NABOO | Decision 2608167

Date Published: Sep 28, 2017

OPPOSITION No B 2 608 167

North American Boxing Organization, Inc., Edificio Cobian Plaza, Oficina 409, Avda. Ponce de León, Sanurce, San Juan 1603, Puerto Rico (opponent), represented by Tavira y Botella, Velázquez, 80 - 4º Izda., 28001 Madrid, Spain (professional representative)

a g a i n s t

Saturn Investments OÜ, Laeva 2, 10111 Tallinn, Estonia (applicant), represented by Mari Must, Raidla Ellex Advokaadibüroo OÜ, Roosikrantsi 2, 10119 Tallinn, Estonia (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 608 167 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 459 391, namely against all the services in Class 41. The opposition is based on European Union trade mark registration No 995 159. The opponent invoked Article 8(1)(b) EUTMR.

The marks in conflict are the following:

Earlier trade mark	Contested sign

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 the trade mark on which the opposition is based, namely European Union trade mark registration No 995 159.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 19/08/2015. 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 19/08/2010 to 18/08/2015 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:

Class 16:        Printed publications.

Class 25:        Clothing, footwear, headgear.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities related to boxing.

On 17/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/08/2016 to submit evidence of use of the earlier trade mark. On 19/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Item 1: a letter, dated 29/06/2016, from BoxNation, a UK television channel, to the World Boxing Organization (WBO), stating that it has worked with the WBO for over 28 years in the UK and that both WBO and NABO are recognisable names in the sport of professional boxing. In the document, it is also stated that NABO stands in the boxing world for ‘North American Boxing Organization’, which is a subsidiary of the WBO and that NABO championships are regularly broadcast by BoxNation in the UK and Ireland.

• Item 2: a letter, dated 30/06/2016, from SES Boxing, a German sports events company, stating that it looks forward to forthcoming fights in 2016 under WBO and NABO regulations. The document also states that international boxing title fights are the focus of their TV partners, SAT 1 (a private channel) and MDR (a public channel), available on German TV, and that there is huge interest in transmitting NABO fights in the future. This letter makes no reference to events that took place within the relevant period (ending on 18/08/2015).

• Item 3: a letter, dated 29/06/2016, from Klitschko Management Group (KMG), based in Germany. Although it is mentioned that there has been a long-standing business relationship between KMG and WBO, the letter specifically refers to only one ‘last’ NABO fight, held on 25/04/2015, which was broadcast by KMG’s broadcast partners, RTL and HBO.

• Item 4: a letter, dated 06/07/2016, from AMC Networks International, based in Hungary, confirming that its channel Sport1 had the exclusive right to broadcast a NABO fight in the territories of Hungary, the Czech Republic and Slovakia. There is no reference to when the fights were broadcast.

• Item 5: a letter, dated 04/07/2016, from DIGI Sport, a Hungarian television company, stating that they have broadcast various NABO fights in Hungary and that they support NABO’s efforts to become a more visible brand in Europe. There is no reference to when the fights were broadcast.

• Item 6: a printout from the website of Espabox, in Spanish with a translation into English, providing information concerning a boxer who was awarded the title of WBO NABO Boxer of the Year No 2. The news item was published on 29/10/2015, outside the relevant period.

• Item 7: printouts from the website of BoxNation, providing information concerning a fight held in California, USA, on 16/05/2015 in which one of the fighters was the WBO NABO reigning middleweight champion, and another fight held on 16/05/2015 for the WBC world flyweight title.

• Item 8: copies of 14 receipts for payments for competitions, issued in US dollars by the North American Boxing Organization/NABO between 24/04/2012 and 08/01/2013. This item of evidence also includes copies of 15 bank cheques, issued in US dollars between 08/06/2012 and 08/01/2013, made payable to NABO, by various companies. The amounts range from USD 2 000 to almost USD 5 000.

• Item 9: documents showing the North American Boxing Organization rankings on 31/10/2012.

• Item 10: Printouts from the ‘NABO News Archives – WBO’, including undated pictures of different fights and boxers. In 6 out of the 21 pictures there is a reference to a ‘NABO’ tittle.

• Item 11: printouts from the website BoxRec with five pages of information relating to boxers’ careers. Some of the descriptions mention WBO titles won within the relevant period, including European titles, for instance Michel Soro won the WBO European light middleweight title in 2011, 2012 and 2013. However, these instances refer to NABO merely as the source from which the information was retrieved (i.e. not in a trade mark sense).

• Item 12: printouts from the website BoxRec documenting 10 boxing sessions held in the USA, amounting to a total of 62 fights that were broadcast on some European TV channels (e.g. Sport 1 in Hungary). Ten NABO title fights are mentioned, of which six took place within the relevant period, between 09/12/2010 and 02/05/2015.

Assessment of the evidence – factors

According to Rule 22(3) EUTMIR, the evidence of use shall 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. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indications and proof as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

The Opposition Division finds it appropriate to begin the assessment in relation to the factor of extent of use.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence provides certain indications of use of the mark ‘NABO’ in relation to boxing events. As regards the letters (Items 1 to 5) written by third parties that have had business relations with the opponent, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. 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.

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 or evidence originating from independent sources.

The letters from the third parties provide certain indications of the extent of use of the mark ‘NABO’. The documents make reference to a rather low number of ‘NABO’ boxing championships, held mainly in the USA and broadcast by some European television channels. However, they do not contain any information about audience share or the number of viewers watching the fights in the relevant territory. These items of evidence also fall short in failing to demonstrate the frequency, duration or geographical scope of the use.

The documents in Items 6, 7, 9, 10, 11 and 12 provide information on some NABO titles and on the various WBO champions, taken from the internet. The mere presence of a trade mark on a website is, in itself, not sufficient to prove genuine use in relation to extent unless the website also demonstrates in some way the extent of use, or unless this information is otherwise provided. In the evidence submitted, there are no figures, for example, regarding the turnover generated by the NABO title boxing events that were available for the public to watch in the relevant territory, or any other indications that would suggest the commercial scale of the use of the mark. It must be taken into account that transactions on the internet tend to eliminate most of the ‘traditional’ evidence of sales such as invoices, turnover, taxation documents, etc. New ‘electronic’ evidence has been substituted for this evidence. However, no such evidence, either traditional or electronic, was submitted by the opponent.

As regards Item 8, namely the receipts and bank cheques demonstrating payments made to NABO for boxing fights, they refer to sums in US dollars and there is no indication that the payments were made for competitions that took place in the European Union, or related to the relevant territory otherwise.

Furthermore, most of the evidence submitted does not show sufficient extent of use in the relevant territory. Even though some of the documents, for instance the letters (Items 1 to 5) and the printout from the website BoxRec (Item 12), refer to NABO fights broadcast on European TV channels, there is no specific information that would allow these statements to appear in a more specific context. From the rest of the documents, it cannot be inferred that the use of the mark actually relates to the relevant territory, as the receipts and cheques refer to sums in US dollars (Item 8) and the other documents are printouts from websites, without any information or statistics about the number or origin of visitors to those websites.

In an overall assessment of the evidence, the documents submitted by the opponent do not provide the Opposition Division with sufficient information about the commercial volume, the territorial scope, the duration and the frequency of use of the trade mark on which the opposition is based in the relevant territory. Consequently, it cannot be determined that the earlier mark has indeed been commercially used during the relevant period in relation to all, or some, of the relevant goods and services, and that its use was such that it would create or preserve an outlet for the goods and services in question.

Remark on belated evidence

For the sake of completeness, the Opposition Division takes note of the opponent’s subsequent submissions, which were filed after the expiry of the time limit for submitting proof of use. Specifically, on 24/01/2017 the opponent submitted observations and some additional evidence in response to the applicant’s observations on the proof of use submitted:

• Two hyperlinks to the website of Digisport, presented in the opponent’s observations.

• Printouts from the website of BoxNation referring to an undated NABO title fight.

• A printout from the website BoxRec listing the current North American Boxing Organization title holders and giving the the dates on which they won, from 02/05/2015 to 16/10/2016.

• Undated printouts from the website Fight Sports showing two news items mentioning NABO title fights.

By notification of 10/02/2017, the Office forwarded copies of the above documents to the applicant for information purposes only.

In view of the nature and the content of the evidence submitted after the expiry of the time limit, and the fact that it consists of very similar items to those submitted in a timely manner, the Opposition Division considers that it is unnecessary to re-open the opposition proceedings and invite the applicant to comment on the belated evidence, as the outcome of the assessment of proof of use would not change if the opponent’s submissions of 24/01/2017 were taken into account.

Conclusion

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).

Since evidence does not demonstrate an adequate extent of use of the trade mark for any of the registered goods and services, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

As stated above, the factors of time, place, extent and nature of use are cumulative, and the evidence must provide sufficient indications for all of these factors to prove genuine use. Failure to fulfil one of the conditions is sufficient. Therefore, as the fulfilment of the criterion of extent of use has not been established, it is unnecessary to assess the other criteria.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.

Opponent’s arguments

In the notice of opposition, the opponent claimed that the North American Boxing Organization has an important family of marks containing the word element ‘NABO’, and that ‘NABO’ has been recognised as a well-known and reputed mark.

No evidence was filed in this regard either with the notice of opposition or within the time limit given to the opponent by the Office on 26/11/2015 for submitting further facts, evidence and arguments and completing the opposition, which expired on 31/03/2016. For the sake of completeness, it should be noted that evidence of use submitted after the expiry of the substantiation time limit cannot be taken into account for the assessment of whether or not the earlier mark enjoys enhanced distinctiveness or if there is a family of marks. Furthermore, in the light of the conclusion drawn from the assessment of proof of use, namely that the evidence submitted does not reach the minimum threshold for establishing that the earlier mark was put to genuine use, which is a prerequisite requirement for an earlier right to be a valid basis for opposition under Article 8(1)(b) EUTMR, the abovementioned claims are irrelevant.

In support of its arguments, the opponent refers to the reasoning of the Court of Justice in its judgment of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39, in which the Court held that consideration should be given to the nature of the goods or services at issue, the characteristics of the market concerned and the scale and frequency of use of the mark.

The opponent also mentions that the Boards of Appeal have repeatedly stated that genuine use must be contrasted with token use and that use does not have to be continuous during the relevant five years (19/07/2000, R 362/1999-1, HERVALIA / HERBAPURA; 27/09/2000, R 380/1999-2, LINDEBOOM / LINDENER; 27/07/2000, R 474/1999-1, CARRERAS / CARRERA Y CARRERA; 19/09/2000, R 733/1999-1, AFFINAGE / AFFINITE; 21/03/2001, R 821/1999-3, RENOLIN / RENTOLIN). The opponent points out that another decisive factor in the evaluation might be the way in which the mark appears on the goods themselves or other relevant material. The Boards of Appeal considered that the genuineness of use was doubtful in cases where the mark, due to additional, very dominant, use of other marks, might be perceived as a mere decorative element (30/09/2002, R 833/1999-1, NIKE F.I.T. / NIKE (fig); 30/09/2002, R 880/1999-1, NIKE TRIAX SERIES / NIKE (fig); 30/09/2002, R 16/2000-1, NIKE / NIKE (fig); 30/09/2002, R 19/2000-1, NIKE TOWN / NIKE (fig); 30/09/2002, R 73/2000-1, NIKE (fig) / NIKE (fig)).

In the present case, the Opposition Division finds that the case-law referred to by the opponent is not comparable to the present proceedings, since the evidence submitted by the opponent does not demonstrate sufficient scale or frequency of use in the relevant territory, thus precluding a finding of adequate extent of use of the trade mark for the registered goods and services.

The opponent also claims that the condition relating to genuine use of the trade mark is fulfilled because boxing matches are broadcast and therefore the mark has been used publicly and outwardly (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 39; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

As stated above in the assessment of proof of use, the mere fact that the evidence contains indications of some boxing championships, held mainly in the USA and broadcast by European TV channels, although it falls short in failing to demonstrate the commercial exploitation of the mark in the relevant territory, or the frequency, duration or geographical scope of use, leads to a conclusion of insufficient extent of use. That cannot be overcome by those items of evidence that suggest that the use was public and outward.

Therefore, the opponent’s arguments must be set aside.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Solveiga BIEZA

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.