Voor achtergrond van deze zaak: Cruijff, geen streepje voor
Opposition Division OHIM 28 July 2015, 002190885
Opposition Division OHIM 28 July 2015, 002190885
Inter S.a.r.l. registered the following trademark:
According to Adidas the registration of Inter
S.a.r.l. is simuler to their earlier trademark CTM 003517588:
The grounds of refusal of Article 8(5) CTMR
are only applicable when the following conditions are met:
1. The signs must be either identical or similar.
The signs are similar (Two stripes
versus three stripes)
2.
The opponent's trade mark i.e. the
three stripes of Adidas 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.
Based on survey held in several Member
States of the European Union the Opposition Division concludes that there is no
doubt that the earlier trade mark, consisting of the three-stripe device
applied vertically on the sleeves of an upper garment, has a very high reputation
in the European Union in relation to sports clothing. It is clear from the
evidence that the earlier trade mark has been subject to long-standing and intensive
use and is generally known in the relevant market, where it enjoys a consolidated
position among the leading brands, as has been attested by diverse independent
sources. In particular, the numerous surveys in various countries of the
European Union, the various references in the press and the decisions of national
courts all unequivocally show that the mark enjoys a very high degree of
recognition among the relevant public.
3. Encroachment upon reputation: the use 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.
As seen above, the earlier mark has a
reputation and the signs are similar to some extent. In order to establish that
a later trade mark will encroach upon the reputation of an earlier mark, it is
necessary to demonstrate that, given all the relevant factors, the relevant public
will establish a link (or association) between the signs.
Possible relevant factors for the examination
of a 'link' include:
•
the degree of similarity between
the signs;
•
the nature of the goods and services, including the degree of similarity
or dissimilarity between these goods or services, and the relevant public;
•
the strength of the earlier
mark's reputation;
•
the degree of the earlier mark's distinctive character, whether inherent
or acquired through use;
•
the existence of likelihood of confusion on the part of the public.
The signs have in common the fact that
they consist of or feature stripes in relation to an upper garment. As the
applicant argues, it must be taken into account that stripes are banal
decorative elements in relation to clothing, which in most cases would be
unlikely to bring the public to establish a link between signs with such a
feature in common.
However, in the present case, the
stripes in question are placed in the same position and in the same
configuration, namely they are dark stripes running in parallel along the full length
or almost the full length of the sleeves of the garments in question.
Furthermore, the fact that the contested
mark contains two stripes whereas the earlier mark consists of three stripes
does not constitute a significant difference (as might be the case if the
difference in the number of stripes were bigger or if one of the marks involved
only one stripe and the ether several stripes).
Finally, the very high reputation of the
earlier mark is to be taken into account. The stronger the distinctive
character of the earlier mark, whether inherent or acquired through the use which
has been made of it, the more likely it is that, confronted with a later
identical or similar mark, the relevant public will call that earlier mark to
mind.
Use of the contested mark will fall
under Article 8(5) CTMR when any of the following situations arise:
•
it takes unfair advantage of the distinctive character or the repute of
the earlier mark;
•
it is detrimental to the repute
of the earlier mark;
•
it is detrimental to the
distinctive character of the earlier mark.
The opponent bases its claim on the
following:
• The
opponent has invested heavily each year in advertising its products bearing the
three-stripe mark.
• The
advertising has been to a great extent based on sponsorship in the field of
sports. The image of the earlier mark is therefore closely linked to the world
of sport.
• Given
that the trade mark applied for is a sports T-shirt, this image of the earlier
mark would be transferred not only to the goods in Class 25 but also to the goods
in Classes 14 and 21.
• The
reputation and quality image of the opponent's three-stripe mark could be
transferred to the applicant's goods, considering the similarities between the opponent’s
mark with a reputation and the contested mark. In consequence, these goods would
attract attention purely due to the attractive force of the earlier mark with a
reputation and the goodwill accumulated thanks to decades of investment.
Considering the very high reputation of
the earlier mark for sports clothing, the Opposition Division has no doubt that
the use of the contested sign would allow the applicant to benefit from the
attractiveness of the earlier mark, if such use were to take place in relation
to goods that were identical or similar to clothing or in relation to goods that
might be available in models especially adapted for the practice of sports. This
would include the goods in Class 25 and the watches and ether chronometric
instruments in Class 14, as well as accessories for or parts of these goods.
Furthermore, nowadays, the markets for
clothing and for jewellery/watches are very closely linked because successful designers of clothing often sell fashion accessories such as watches and
jewellery. Therefore, it is highly likely that the marketing of jewellery under
the contested mark would also be made easier by the association of that mark
with the earlier mark with a reputation.
In addition, it must be taken into
account that the Court has established the principle that the more immediately
and strongly the earlier mark is brought to mind by the later mark, the greater
the likelihood that the current or future use of the later mark is taking
unfair advantage of, or is detrimental to, the distinctive character or the
repute of the earlier mark
In the present case, the contested trade
mark evokes the earlier mark in an immediate and strong manner. This is the
result of, on the one hand, the huge reputation of the earlier mark and, on the
other hand, the peculiarities of the case, namely the fact that the contested
mark consists of the shape of a sports T-shirt with stripes on the sleeves that
the public will immediately perceive as a model of 'Adidas' T-shirt.
Considering
the above, the Opposition Division is of the opinion that the contested trade
mark may also take advantage of the high repute of the earlier mark when it is
used in relation to goods that are very different from sports clothing, such as
the contested goods in Class 21.
The
applicant claimed that it was not until 2014 that the opponent wrote a letter
asking Johan Cruytff's sportswear company to stop selling the T-shirt. lt
submitted an article published by the Dutch football player in the newspaper De
Telegraaf, in which Mr Cruyff refers to this 'cease and desist' letter and expresses
his failure to understand the opponent's reaction to the filing of the T-shirt
trade mark.
Finally,
the applicant contended that the opponent (Adidas) had not in the past objected
to clothing items and shoes bearing two stripes and,
in support of its argument, it submitted a decision of the Presiding Judge of
the District Court of The Hague, of
07/10/1971 ('Adidas/Ternbach'), in which
the Presiding Judge established that the opponent had no objections to footwear
bearing a design consisting of two parallel stripes.
In the present case, the contested trade
mark evokes the earlier mark in an immediate and strong manner. This is the
result of, on the one hand, the huge reputation of the earlier mark and, on the
other hand, the peculiarities of the case, namely the fact that the contested
mark consists of the shape of a sports T-shirt with stripes on the sleeves that
the public will immediately perceive as a model of 'Adidas' T-shirt.
Therefore,
the applicant's argument is manifold: in the first place, it considers that the
fact that Adidas did not object to Mr Cruyff's wearing that particular T-shirt,
either in the 1970s or since then (since it did not object either to the sale
of this T-shirt on a website), must be held to constitute 'due cause' for use of
such T-shirt in the contested trade mark. The second part of the argument is
that the T-shirt shape of which the contested mark consists is well known and
forms part and parcel of the image of Mr Cruyff and that his right to exploit
freely his own image also constitutes due cause. The third reason why due cause
should be established, in the applicant's opinion, is that Adidas has not
implemented a strategy of enforcement in relation to ether trade marks for
clothing involving two stripes.
In its final reply, the opponent argued that
the events to which the applicant had referred were past events that took place
in the 1970s, which had no bearing on the present case, which related to a trade
mark application filed in 2012. It also contended that the German court's decision
of 1971, submitted by the applicant, allowed no conclusion regarding the
enforcement strategy of Adidas in the last 40 years and that, on the contrary, Adidas
had indeed rigorously enforced its trademarks, including against marks involving
two stripes on clothing, as shown by the evidence submitted to demonstrate the reputation
of the marks on which the opposition was based.
In the view of the Opposition Division,
the applicant's claim is not well founded.
The
General Court has held that, in order to establish due cause, it is not use of
the contested trade mark that is required but a reason justifying the use of
that trade mark.
In the present case, the applicant's
arguments refer not even to use of the contested trade mark but to use of a
T-shirt by which the trade mark is inspired. Furthermore, the use of this T-shirt took place at a very specific
event in 1974 and, even though the applicant refers to a website on which the
T-shirt is sold, no copy of the website has been provided and no information has
been given about when such sales started.
The fact that the T-shirt in question
has been sold on a website without objections from the opponent does not mean
that the marks at issue have coexisted or that the opponent has consented to
the use of the contested trade mark. Consenting to the sale of a T-shirt is not
tantamount to consenting to the use of a trade mark consisting of the shape of
that T-shirt and even less to the registration of such a trade mark. The email of
24/01/2013 from the opponent’s History Management Department merely restates
the reasons why the opponent did not object at that time to Johan Cruyff's not
wearing an Adidas shirt and how this was made possible by the football
regulations about team outfits at that time.
Events
that took place during the 1974 Football World Cup in Germany are not relevant
to the present case. The fact that a one-off arrangement was found between the
opponent and Johan Cruyff for a specific occasion 40 years ago, namely the fact
that Mr Cruyff wore a T-shirt with two stripes instead of three, cannot be
interpreted as any form of due cause for the applicant to apply for the
contested trade mark, either at that time or, much less, at the time of filing
of the contested trade mark in 2012.
Likewise, a single court decision, dated
in 1971, cannot be taken to reflect the opponent's enforcement strategy as a
whole and in recent years.
The applicant's argument that it is
entitled to use the T-shirt's shape because it forms part and parcel of Mr
Cruytf's image is not valid either for
establishing due cause.
Considering
the above, the Opposition Division is of the opinion that the contested trade
mark may also take advantage of the high repute of the earlier mark when it is
used in relation to goods that are very different from sports clothing, such as
the contested goods in Class 21.
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