This article first appeared in WTR Daily, part of World Trademark Review, in July 2023. For further information, please go to www.worldtrademarkreview.com.
- Brooks Sports Inc opposed the registration of word and device mark BROOKS by Brooks England Ltd in Classes 18 and 25 based on their earlier word trade mark BROOKS in Class 25.
- General Court upheld Board of Appeal's decision that the marks were visually, conceptually and phonetically similar and there is a likelihood of confusion between the two marks.
- General Court did not split the goods into different sub-categories which enabled the evidence of use to be upheld for the entirety of goods rather than a subcategory of goods.
On 7 June 2023 in Brooks England v EUIPO – Brooks Sports Inc, the General Court dismissed an appeal by Brooks England against the EUIPO Board of Appeal's decision upholding Brooks Sports' opposition against an application to register the trade mark .
In September 2003, Brooks England filed an application to register in Classes 18 and 25. Brooks Sports opposed the mark based upon their earlier word trade mark BROOKS which covers "athletically-related footwear" in Class 25.
Opposition proceedings were postponed several times between 2007 and 2018 due to prolonged but ultimately unsuccessful settlement negotiations between the parties. In the course of the proceedings and following a request from Brooks England to do so, Brooks Sports provided evidence of use of their earlier mark. In October 2020, the Opposition Division partially upheld the opposition and refused the trade mark for "clothing accessories for cyclists including gloves, socks, shoes, caps" in Class 25. The evidence provided by Brooks Sports supported the use of the earlier trade mark in Class 25 in connection with "athletically-related footwear" and there was a likelihood of confusion between the two marks. Brooks Sports successfully appealed this decision, arguing the opposition should be upheld for all goods at issue, ie "Bags, handbags, rucksacks, small rucksacks, bumbags, all for cyclists" in class 18 and "Jackets, shorts, trousers, jerseys, dungarees, tops, bodysuits, all for cyclists; clothing accessories for cyclists including gloves, socks, shoes, caps" in class 25.
General Court decision
Brooks England requested that the Court annul the Board of Appeal decision and register the trade mark for all goods applied for. It argued that Brooks Sports had proven limited use of the earlier mark in connection with running shoes, as opposed to "athletically-related footwear".
Brooks Sports' evidence showed that their earlier trade mark had been used for running and racing shoes (the relevant date for proof of use predated Brexit, so UK use was acceptable). Brooks England claimed the Board of Appeal had erred in its decision by giving a broad meaning to "athletically-related footwear" by equating it with sports shoes, whereas, running shoes were an independent subcategory of "athletically-related footwear".
The General Court disagreed that running or racing shoes were an independent subcategory of "athletically-related footwear" and held that the evidence showed genuine use in relation to those goods.
The General Court found that the goods were similar; they were everyday consumer goods, which could be purchased by consumers who do sport regularly as well those who do not. They were not rare or expensive and did not require technical knowledge. Further, the goods could be manufactured by the same undertakings, and sold in the same outlets such as sports shops, thus supporting the Board of Appeal's findings.
The General Court then went on to consider the overall likelihood of confusion. There was visual, phonetic and conceptual similarity, with only a geographical element and slight stylisation differentiating the marks. There was a likelihood of confusion between the two marks.
The General Court dismissed as irrelevant Brooks England's claim that the mark had been used for many years alongside Brooks Sports and was renowned in Germany and United Kingdom.
This case provides useful guidance on proving genuine use. It is worth noting that the General Court did not split "athletically-related footwear" into different sub-categories; that enabled the evidence of use to uphold for the entirety of goods, as opposed to a contrived subcategory of goods, and led to the finding that the goods were similar.
With thanks to Solicitor Apprentice Charlotte Budd, co-author of this article.
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