earlier trade marks. The sign as used, namely  (in various colour versions) or , cannot be considered to constitute use of the figurative mark , as it is not a slight variation of the earlier marks as registered. Furthermore, the verbal element occupies the first position within the sign as used and forms an integral part thereof. Due to its position and distinctive character, the word ‘SPEEDO’ will not be overlooked and is not negligible in the overall impression created by the sign. Considering the above, it is concluded that the use of the earlier marks in combination with the word ‘SPEEDO’ is a use that alters the distinctive character of the earlier marks on which the opposition on the ground laid down in Article 8(5) EUTMR is based. Consequently, the evidence – which merely shows use of the figurative sign combined with the word ‘SPEEDO’ – cannot prove that the earlier marks have acquired a reputation through use.

Although a few of the documents submitted as evidence show use of the earlier trade marks as registered, the evidence does not prove the recognition of the figurative element as the opponent’s mark among the relevant public. As already explained, the evidence submitted cannot prove the reputation of the earlier figurative marks, because the vast majority of the documents include the word ‘SPEEDO’ combined with the figurative element, and do not refer solely to the figurative element.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have 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.

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.

1. The goods

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

EUTM No 493 536

Class 25: Footwear; clothing; headgear.

United Kingdom trade mark No 1 422 578

Class 25: Swimwear, shorts, towelling robes, swimming caps, swim socks, pool shoes, beach sandals, leotards, tracksuits, shirts, shorts, T-shirts; all included in Class 25.

The contested goods are the following:

Class 25: Footwear; clothing; headgear.

Footwear; clothing; headgear are identically contained in the list of contested goods and in the list of goods of the earlier EU trade mark.

The opponent submitted several items of evidence to prove the use of the earlier EU trade mark. However, for reasons of procedural economy, the examination will continue on the assumption that the earlier marks have been put to genuine use in the relevant territories, for all the abovementioned goods.

2. 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 are directed at the public at large. The degree of attention is considered average.

3. The signs

Earlier trade marks	Contested sign

The relevant territories are the European Union and the United Kingdom.

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 marks are figurative.

Visually, the signs are composed of irregular geometric shapes that resemble stylised arrowheads pointing to the right; the lower section in each case is slightly longer and therefore stretches downwards. However, the angle of the lines forming the arrowhead in the earlier marks is much smaller than the angle in the contested sign. Furthermore, the end of the lower part of the contested sign, which gradually becomes wider, is flat, whereas, in the earlier marks, the arrowhead tapers to a sharp point at both ends. In the contested sign, the arrowhead is superimposed on a stylised letter ‘B’, which has no counterpart in the earlier marks.

Therefore, the signs are visually similar to a low degree.

Aurally, the public will pronounce the letter ‘B’ of the contested sign. As purely figurative signs are not subject to a phonetic assessment, the earlier marks will not be pronounced.

Therefore, the signs are aurally not similar.

Conceptually, the public will perceive the figurative element in all the marks as an arrow-like shape. However, the fact that the shape is arrow-like in both the earlier marks and the contested sign is clearly not sufficient to find a conceptual link between the marks. The public will perceive the letter ‘B’ as such in the contested sign, whereas the earlier marks have no meaning. Therefore, the signs are conceptually not similar.

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

4. Distinctiveness of the earlier marks

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

According to the opponent, the earlier trade marks have a reputation and enjoy a high degree of recognition among the relevant public in the United Kingdom and the European Union in connection with all the goods 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).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and, in particular, the similarity between the trade marks and between the goods and services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the signs, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are identical. The signs are visually similar to a low degree and aurally and conceptually not similar.

Considering all the above, even though the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use or reputation, the outcome of no likelihood of confusion remains the same.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marine DARTEYRE

Julie GOUTARD

Loreto URRACA LUQUE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.