HELL BUNKER | Decision 2592734 - BUNKER AND BKR, S.L. v. St. Andrews Links Ltd
Date Published: Sep 28, 2017
OPPOSITION No B 2 592 734
BUNKER and BKR, S.L., Calle Los Reyes, 71, 02640 Almansa (Albacete), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).
a g a i n s t
St. Andrews Links Ltd, Pilmour House, St Andrews, Fife KY16 9SF, United Kingdom (applicant), represented by Bénédikte Hattier, 18 rue de Turbigo, 75002 Paris, France (professional representative).
On 08/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 592 734 is partially upheld, namely for the following contested goods:
Class 25: Clothing, footwear, headgear.
2. European Union trade mark application No 14 301 758 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 301 758, namely against all the goods and services in Classes 25 and 35. The opposition is based on, inter alia, European Union trade mark registration No 250 480. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARKS
Initially the opposition was based on four earlier marks however one of these marks, European Union trade mark registration No 4 412 011, has expired on 25/05/2015 and, as pointed out by the opponent, can therefore not be taken into account in the present opposition proceedings, since this earlier right has ceased to exist.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 250 480.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services 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.
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, inter alia, earlier European Union trade mark registration No 250 480 on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade mark were registered more than five years prior to the relevant date mentioned above.
The contested application was published on 21/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/07/2010 to 20/07/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
European Union trade mark No 250 480
Class 25: Footwear, except orthopedic.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 04/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/07/2016 to submit evidence of use of the earlier trade marks. On 08/07/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
- Annex 1: Extracts from the opponent’s website. These extracts show the sign at the top of some of the pages, different type of shoes and, according to the opponent, a timeline showing the history of the company (this is not evident since the extract is partly unreadable). The only date that shows is the date when the pages were printed from the web, 08/07/2016.
- Annex 2: Around 160 invoices submitted by the opponent covering the time period 2010-2015. The invoices show a substantial sale under the brands BUNKER and BKR. The invoices are both in Spanish and English and are addressed to different customers within the EU, mainly France, Portugal and Germany. The invoices show references to different product codes that can be found in the different catalogues and the price list submitted by the opponent.
- Annex 3: Different catalogues showing the products (footwear) that the opponent sells under the BUNKER and BKR brands. There are catalogues for the fall/winter 2009/2010, fall/winter 2012/2013, spring/summer 2013 and fall/winter 2014/2015. Some of the catalogues show footwear marketed as ‘BUNKER’ in the following ways: (on the cover of the catalogue fall/winter 2012/2013), (on the cover of the catalogue spring/summer 2013), (on the cover of the catalogue fall/winter 2014/2015). Furthermore, the inscription ‘BUNKER’ can be noticed on some of the goods shown in these catalogues: , , , . Each product has a name and a product code. The opponent has also submitted different invoices and receipts for marketing and advertising services in relation to the mark ‘BUNKER’.
- Annex 4: Document prepared by the opponent showing the company’s net sales during the time period 2010-2015.
- Annex 5: Invoices that cover fees for participation in different international fairs during the time period 2010-2015.
- Annex 6: Pricelist of the opponent’s goods that were sold under the mark ‘BUNKER’ in the relevant period. It makes references to the product codes that can be found in the catalogues and invoices.
It should be noted that on 01/12/2016, after expiry of the time limit, the EUTM proprietor submitted additional evidence. Even though, according to Rule 22(2) EUTMIR, applicable by analogy, the EUTM proprietor has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30). In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 01/12/2016 can remain open. This is because the additional evidence does not demonstrate use of any additional goods other than footwear, for which genuine use has been accepted on the basis of the evidence submitted within the time limit. The documents are only clarifications of what has already been submitted.
Therefore, taking into account the additional evidence would not alter the conclusion reached on the basis of the initial evidence.
The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.
According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.
The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.
To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.
As far as the statement made by the opponent regarding their net sales (Annex 4) is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(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 applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
The extract from the opponent’s website, the invoices and the different catalogues show that the place of use is the European Union. This can be inferred from the language of the documents (‘English and Spanish’), the currency mentioned (‘Euro’) and some addresses in Spain, France, Germany, Italy, The Netherlands, Portugal, United Kingdom, Sweden, Czech Republic, Greece, Slovenia and Finland. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, namely the invoices and the different product catalogues, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices submitted as Annex 2, supported by the product catalogues, relate to the full duration of the relevant period and demonstrate the frequency and volume of use of the marks during that period under the earlier mark to various clients in the European Union. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).
In the present case, there is no evidence to show that the marks have been used as registered. However the opponent have provided a lot of evidence that contains the distinctive verbal element ‘BUNKER’, used in different colours and typefaces, as seen above. This mark is displayed on catalogues and on most of the shoes in those catalogues. It is true that the invoices and some of the catalogues also include the brand ‘BKR’, however these two brands are separated with an ampersand (&) in the invoices and the goods are clearly marketed under one of the two brands separately in most of the catalogues. Furthermore, after the brand ‘BUNKER’, the symbol for a registered trade mark (®) is depicted, which separates the two brands further from each other. It is, therefore, clear from these documents that some of the goods at issue have been marketed under the brand ‘BUNKER’. Even though the above ‘BUNKER’ mark as used is not identical to European Union trade mark registration No 250 480, they consist of an identical distinctive word in relation to the relevant goods and a similar font. Although the mark as registered has a noticeable and somewhat original stylisation which differs of the mark as used, the public will still instantly read and perceive the sign as ‘BUNKER’, as this distinctive word is depicted in the centre of the sign, while it will perceive the additional elements, namely the lines in a rectangle around the verbal element as rather banal ornamental elements drawing its attention to the verbal element. In other words, consumers will clearly identify the goods as being offered under the mark ‘BUNKER’. Consequently, the lack of use of the figurative elements of the registered mark doesn’t alter the distinctive character of the same.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, for the goods for which it is registered, namely the following:
Class 25: Footwear, except orthopedic.
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.
As seen above, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 250 480.
- The goods and services
The goods on which the opposition is based are the following:
Class 25: Footwear, except orthopedic.
The contested goods and services are the following:
Class 25: Clothing, footwear, headgear.
Class 35: Advertising; business management; business administration; office functions.
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
Footwear is identically contained in both lists of goods, albeit slightly different wording, since the general category of footwear in Class 25 does not include orthopaedic footwear regardless of whether this has been explicitly excluded in the wording or not. Orthopaedic footwear belongs to Class 10 of the Nice Classification and is, therefore, not covered by the category of the contested goods.
The contested clothing, headgear and the opponent’s footwear, except orthopedic serve the same purpose since they are used to cover and protect parts of the human body against the elements. Consumers, when seeking to purchase footwear, will expect to find clothing and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar to each other.
Contested goods in Class 35
The contested advertising; business management; business administration; office functions cover different activities in advertising, business management and presentation of goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, the contested services and all the opponent’s goods (footwear) are provided/produced by very different types of companies and they target different consumers (on the one hand the general public looking for footwear, and on the other business owners and operators). Moreover, they are neither in competition with nor complementary to each other. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, they are dissimilar.
- 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 at the public at large.
The degree of attention is considered to be average.
- The signs
HELL BUNKER | |
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 contested sign is a word mark consisting of two words, ‘HELL’ and ‘BUNKER’. For the English speaking part of the public the first word ‘HELL’ will be understood as a place or state of misery, torment, or wickedness (https://www.merriam-webster.com/dictionary/hell, online extracted on 19/04/2017) and ‘BUNKER’ as a fortified chamber mostly below ground often built of reinforced concrete and provided with embrasures or a sand trap or embankment constituting a hazard on a golf course (https://www.merriam-webster.com/dictionary/bunker, online extracted on 19/04/2017). The word combination ‘HELL BUNKER’ forms a conceptual unit, in which the word ‘HELL’ will be perceived as qualifying the word ‘BUNKER’. For the non-English speaking part of the public the words have no meaning and are therefore distinctive. Even for the public who understands these words they are distinctive considering that they have no meaning in relation to the relevant goods.
The earlier mark is a figurative mark with the verbal element ‘BUNKER’. The verbal element is written in rather standard upper case letters and depicted within a rectangle with black lines situated in the shape of a parallelogram. The verbal element in the earlier sign will have the same meaning as explained above.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs are similar to the extent that they coincide in the distinctive word ‘BUNKER’ which constitutes the entire verbal element of the earlier sign. However, they differ in the word ‘HELL’ of the contested sign and the figurative elements of the earlier sign.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‛BUN-KER’, present identically in both signs which constitutes the entire verbal element of the earlier sign. The pronunciation differs in the sound of the word ‛HELL’ of the contested mark, which has no counterpart in the earlier sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning by a part of the public, since the word ‘HELL’ in the contested sign does not alter the concept of the word ‘BUNKER’, but only alludes to what type of bunker it is, the signs are conceptually similar to a high degree.
For the part of the public who does not associate the signs with any meaning, a conceptual comparison is not possible. Therefore, for this part of the public the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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 perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eight recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, 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).
As has been concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar. The identical and similar goods are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually, aurally and conceptually similar to a high degree, although for the part of the public who do not understand the meaning of the marks a conceptual comparison is not possible.
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.
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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.
The right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
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 No 250 480.
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 services are dissimilar. 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 services cannot be successful.
The opponent has also based its opposition on the following earlier trade marks:
European Union trade mark No 6 746 788 for goods and services in Classes 18, 25 and 35
European Union trade mark No 3 272 846 for goods and services in Classes 9, 14, 18, 25 and 35
The applicant requested that the opponent submit proof of use of all earlier marks on which the opposition is based. This request is admissible also in relation to earlier European Union trade marks No 6 746 788 and No 3 272 846 given that the earlier trade marks were registered more than five years prior to the publication of the contested application.
The evidence of use for these trade marks is the same as that listed above in relation to earlier European Union trade mark No 250 480. Consequently, even if these documents could provide sufficient indications with respect to place, time, extent and nature of use of earlier European Union trade marks No 6 746 788 and No 3 272 846, they refer to use for no broader scope of goods. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Boyana NAYDENOVA | Benjamin Erik WINSNER | Begoña URIARTE VALIENTE |
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.