Jürgen Klinsmann wins trade mark opposition and also strikes lethal blow by invalidating some of the opponent’s marks on the basis of non-use

In an interesting decision concerning German football manager Jürgen Klinsmann, the EUIPO Fourth Board of Appeal reversed the Opposition Division’s earlier findings and considered that there is no likelihood of confusion between the marks depicted below. In addition, the Board also considered that some of the marks relied on by the Opponent were invalid since it could not prove genuine use of those marks.

Background

In 2017, the Applicant – Jürgen Klinsmann – obtained an international trade mark registration designating the EU for the following mark:

Registration was obtained for goods and services in Classes 16 (paper and cardboard, printed matter), 25 (clothing, footwear and headgear), 32 Beers, mineral waters and other non-alcoholic beverages), and 41 (education, training, entertainment, sporting and cultural activities) of the Nice Classification.

In 2018, the Opponent – Panini Societá Per Azioni – filed an opposition against some of the goods and services. The Opponent claimed that there was a likelihood of confusion and reputation in Italy and the EU, pursuant to Articles 8(1)(b) and 8(5) of Regulation 2017/1001 (The EU Trade Mark Regulation, EUTMR), in relation to the following registered figurative marks:

The Opponent held the above figurative trade mark registrations for goods and services in Classes 16, 25, 32, and 41. In March 2020, the Opposition Division upheld the opposition for all the contested goods and services since these were identical. Furthermore, it also considered that the marks were visually similar to a slightly below average degree and conceptually highly similar, if not identical. 

Since the Opponent was successful, there was no need to examine the earlier reputation on the basis of Article 8(5) of the EUTMR.

In April 2020, the Applicant appealed. It argued that the contested decision should be annulled since the signs are dissimilar, both in their concept and in their concrete features. It also argued that its own sign creates the impression of a stamp with a black silhouette and a stylised player in a black circle executing a bicycle kick, no details (face, clothing etc) being visible, while the Opponent’s trade marks represent realistic drawings of a human with all details (face, clothing, etc), executing a kick in a lateral position in a different position.

The Opponent requested the Board to dismiss the appeal.

The Board’s findings

Visual, aural, and conceptual similarities

The Board first observed that likelihood of confusion must be assessed by means of a global appraisal of the visual, phonetic and conceptual similarity of the signs, on the basis of the overall impression given by them, in particular their distinctive and dominant components (C-251/95, Sabèl).

In general terms, two signs are similar when they are at least partially identical from a visual, aural or conceptual standpoint.

From a visual aspect, the Board considered that the Applicant’s mark was dissimilar from the earlier trade marks in that:

• it only consists of a black and white sketch without any contours within the sign itself, which is just black;
• there is a circle around the black sketchy element; and
• the silhouette is markedly different in position and direction (the thickest stroke being vertical upwards).

The signs were not aurally compared since none of them included any word element.

When it comes to conceptual similarity, the Board reasoned that a representation of a football player is weak for goods that have to do with football and sports in general. This reasoning extended to ‘clothing’ insofar as sportive clothing is covered, and to Class 16 as regards stickers of footballers and football books, almanacs, or albums. In particular, the main product sold by the Opponent were stickers or cards representing the whole line-up of all relevant football teams which had to be bought separately and then inserted into an album. These addressed mainly children and young people, which is also why the evidence submitted by the Opponent portrayed use of the mark on school rucksacks and other school material.

In this sense, there was no clear concept that could be attached to the Applicant’s sign and therefore there was no conceptual similarity between the signs.

Overall assessment of likelihood of confusion

The global assessment of likelihood of confusion must take into account the perception of the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect. It implies some interdependence between the factors taken into account, in particular the similarity between the signs and the goods or services covered, in the sense that a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (C-39/97, Canon).

The average consumer of printed publications, clothing, or beer has no reason to believe that all trade marks that show scenes from football belong to one and the same trader, given the widespread practice of companies to sponsor or make advertisement in football. The average consumer will see the marks in issue as they are and not from the perspective of whether in the abstract both refer to football or football players.

In consequence, there was no likelihood of confusion between the marks.

Genuine use

The Opponent invoked that the mark – depicted below – had reputation in light of Article 8(5) of the EUTMR:

In response, the Applicant submitted that the Opponent should provide proof of genuine use of the above mark and another similar mark, since these were registered more than five years ago.

The Board observed that the documents filed to substantiate the opposition only consisted of general information about the history and economic success of those mark, used on stickers and trading cards, but did not relate at all to the relevant period or even to a particular figurative sign.

In relation to the above mark, it was considered debatable whether a black and white mark maintains a mark registered in colour or vice-versa, but this had no bearing on the black and white mark depicted above.

The Opponent therefore failed to prove any genuine use of those mark.

Comment

This decision is a useful reminder that attacking someone’s application or trade mark comes with risks for your own registration. The burden of proof, when genuine use of the earlier mark is questioned, is on the opponent and it is clear that, if the evidence submitted by the opponent is weak, there is also a risk that the Opponent may indeed lose its own marks.

The decision is also interesting since it signals that there is not necessarily a clear concept when it comes to trade marks relating to sports, in this case football. Let’s see whether there is a further match … before the General Court!