Nike International Ltd. v. OVER TEAK S.r.l.

The contested decision made no assessment of the evidence of reputation of the earlier marks filed by the opponent in the opposition proceedings. However, such reputation is crucial to the proceedings and needs be assessed at the outset. In the Boards view, the evidence filed by the opponent gives convincing testimony that the earlier trade marks possess reputation in the EU not only for ‘clothing, footwear and headgear but for various accessories such as sports bags, sports equipment and accessories. In fact, its marks are among the most recognized brands worldwide for these goods. This finding is further corroborated by a considerable number of previous decisions rendered by the Office, the Spanish Patent and Trademark Office and other the national courts. The opponents figurative signs have an undoubted element of similarity to the applicants ‘double boomerang, which in the Boards view, is not such so as to give rise to a risk of confusion despite the undoubted reputation of the opponents signs. Nevertheless, it would be difficult for the relevant public not to establish a link between the later sign and the earlier reputed sign, especially bearing in mind the similar or identical goods. In the Boards view, there is sufficient force in the opponents arguments to show that it is indeed likely to suffer unfair advantage and/or detriment if the applicants mark were registered and put to use on the market. Given the identity and similarity of goods, together with the undoubted element of similarity between the signs and the high reputation of the earlier trade marks, it is not difficult to imagine that the applicants sign would exploit the distinctive character and reputation of the earlier marks to the benefit of its own marketing efforts. The existence of a cause justifying the use of the trade mark applied for is a defense that the applicant, against which Article 8(5) CTMR is invoked, may raise. The applicant did not do this, but only argued that no similarity between the conflicting signs existed and that the opponent would not suffer any detriment. The contested decision is annulled and the CTM application is refused in its entirety.