CANCELLATION No 12 666 C (INVALIDITY)

Jumping Intellectual Property, s.r.o., Petrská 1168/29, 1168/29 Prague 1, Czech Republic, and JSTB International s.r.o., Petrskà 1168/29, 110 00 Prague 1, Czech Republic (applicants), represented by Patentcentrum Sedlák & Partners S.R.O., Husova 5, 370 01 České Budějovice, Czech Republic (professional representative)

a g a i n s t

Jumping Fitness AG, Amalienpark 4, 13187 Berlin, Germany (EUTM proprietor), represented by Freihof, Karl-Marx-Allee 85, 10243 Berlin, Germany (professional representative).

On 14/02/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicants bear the costs, fixed at EUR 450.

REASONS

The applicants filed an application for a declaration of invalidity against all the goods and services of European Union figurative trade mark No 14 183 206 . The application is based on Czech trade mark registration No 463 899 and international trade mark registration No 1 002 829 designating Bulgaria, Benelux, Denmark, Estonia, Greece, France, Ireland, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia and Slovakia. The applicants invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR and Article 52(1)(b) EUTMR (bad faith).

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicants argue that the signs are confusingly similar. The figurative element is dominant in both marks. The contested trade mark depicts somebody jumping, and the image is created from curved black and red lines that portray the person’s head, arms and legs and a base under the person. The earlier trade marks comprise the word element ‘JUMPING’ and a black silhouette of a person jumping. The signs are visually highly similar. The goods and services are all related to fitness and sport. There is a risk of confusion and association. It is also obvious that the contested trade mark was filed in bad faith because it is a copy of a device that is well known in Germany. Jumping Intellectual Property (applicant 1) is the owner of, inter alia, international registration No 1 002 829. JSTB (applicant 2) cooperates closely with the owner and uses the trade marks with its consent. The company Jumping Deutschland GmbH (JD) entered into a business cooperation agreement for a with JSTB. JD became the sole coordinator of the exercise programme ‘Jumping’ in Germany and supplied professional trampolines, which were made by JSTB. The website www.jumping-fitness.com was created. In the cooperation agreement, JD undertook not to come into conflict with the interests of JSTB in connection with the programme ‘Jumping’. The contract also includes a competition clause whereby JD is prohibited from operating that programme for 10 years. However, a conflict arose between the parties about defective trampolines and payment for them. JD then changed the programme completely and called it ‘JUMPING FITNESS’. The website www.jumping-fitness.de was redirected to www.jumping-fitness.com. JD and Jumping Fitness GmbH appropriated the applicants’ intellectual property and took over the majority of the network of individual ‘JUMPING’ centres. There was a visual change from green to pink and an application was filed for a new trade mark and logo, which de facto is a copy the figurative element of the trade mark and also the font used by the applicants (EUTM applications No 14 183 198 and No 14 183 222). JD knew about the competition clause and obligation under the contract. It tried to evade its obligations by creating a company called JUMPING FITNESS AG, whose name corresponds to the central part of the applicant’s domain name and which has the same CEO as JD. The contested mark was filed in bad faith because it is a copy of the figurative element of the earlier trade marks, which were known to German consumers. The owner could have applied for many trade marks that differed from those of applicant 1 but chose the same font for the verbal element and the same posture for the figurative element (outstretched arms and bent legs).

In support of its observations, the applicants filed the following evidence:

• Enclosure 1: certificate of incorporation of JSTB International, s.r.o. (hereafter JSTB), in Prague, and two licence agreements, the first between JSTB and Tomas Burianek (with translations) and the second between Jumping Intellectual Property, s.r.o., and JSTB, both about the exclusive use of two trade marks belonging to applicant 1 in the Czech Republic and Germany, dated 05/12/2014.

• Enclosure 2: excerpt from the Jumping Deutschland GmbH website www.jumping-fitness.com displaying .

• Enclosure 3: extract from a domain name register showing jumping-fitness.com registered in the name of Tomas Burianek, dated 25/10/2010.

• Enclosure 4: contract dated 08/11/2013 on business cooperation about the programme ‘Jumping’ for Germany, between JSTB and Jumping Deutschland International GmbH (with partial translation).

• Enclosure 5: licence contract for the JUMPING® sport programme instructor, between JSTB and J.P. Ulrich about trade marks belonging to applicant 1, signed on 15/01/2014.

• Enclosure 6: email correspondence between JSTB and JD, dated 2015.

• Enclosure 7: excerpt, entitled ‘our team’, from the website www.jumping-fitness.com.

• Enclosure 8: letter to Jumping centres (with translation) displaying the logo and dated 16/06/2015, in which JUMPING FITNESS AG Berlin warns the recipients about declarations by JSTB.

• Enclosure 9: letter sent by JUMPING FITNESS AG Berlin, dated 17/09/2015, instructing the recipients to relabel trampolines with a new logo to replace that of JSTB’ .

• Enclosure 10: screenshot of web pages from http://jumping-fitness.de displaying the logos and .

• Enclosure 11: screenshots from Facebook dated 06/06/2015.

• Enclosure 12: map of Jumping Fitness centres.

• Enclosure 13: analysis of company logos of JUMPING JSTB: .

• Enclosure 14: extracts from www.jumping-fitness.com

• Enclosure 15: transcription of communication between the owner’s associate and applicant1’s CEO.

• Enclosures 16 and 17: certificates of the trade marks in conflict.

The EUTM proprietor argues that there is no likelihood of confusion between the trade marks. The assessment of similarity requires more than just comparing one component of each mark, as the assessment must be global. Even assuming that the devices are the same, this would not lead to the conclusion that the trade marks are confusingly similar. For the good and services in Classes 28 and 41, related to fitness, the motif of a jumping person has a descriptive character and the applicants cannot claim a monopoly. There is no bad faith, as the first condition, namely that the trade marks are similar, is not fulfilled. Second, the holder of the contested trade mark must have had knowledge of the older trade marks; this is not disputed. Third, the EUTM proprietor must have had dishonest intentions when filing the trade mark, and it did not. The licence agreement in Enclosure 5 is not binding on Jumping Fitness AG (the proprietor).

The applicants, in reply, claim that the EUTM proprietor is ignoring the conceptual point of view. It quotes 17/04/2008, T‑389/03, Pelican, EU:T:2008:114

and 20/10/2011, T‑238/10, Horse couture, EU:T:2011:613

as cases in which the European Court of Justice found similarity between devices decisive. Bad faith has been proven, all three conditions are met. The trade marks are confusingly similar. The proprietor itself admitted that it was aware of applicant 1’s older trade marks (Jumping Deutschland was a former licensee and business partner of applicant 1 and its CEO, J. P. Ulrich, is a founder of the EUTM proprietor). The dishonest intention of the proprietor is clearly shown in the fact that Jumping Deutschland, whose CEO, J.P. Ulrich, is CEO of the EUTM proprietor too, breached the competition clause and imitated the successful business (trampoline fitness under the name JUMPING) with a new company. The use for trampoline fitness is a new idea, which was completely copied by the EUTM proprietor.

In support of its observations, the applicants filed further evidence that will not be listed for economy of proceedings.

Even though any company could start its own business based on trampoline fitness, the applicants consider that J.P. Ulrich circumvented the competition clause and based his business on the applicants’ know-how, using the same font for ‘JUMPING’ and a very similar figurative element. Bad faith is obvious.

The EUTM proprietor repeats previously mentioned arguments. The quoted case-law does not apply in the present case because the device of a jumping person is descriptive for some of the good and services while, in the two cases quoted, the motif was distinctive for the goods. Regarding bad faith, it is inherent to competition that more than one company provides the same good and services on the market. The know-how is not protected as such and the decision of the German court is under appeal.

PRELIMINARY REMARKS

Multiple applicants

The present invalidity action is filed by two applicants. Concerning multiple applicants, applications for invalidity based on relative grounds follow the same rules as oppositions (see the Guidelines, Part C, Opposition, Section 1, Procedural Matters). These rules are directly connected to the entitlement requirements of Articles 41(1) and 56(1) EUTMR.

When there is more than one opponent indicated in the notice of opposition, there are only two situations in which the Office accepts two or more separate persons (either natural or legal) as multiple opponents, namely:

- if they are co-owners of the earlier mark or right;

- if the opposition is filed by the owner or co-owner of an earlier mark or right together with one or more licensees of these earlier marks/rights.

In the present case, applicant 1, Jumping Intellectual Property, s.r.o., indicated that it was the owner of the marks on which the present action is based, namely:

• Czech trade mark registration No 463 899;

• International trade mark registration No 1 002 829 designating Bulgaria, Benelux, Denmark, Estonia, Greece, France, Ireland, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia and Slovakia.

In the registration certificates (Enclosures 16 and 17), the holder or proprietor of both trade marks is Jumping Intellectual Property, s.r.o. In one of the licence agreements concluded for an indefinite period on 05/12/2014 (Enclosure 1), applicant 1 appears as the owner of the two trade marks and applicant 2 as the licensee for the Czech Republic and Germany. Therefore, the multiple applicants are considered to have been justified for the Czech Republic and Germany. The decision will therefore continue based on these two territories.

In the case of applications for invalidity based on absolute grounds and for revocation there are no particular requirements regarding multiple applicants, except that they have to be clearly indicated in the application. For the bad faith part of the decision, all the territories designated under the international registration are of relevance.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 marks, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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.

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

Class 28: Dumb-bells, appliances for gymnastics, balls for games, spring boards (sporting articles), body-building apparatus, chest expanders (exercisers), machines for physical exercises, exercisers (expanders), body-training apparatus.

Class 41: Providing sports facilities, practical training (demonstration), club services (entertainment or education), health club services, arranging and conducting of conferences, arranging and conducting of congresses, organization of shows (impresario services), organization of competitions (education or entertainment), organization of sports competitions, rental of sports equipment (except vehicles), arranging and conducting of workshops (training), physical education.

Class 43: Cafes, restaurants, bar services, snack-bars.

The contested goods and services are the following:

Class 25: Clothing; Headgear.

Class 28: Fitness exercise machines; Trampolines.

Class 41: Fitness training; Physical fitness centres (Operation of-); services of fitness trainers; Provision of training courses related to physical fitness.

Some of the contested goods and services are identical to goods and services on which the application is based. For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods and services listed above. The examination of the application will proceed as if all the contested goods and services were identical to those of the earlier marks.

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 and services assumed to be identical are directed at the public at large and at a more specialised public. The degree of attention remains average.

3. The signs

Earlier trade marks	Contested trade mark

The relevant territory is the Czech Republic and Germany.

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

Both signs are figurative.

The earlier marks depict a realistic black silhouette of a jumping man with hands above the head and bent legs, over a green oval background, an action also suggested by the word ‘jumping’, written below in green and co-dominant in the marks. ‘Jumping’ is the gerund of the English verb ‘to jump’, meaning ‘to push yourself suddenly off the ground and into the air using your legs’ (see http://dictionary.cambridge.org/dictionary/english/jump). This word would be understood by part of the German public, considering its good level of English. Considering that some of the goods and services are related to fitness, this word is weak (indicating the action of jumping to remain fit, which is the purpose of the goods and services) for part of the German public and distinctive for the rest of the public.

The contested mark is a highly stylised image of a man or woman composed of black and red lines depicting open arms at the level of the neck and bent legs (no hands or feet are visible). At the bottom are stylised circular black and red lines. No elements are more distinctive or dominant than any other.

Visually, the signs do not coincide in any element. The figurative elements are stylised in such a different manner (one realistic in black and green and the other highly stylised in black and red) that they do not have any visual elements in common. The fact that they both depict a human being in more or less the same position is not enough to find them visually similar, since the way it is depicted, the style and the colours (not considering black) are different. Therefore, they are visually dissimilar.

Aurally, purely figurative marks are not subject to an aural assessment. As one of the marks is purely figurative, it is not possible to compare them aurally.

Conceptually, the earlier trade marks would be understood as depicting the black silhouette of a jumping man with hands raised and bent legs, reinforced because part of the relevant public will understand ‘jumping’ with the meaning previously described. The contested sign will be perceived as a highly stylised image of a person with open arms and bent legs. Therefore, the signs are conceptually similar to an average degree, especially considering that the silhouette of a person with open arms and bent legs looking ‘active’ is not particularly distinctive for goods and services in Classes 28 and 41 relating to fitness. Therefore, the trade marks are conceptually similar to an average degree.

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 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 applicants did not explicitly claim that the marks are particularly distinctive by virtue of intensive use or reputation. They only mentioned that the marks were known in Germany, without filing evidence of enhanced distinctiveness.

Consequently, 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 and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some weak elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The good and services are deemed identical but the trade marks are visually dissimilar and aurally not comparable. The only similarities are conceptual. This is not sufficient to create a likelihood of confusion. The additional word element ‘jumping’ in the earlier trade marks is clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, also bearing in mind that it would not be understood by part of the public and that the elements in common (depiction of a person with extended or raised arms and bent legs) are not particularly distinctive for the goods and services related to fitness.

In addition, the remaining goods, not related to fitness, are clothing articles in a broad sense. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional verbal elements and different figurative elements are particularly relevant when assessing likelihood of confusion between them for the goods in Class 25.

As admitted by the applicants, the contested trade mark produces ‘a visual change’ from the earlier trade marks, not only from green to pink but also from the style and graphic depiction of the silhouette.

The EUTM proprietor had many opportunities to apply for trade marks different from those of applicant 1 and this is what it has done, with an image in different colours and a different style, producing a different overall impression even though the posture of outstretched arms and bent legs is similar. In fact, the applicants mention that they are seeking to protect an idea, which is not possible under intellectual property law in general and even less under trade mark law. The use for trampoline fitness might be a new idea or it might have been used by the applicants, but the Cancellation Division is not a judge of unfair competition or know-how (in addition, the cited decision of the German court about unfair competition is not definitive). Other legal issues related to the intentions of the EUTM proprietor are relevant only to the ground of bad faith (see below).

The legal ground applicable under Article 53(1)(a) EUTMR is about the signs as registered, between which conceptual similarity has been found to be insufficient to create a likelihood of confusion.

The applicants also refer to previous Office decisions to support their arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case 20/10/2011, T‑238/10, Horse couture, EU:T:2011:613, referred to by the applicants, is not relevant to the present proceedings because the signs are not comparable, as there is no word element in the contested mark in the present case, whereas both marks in the previous case contained the word ‘HORSE’:

.

The other case quoted by the applicants, 17/04/2008, T‑389/03, Pelican, EU:T:2008:114, is not relevant either, because, as correctly mentioned by the EUTM proprietor, the depiction of a silhouette with open arms and bent legs is not particularly distinctive, at least for some of the good and services related to fitness, whereas in the Pelican case the depiction of a bird was totally arbitrary for the goods.

For the rest of the goods in Class 25, the fact that the concept in common is depicted differently is sufficient to avoid likelihood of confusion.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Cancellation Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. This would be the case even if the goods and services were identical. Therefore, the cancellation application must be rejected on this ground and must continue on the other ground.

BAD FAITH – ARTICLE 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The applicants established that applicant 1 has an earlier right and had a contractual relationship at least with the EUTM proprietor’s CEO, although the company with which it had a relationship was different.

The contested mark was filed on 01/06/2015. Therefore, for the application to be successful, the applicants have to prove that the EUTM proprietor was acting in bad faith when filing the application for the mark at that time.

Neither of the parties disputes that the EUTM proprietor was aware of the trade marks of applicant 1 before the time of filing. Nevertheless, the details of their relationships and the arguments about the intentions of the proprietor will not be mentioned for economy of proceedings.

Assessment of bad faith

Case-law shows several cumulative factors to be particularly relevant for the existence of bad faith.

Similarity of the signs

Article 52(1)(b) EUTMR does not require, in principle, that the contested EUTM be identical or similar to an earlier right. However, in cases where the invalidity applicant is claiming that the intention of the EUTM proprietor was to misappropriate one or more earlier rights, such as the present one, it is difficult to envisage how a claim of bad faith may succeed if the signs at issue are not at least similar.

It has been considered that there is no likelihood of confusion between the signs because, although they are similar from a conceptual point of view, they are visually depicted in different ways and aurally not comparable. The degree of similarity is, therefore, low. Therefore, the contested mark cannot be regarded as a modified version of the earlier sign.

Global assessment

Considering the low degree of similarity between the signs, the similarities are not enough to create a likelihood of confusion, including likelihood of association. Therefore, one of the conditions for bad faith is missing. Since the similarities between the signs are not sufficient, it is not necessary to examine the additional elements of bad faith and, in particular, to assess the dishonest intention on the part of the EUTM proprietor.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

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

Since the applicants are the losing parties, they must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

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

The Cancellation Division

Ana MUÑIZ RODRIGUEZ

Jessica LEWIS

Vanessa PAGE

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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.