JUDGMENT OF THE GENERAL COURT (First Chamber)
29 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark CROSSWOD EQUIPMENT – Earlier EU word marks and international registration of a word mark CROSSFIT – Earlier EU word mark CROSS – Relative grounds for refusal – No likelihood of confusion – Non-similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001 – No damage to reputation – Article 8(5) of Regulation 2017/1001)
In Case T‑506/22,
CrossFit LLC, established in Boulder, Colorado (United States), represented by D. Mărginean, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Pitk Pelotas, SL, established in Noain (Spain),
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni (Rapporteur) and M. Brkan, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, CrossFit LLC, seeks the annulment and the alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 June 2022 (Case R 325/2021-1) (‘the contested decision’).
Background to the dispute
2 On 14 May 2019, Pitk Pelotas, SL filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in Classes 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding, for each of those classes, to the following description:
– Class 25: ‘Clothing, footwear, headgear; clothing for gymnastics; sportswear; gym suits; gym suits’;
– Class 28: ‘Games and playthings; gymnastic and sporting articles; gymnastic articles; body-training apparatus; gymnastic articles; sports equipment’.
4 On 9 October 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on, inter alia, the following earlier rights:
– the EU word mark CROSSFIT, registered on 28 June 2014 under No 12850673, in respect of goods in Classes 16 and 28 and corresponding, for each of those classes, to the following description:
– Class 16: ‘Paper goods and printed matter, namely, a series of books, written articles, handouts and worksheets in the fields of fitness, nutrition, sports and exercise; printed instructional, educational, and teaching materials in the fields of fitness, nutrition, sports and exercise; magazines in the fields of fitness, nutrition, sports and exercise; general feature magazines; exercise books; posters, bumper stickers’;
– Class 28: ‘Exercising equipment, namely, weight lifting bars, dumbbells, medicine balls, nets for sports, exercise bars; fitness machines and equipment, namely, rowing machines; exercise weights; gymnastic apparatus’;
– the EU word mark CROSSFIT, registered on 2 August 2007 under No 5049192 and renewed until 2 May 2026, in respect of goods in Classes 9, 38 and 41 and corresponding, for each of those classes, to the following description:
– Class 9: ‘Online journals in the field of fitness and nutrition; audio and visual sound recordings, namely pre-recorded cassettes, compact discs, videos, DVDs, and CD-ROMs in the field of health, fitness or nutrition; semi-conductor devices containing recorded sound and/or video and/or images; music, sounds, images, text, signals, software, information, data and code provided by telecommunications networks, by online delivery and by way of the Internet; photographic and cinematographic films prepared for exhibition; computer software; non-printed publications; electronic, magnetic and optical credit, identity and/or membership cards; sunglasses and cases and bags adapted therefor’;
– Class 38: ‘Chat room and electronic bulletin board services; electronic dissemination and distribution of data and information in the field of fitness and nutrition; information, advisory and consultancy services relating to the aforesaid, including the provision of such services online from the internet or extranets’;
– Class 41: ‘Fitness training; rendering online interactive fitness services which allow users to create and/or use fitness and body building programs; providing information in the field of fitness and bodybuilding; consultation services with fitness trainers; educational, instructional and training services; arranging and conducting educational and training conferences and seminars; production of educational sound and video recordings; lease, hire and rental of instructional and teaching materials; provision of education on-line from a computer database or via the Internet or extranets; conducting courses, seminars and workshops; design, setting, administering and marking examinations; testing of people; provision of online journals featuring information relating to fitness and nutrition; provision of blogs featuring information on fitness and special events; information, advisory and consultancy services relating to the aforesaid, including the provision of such services online from the internet or extranets’;
– the international registration designating the European Union of the word mark CROSSFIT, registered on 13 July 2011 under No 1086145, in respect of goods in Class 25 and corresponding to ‘clothing, namely, shirts, pants, shorts, jackets, sweatshirts, sweatpants, headwear, socks and footwear’;
– the EU word mark CROSS, registered on 25 May 2018 under No 17849894, in respect of goods and services in Classes 28 and 41 and corresponding, for each of those classes, to the following description:
– Class 28: ‘Sporting articles and equipment; barbells for weight lifting; dumb-bells [for weight lifting]; exercise balls; gym balls; sportballs; climbers’ harness; nets for sports; exercise bars; machines for physical exercises; rowing machines; exercise weights; appliances for gymnastics; manually operated exercise equipment; skateboards; games; stationary exercise bicycles’;
– Class 41: ‘Teaching; training; entertainment services; sporting and cultural activities; tuition in physical fitness; sports and fitness services; physical fitness consultation; personal trainer services [fitness training]; education and instruction services; organisation of conferences relating to vocational training; production of educational sound and video recordings; hire of teaching materials; provision of education on-line from a computer database or via the internet or extranets; conducting courses, seminars and workshops; organisation of examinations to grade level of achievement; provision of skill assessment courses; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable; writing services for blogs; consultancy relating to physical fitness training; information relating to entertainment, provided on-line from a computer database or the internet; publication of material which can be accessed from databases or from the internet; provision of information on fitness training via an online portal; news reporters services; provision of entertainment via podcast; information relating to cultural activities; information about entertainment and entertainment events provided via online networks and the internet; providing information about sporting activities; provision of educational information; provision of instruction relating to nutrition; provision of information relating to physical exercises via an online web site; providing on-line music, not downloadable; provision of audio and visual media via communications networks; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; production of sound recordings; production of audio-visual recordings; on-line gaming services; organisation and presentation of shows; organising of shows for educational purposes; organization of shows for cultural purposes; organising of shows for entertainment purposes; organisation of sporting events; organisation of live performances; presentation of live performances; arranging of games; organization of sports competitions; organization of competitions; arranging of award ceremonies; ticketing and event booking services; arranging and conducting of lectures; arranging and conducting of seminars; arranging and conducting of workshops [training]; physical training services; organising of sporting activities and of sporting competitions; providing sports entertainment via a website; exercise [fitness] advisory services’.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 18 December 2020, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
8 On 15 February 2021, Pitk Pelotas filed an appeal with EUIPO against the Opposition Division’s decision.
9 By the contested decision, the Board of Appeal upheld the appeal and dismissed the opposition. First, as regards the existence of a likelihood of confusion with regard to the mark applied for and the earlier marks composed of the word element ‘crossfit’, the Board of Appeal found, in essence, that there was no such likelihood on the part of the relevant public, taking into consideration the low inherent distinctive character of those earlier marks, their low degree of visual similarity, their average degree of phonetic similarity and their low degree of conceptual similarity. Secondly, as regards the existence of a likelihood of confusion with regard to the mark applied for and the earlier mark CROSS, the Board of Appeal found, in essence, that, despite the identity of the goods, there was no such likelihood, given the weak distinctive character of the mark CROSS, the low degree of visual and conceptual similarity between the marks and their at best average phonetic similarity. In particular, as regards the weak distinctive character of the mark CROSS, it found that the relevant public would understand that mark as referring to a certain type of sporting activities, namely ‘cross-country’, evocative of the kind and purpose of the goods covered by the earlier mark. Thirdly, the Board of Appeal found, in essence, that the evidence submitted by the applicant in order to establish an enhanced distinctiveness and the reputation of the earlier mark ‘CROSSFIT’ was insufficient.
Forms of order sought
10 The applicant claims that the Court should:
– annul, in part, the contested decision;
– reject the application for registration;
– order Pitk Pelotas to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
12 The applicant relies on three pleas in law. The first and second pleas allege infringement of Article 8(1)(b) of Regulation 2017/1001 in that the Board of Appeal incorrectly found that there was no likelihood of confusion, first, as regards the sign applied for and the earlier marks CROSSFIT and, secondly, between the sign applied for and the earlier mark CROSS. The third plea alleges infringement of Article 8(5) of Regulation 2017/1001 in that the Board of Appeal incorrectly found that the reputation of the earlier mark CROSSFIT had not been established.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 as regards the earlier marks CROSSFIT
13 In its first plea, first, the applicant claims that the Board of Appeal erred in considering that the element ‘cross’, common to the marks at issue, had a weak distinctive character. Secondly, it claims that the Board of Appeal erred in considering that, even if proven, the enhanced distinctiveness of the earlier mark CROSSFIT would not change the degree of distinctive character of those earlier marks. Thirdly, the applicant maintains that the Board of Appeal erred in considering that the enhanced distinctiveness and the reputation of the earlier marks at issue was not established. Fourthly, the applicant claims that there is a contradiction in the Board of Appeal’s line of argumentation as regards the perception of the word ‘crossfit’ by the relevant public.
Preliminary observations
14 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
15 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
17 Where the protection of the earlier trade mark extends to the whole European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should must be borne in mind that, in order for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
18 It is in the light of the abovementioned principles that the present plea must be examined.
The relevant public
19 In the present case, the Board of Appeal considered that, in respect of the three earlier marks CROSSFIT, the relevant territory was that of the European Union. Furthermore, it considered that, since the goods and services at issue were essentially sports clothing and sports equipment, the relevant public was composed of the general public displaying an average level of attention and of professionals operating in the field of sports and fitness. That assessment has not been disputed by the parties.
The comparison of the goods
20 In the present case, the Board of Appeal found that the goods at issue were, in part, identical and, in part, similar to a low degree to the goods and services covered by the three earlier marks CROSSFIT. That assessment has not been disputed by the parties.
The comparison of the marks
21 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
22 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
23 Furthermore, it should be observed that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of the signs (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 47 and the case-law cited).
24 At the outset, it should be noted that the earlier marks are inter alia three word marks composed of the word ‘crossfit’. As for the mark applied for, it consists of three letters in black capital letters, ‘C’, ‘R’ and ‘O’, a figurative element in red which can be perceived as a stylised letter ‘s’, as a stylised double letter ‘s’ or as a fanciful element, and three other black capital letters, ‘W’, ‘O’ and ‘D’. The term ‘equipment’ appears below those elements in thinner characters.
– The distinctive and dominant elements
25 First, the Board of Appeal found, as regards the earlier marks, that the element ‘cross’, common to the signs at issue, had a weak distinctive character. Referring to the Oxford English Dictionary, it considered that the English word ‘cross’, in the context of sporting activities, was used as a short form of the expression ‘cross-country’, the latter referring to the sports of running, riding, skiing, or motoring across fields or countryside as opposed to on roads or tracks. Furthermore, the Board of Appeal noted that that meaning was associated with a word appearing in French, German, Italian and Spanish dictionaries. It further stated that, taking into account the international character of sports activities and competitions, non-English speakers in other parts of the European Union were likely to be familiar with English sports terminology and the meaning of the word ‘cross’ in that field. Secondly, the Board of Appeal considered that, as regards the element ‘fit’, notwithstanding the several possible meanings of that word, it was understood throughout the European Union in the context of goods and services related to sports and physical fitness as referring to the English term ‘fitness’, which has found its way into almost all official languages of the European Union. Therefore, the Board of Appeal found that, in the earlier marks, neither the element ‘cross’ nor the element ‘fit’ was dominant or more distinctive than the other.
26 As regards the mark applied for, the Board of Appeal held that, in view of the size, positioning and descriptive character of the element ‘equipment’, the element ‘crosswod’ was the distinctive and dominant element of that mark, and the applicant does not dispute this.
27 The applicant maintains that the Board of Appeal erred in finding that the word element common to the signs at issue, namely ‘cross’, had a weak distinctive character. It submits, in the first place, that the definition given by the Board of Appeal of the term ‘cross-country’, of which ‘cross’ is the abbreviation, could not be found when checking the hyperlink provided, nor does it present the basic definition of the term ‘cross’. Furthermore, the applicant claims, as regards the existence of the word ‘cross’ in French, German, Italian and Spanish dictionaries, that, even though the inclusion of a word in a dictionary usually is the confirmation of a relatively widespread use, it should be kept in mind that not all the words or definitions of words found in dictionaries are actually used and understood by everyone. Moreover, according to the applicant, the use of an Anglicism in another language usually takes place when there is no equivalent of that word in that language and that is not the case in the four other abovementioned languages. Consequently, in its view, the public in countries where those languages are spoken is more inclined to use the words corresponding to ‘cross’ and ‘cross-country’ in their own language than the English version of those words.
28 In the second place, the applicant maintains that the most immediately understood meanings of the term ‘cross’, for both native and non-native English speakers, including those who practise sports or fitness or are interested in it, are, ‘a mark, object, or figure formed by two short intersecting lines or pieces’, on the one hand, and ‘a symbol of Christianity’, on the other. Furthermore, the applicant claims that the general public of the European Union is not made up solely of English-speaking consumers and that, therefore, it would not be correct to analyse the perception of the word ‘cross’ by referring only to the English-speaking part of that public.
29 In the third place, the applicant maintains that it is also the proprietor of the earlier mark CROSS in respect of certain goods in Classes 28 and 41 and that that mark has been registered without being opposed. Consequently, in its view, the element ‘cross’ cannot have a weak distinctive character in connection with the goods and services at issue.
30 Lastly, the applicant claims, in essence, that there is a likelihood of confusion for a part of the public which is likely not to recognise any semantic content in the words ‘crossfit’, ‘cross’ and ‘fit’.
31 EUIPO disputes the applicant’s arguments.
32 As correctly noted by the Board of Appeal, it should be pointed out that the Court has already found that the word element ‘cross’ could be used as an abbreviation of the word ‘cross-country’ (see, to that effect, judgment of 29 January 2020, Volkswagen v EUIPO (CROSS), T‑42/19, not published, EU:T:2020:15, paragraphs 27 and 28). Furthermore, it should be noted, as the Board of Appeal did, that the fact that ‘cross’ is considered to be an abbreviation of ‘cross-country’ also appears in the online version of four non-English dictionaries, namely the French dictionary Le Robert, the German dictionary Duden, the Italian dictionary Dizionario italiano De Mauro and the Spanish dictionary Diccionario de la Real Academia Española.
33 Accordingly, it must be found that the element ‘cross’ is understood, in the context of the goods and services at issue, which mostly fall within the field of sports and fitness, as an evocation of such a sporting discipline or event. That understanding is shared in a significant part of the European Union, taking into account, moreover, as the Board of Appeal correctly noted, the international character of sporting activities and competitions.
34 As regards the meanings of the elements ‘crossfit’ and ‘fit’, it must be found, as EUIPO did, that the relevant public in the field of sports and fitness throughout the European Union is likely to understand the expression ‘crossfit’ or the words ‘cross’ and ‘fit’ as referring to certain types of sports or training programmes, even if part of that public consists of non-English speakers. Therefore, the Board of Appeal correctly found that the common element ‘cross’ of the signs at issue, the element ‘fit’ and the element ‘crossfit’ as a whole had a weak distinctive character in that they referred to the goods and services covered by the earlier marks and in Classes 25, 28 and 41.
35 Accordingly, it must be stated that the Board of Appeal correctly found that, first, neither the element ‘cross’ nor the element ‘fit’ of the earlier marks was dominant or distinctive and that, secondly, in the mark applied for, the element ‘crosswod’ was the most distinctive and dominant element.
– The visual, phonetic and conceptual similarity
36 First, the Board of Appeal considered that, visually, the signs at issue coincided in the element ‘cross’ and differed in the elements ‘wod’, in respect of the mark applied for, and ‘fit’, in respect of the earlier marks. Furthermore, there are differences between those signs which arise from graphic elements in the mark applied for, namely the stylisation of the letter ‘s’ and the arrangement of the additional word ‘equipment’ under the word ‘crosswod’, which will not be overlooked. In the light of the foregoing, the Board of Appeal found that the degree of visual similarity between the marks at issue was low.
37 Secondly, phonetically, the Board of Appeal found that the pronunciation of the element ‘cross’ of the marks at issue was identical or similar in all the relevant languages, namely the official languages of the European Union, and that that pronunciation differed in the elements ‘fit’ and ‘wod’. It added that the non-distinctive element ‘equipment’ of the mark applied for is unlikely to be pronounced. Consequently, the Board of Appeal found an average degree of phonetic similarity.
38 Lastly, conceptually, the Board of Appeal found that, first of all, as a whole, the word element ‘crosswod’ of the mark applied for had no meaning. Next, it considered that the word ‘crossfit’ could be understood either as an intensive fitness programme which incorporates elements from a range of sports and exercises such as weightlifting and gymnastics, or as having no clear meaning but as being evocative of a fitness-related sports activity across the countryside or across different exercises. Lastly, the Board of Appeal found that, to the extent that the element ‘cross’ is perceived as an English word, the conceptual similarity remains low because ‘cross’ will be perceived as a word alluding to sports and fitness.
39 Those assessments of the Board of Appeal concerning the visual, phonetic and conceptual similarities have not been disputed by the parties.
The global assessment of the likelihood of confusion
40 In the first place, the Board of Appeal found that, in view of the inherently weak distinctive character of the element ‘crossfit’ for fitness-related services included in Class 41, any enhanced distinctiveness of the earlier mark for the other services covered by that mark in Class 41 could at best lead to a normal degree of distinctiveness and would not suffice to establish a likelihood of confusion with regard to goods that are only similar to a low degree. Subsequently, it found that the evidence submitted by the applicant was not sufficient to establish the enhanced distinctiveness of the earlier marks in respect of services in Class 41.
41 In the second place, the Board of Appeal found that, in view of the weak distinctive character of the element ‘cross’ common to the signs at issue, the low degree of visual and conceptual similarity and the at best average phonetic similarity, there was no likelihood of confusion, even for identical goods. Thus, it noted that, notwithstanding the fact that the signs at issue share the element ‘cross’, the differences between those signs, namely the element ‘wod’ and the stylised double letter ‘s’ of the mark applied for and the element ‘fit’ of the earlier mark, were sufficient to safely distinguish them, even if they appear on identical goods.
42 In the first place, the applicant maintains that the Board of Appeal erred in finding that the word element common to the signs at issue, namely ‘cross’, had a weak distinctive character (see paragraph 27 to 29 above). The applicant maintains that it is also the proprietor of the earlier mark CROSS in respect of certain goods in Classes 28 and 41 and that that mark has been registered without being opposed. Consequently, in its view, the element ‘cross’ cannot have a weak distinctive character in connection with the goods and services at issue. Lastly, it also claims that there is a likelihood of confusion for a part of the public which is likely not to recognise the meaning of the words ‘crossfit’, ‘cross’ and ‘fit’.
43 In the second place, as regards the distinctive character of the earlier marks CROSSFIT, the applicant maintains, in essence, that the Board of Appeal made errors of assessment, first, in examining the enhanced distinctiveness of the earlier marks in the section analysing the likelihood of confusion and not in the context of the assessment of their reputation, secondly, in finding that the evidence submitted to establish an enhanced distinctiveness and the reputation of its earlier marks was insufficient for the services in Class 41 and, thirdly, in considering that, even if established, the enhanced distinctiveness of the earlier marks CROSSFIT could lead to at best an average degree of distinctive character.
44 In the third place, as regards the global assessment of the likelihood of confusion, the applicant, in essence, argues that there is a certain contradiction between paragraph 26 of the contested decision, which states that ‘part of the public will have understood the earlier mark as a combination of the words “cross” and “fit”’, and paragraph 40 of that decision, which states that ‘the assumption that consumers might split the word “crossfit” in a meaningful part (“fit”) and a part that allegedly has no meaning for the goods and services at hand (“cross”) contradicts the general rule that a sign is perceived as a whole’. According to the applicant, there is a likelihood of confusion for a part of the public which is likely not to recognise any semantic content in the words ‘crossfit’, ‘cross’ and ‘fit’.
45 EUIPO disputes the applicant’s arguments.
46 It should be borne in mind that, according to settled case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered. In accordance with the principle of the interdependence, there may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar (see judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 50 and the case-law cited).
47 It follows from recital 11 of Regulation 2017/1001 that the assessment of the likelihood of confusion depends on a number of elements and, in particular the public’s recognition of the trade mark on the market at issue. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
48 Furthermore, according to the case-law, where the earlier trade mark and the mark at issue coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53).
49 Lastly, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70).
50 It follows from the considerations previously set out in paragraphs 19 to 39 above that, first of all, the relevant public is composed of the general public displaying an average level of attention and of professionals operating in the field of sports and fitness. Next, it was found that the goods at issue were, in part, identical and, in part, weakly similar to the goods and services covered by the earlier marks. Furthermore, it should be noted that the element ‘cross’, common to the signs at issue, has a weak distinctive character, the visual and conceptual similarities are at best weak and the phonetic similarity is at best average.
51 Next, as EUIPO correctly submits, it must be stated that the relevant public in the field of sports and fitness throughout the European Union is likely to understand the expression ‘crossfit’ or the words ‘cross’ and ‘fit’ as referring to certain types of sports or training programmes, even though part of that public consists of non-English speakers. In that regard, as noted by the Board of Appeal in paragraph 38 of the contested decision, although, according to the case-law referred to in paragraph 47 above, the more distinctive the earlier mark, the greater will be the likelihood of confusion; the opposite is also true. As regards a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should, as a rule, be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor (see, to that effect, judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 56).
52 Lastly, in the present case, even assuming that the earlier marks have an enhanced distinctiveness acquired through use and therefore enjoy more extensive protection, the fact remains that, taking into account the findings made in paragraph 50 above, the Board of Appeal correctly found that there was no likelihood of confusion. Therefore, even if the Board of Appeal had erred in not recognising that the earlier marks had acquired an enhanced distinctiveness through use, that error would not be capable of calling into question the validity of its conclusion regarding the absence of a likelihood of confusion in this case.
53 Consequently, it is not necessary to analyse the various pieces of evidence submitted in the EUIPO procedure in order to demonstrate the enhanced distinctiveness of the earlier marks.
54 In the light of all of the foregoing considerations, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 as regards the earlier mark CROSS
55 In its second plea, the applicant claims that there is a likelihood of confusion as regards its earlier mark CROSS and the mark applied for. As part of its analysis, the applicant refers to the arguments which it set out in its first plea.
56 First, the applicant maintains that the Board of Appeal erred in finding, in the global assessment of the likelihood of confusion, an alleged neutral result of the conceptual comparison, which it had not actually established. More precisely, the applicant claims that the two signs at issue have a conceptual meaning, which cannot lead to a neutral result from the conceptual comparison of those signs. In its view, the element ‘cross’, common to the signs at issue, and the element ‘wod’ of the mark applied for, which is an abbreviation of ‘workout of the day’, are connected to the field of fitness and sports and, therefore, to the services covered by the earlier mark. Consequently, the conceptual similarity between those two signs must be regarded as high.
57 Secondly, the applicant maintains that the elements of the mark applied for that differ from the earlier mark are ‘wod’ and ‘equipment’, which are perceived by part of the relevant public as being devoid of any distinctive character as regards the goods and services in the field of sports and fitness. As regards the stylised layout of the double letter ‘s’ of the mark applied for, which does not appear in the earlier mark, that element has a lesser impact on consumers because it has a weak distinctive character.
58 Thirdly, the applicant disputes the Board of Appeal’s assessment that certain items of evidence which it submitted confirm that, in the relevant field of sports and physical fitness, the visual presentation plays an important role in the marketing of the goods and services. In particular, the applicant claims that the goods at issue which were regarded as identical, namely sports equipment, gymnastic articles and body-training apparatus, are not chosen because their packaging is attractive, but rather based on their characteristics and functions.
59 EUIPO disputes the applicant’s arguments.
60 At the outset, it must be stated that, in the present case, the applicant does not dispute the merits of the contested decision as regards the identity and similarity of the goods and services covered by the signs at issue.
61 Nor does it dispute that the relevant public in relation to which the likelihood of confusion must be assessed consists of the general public displaying an average level of attention, but also of professionals active in the field of sports and fitness.
62 Only the Board of Appeal’s assessment as to the similarity of the signs at issue is disputed. It must therefore be examined whether the Board of Appeal correctly found that there was a low degree of similarity between those signs.
The comparison of the marks
63 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited). In that regard, it is also apparent from the case-law that the fact that a mark applied for consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (judgments of 21 March 2011, Visti Beheer v OHIM – Meister (GOLD MEISTER), T‑372/09, not published, EU:T:2011:97, paragraph 27, and of 7 March 2013, FairWild Foundation v OHIM – Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31).
64 In the present case, it must be observed that, as the Board of Appeal noted, the earlier mark consists solely of the word element ‘cross’, while the mark applied for is composed as indicated in paragraph 24 above.
65 In the first place, as regards the distinctive character of the various elements of the mark applied for, it must be stated that, first, the common element ‘cross’ of the signs at issue has a weak distinctive character (see paragraph 34 above). Secondly, as regards the element ‘wod’ of the sign applied for, the applicant has not demonstrated that a significant part of the relevant public understood that it was the abbreviation of ‘workout of the day’. Therefore, it must be stated that that element has an average distinctive character. Thirdly, as regards the stylisation of the double letter ‘s’, it should be noted that it has only a lesser impact on the perception of the mark applied for by the relevant public.
66 In the second place, as regards the visual comparison of the marks at issue, the Board of Appeal considered that their degree of similarity was low. In its view, those earlier marks coincided in the common term ‘cross’ and differed in the element ‘wod’, in the stylisation of the double letter ‘s’ of the mark applied for and in their overall length and structure. That assessment has not been disputed by the parties.
67 In the third place, as regards the phonetic comparison of the signs at issue, the Board of Appeal considered that the pronunciation of the common element ‘cross’ was similar or identical in the different languages of the European Union, but that those signs differed in the number of syllables, the stress on the first or second syllable and the additional element ‘wod’ of the mark applied for. After further stating that the non-distinctive element ‘equipment’ of the mark applied for was unlikely to be pronounced, the Board of Appeal found that the signs at issue had at best an average degree of phonetic similarity. That assessment has not been disputed by the parties.
68 In the fourth place, conceptually, the Board of Appeal found that the term ‘crosswod’ had no clear meaning either in English or in other official languages of the European Union. It further stated that, since the element ‘cross’ of the mark applied for was perceived as alluding to sports and fitness, the conceptual similarity between the signs at issue was low.
69 First of all, as regards the applicant’s argument that the Board of Appeal made an error in taking into account the neutral result of the conceptual comparison of the signs at issue, it should be noted that, as EUIPO submits, that error has no influence on the finding reached in the contested decision. In the same paragraph of the contested decision, the Board of Appeal takes into account the weak distinctive character of the earlier mark which results, as indicated in paragraphs 32 to 34 above, from the relevant public’s understanding of the term ‘crossfit’, in the context of the goods and services at issue, as an evocation of a sporting discipline or event which is shared in a significant part of the European Union taking into account the international character of sporting activities and competitions. Accordingly, it must be found that, by the presence of the element ‘cross’ in the signs at issue, the Board of Appeal considered that the conceptual similarity between those signs was low and not neutral as indicated in paragraph 57 of the contested decision.
70 As regards the meaning of the term ‘wod’ of the sign applied for, it was found in paragraph 65 above that it has an average distinctive character, in that it was not understood by a significant part of the relevant public as being the abbreviation of ‘workout of the day’. Contrary to the applicant’s submission, the terms wod’ and ‘cross’ do not therefore convey identical concepts linked to the practice of sports. Accordingly, the Board of Appeal correctly found that the degree of conceptual similarity between the signs at issue was low.
The global assessment of the likelihood of confusion
71 The Board of Appeal found that, taking into account the weak distinctive character of the earlier mark, the low degree of visual and conceptual similarity (see paragraph 69 above) and the at best average phonetic similarity, there was no likelihood of confusion between the signs at issue. It further stated that the goods and services at issue were not known to be chosen or ordered orally and that the evidence submitted by the applicant confirmed that, in the relevant field of sports and physical fitness, the visual presentation played an important role in the marketing of those goods and services.
72 It should be considered that, while it is true that, according to the case-law referred to in paragraph 63 above, the fact that a mark applied for consists exclusively of the earlier mark to which another word has been added is an indication that the two trade marks are similar, the fact remains that, in this case, the weak distinctive character of the element ‘cross’ common to those signs and the element ‘wod’ of the mark applied for allow the conclusion that there is a low degree of similarity between those signs.
73 In those circumstances and taking into account, first, the considerations already set out in paragraphs 60 to 70 above, and, secondly, the case-law recalled in paragraphs 46 to 48 and 51 above, the Board of Appeal correctly found that there was no likelihood of confusion in respect of the goods at issue, in particular due to the weak distinctive character of the element ‘cross’, common to those signs.
74 In the light of the foregoing, the second plea in law must be rejected.
The third plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
75 The applicant claims, in essence, that the evidence which it submitted shows that the earlier mark CROSSFIT registered under No 5049192 enjoys a reputation in the European Union with regard to a significant part of the relevant public in relation to the services included in Class 41 and that the use without due cause of the mark applied would take unfair advantage of the repute of the earlier mark, within the meaning of Article 8(5) of Regulation 2017/1001.
76 EUIPO disputes the applicant’s arguments.
77 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
78 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35 and the case-law cited, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited). Furthermore, it is not apparent either from the wording of Article 8(1)(b) of Regulation 2017/1001 and Article 8(5) of that same regulation or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under either of those provisions (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 54).
79 According to the case-law, the concept of similarity between the marks at issue and the criteria to be taken into consideration when assessing the similarity of marks at issue are the same in the case of a refusal to register a mark applied for because of a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation 2017/1001, and in the case of refusal to register that mark because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation 2017/1001. In those two situations allowing registration of the mark applied for to be refused, the condition relating to similarity between the mark applied for and the earlier mark requires the existence, in particular, of elements of visual, phonetic or conceptual similarity, so that, from the point of view of the relevant public, the marks at issue are at least partially identical as regards one or more relevant aspects (see judgment of 12 November 2014, Volvo Trademark v OHIM – Hebei Aulion Heavy Industries (LOVOL), T‑524/11, EU:T:2014:944, paragraph 21 and the case-law cited).
80 In the present case, as was found in paragraphs 36 to 39 and 50 above, since the visual and conceptual similarities are at best weak and the phonetic similarity is at best average, the second condition set out in paragraph 78 above is satisfied since the marks at issue have a certain degree of similarity. It is therefore appropriate to examine the second and third conditions set out in paragraph 78 above.
81 The applicant claims that the Board of Appeal made errors in the assessment of the evidence which it submitted in order to demonstrate the reputation of its earlier mark in the European Union on the date of filing of the mark applied for, namely 14 May 2019, for certain services covered in Class 41, namely ‘fitness’ services and ‘fitness-related services’.
82 In particular, first, it maintains that one of the most important aspects of its ‘CrossFit’ training programme is its online availability. It submits that that programme has been offered in the form of a ‘wod’, that is to say a ‘workout of the day’ since 2001 (Annex 5) and that the ‘wod’ is taken over by most of the affiliated gyms on their own website and on their social media pages or is written on a whiteboard at the ‘box’, that is to say the physical location of those gyms (Annexes 1 and 11). The applicant further states that Annexes 1, 2, 3 and 11 were produced in order to inform interested persons about the operation of that programme. Therefore, it claims that that programme is also offered on its website, and not only on that of the affiliated gyms, and that it is accessible worldwide, which is indicative of the level of awareness of the training programme and the marks CROSSFIT by the public of the European Union (Annex 10).
83 Secondly, the applicant claims that the Board of Appeal incorrectly found that the use of the earlier mark CROSSFIT by its affiliates did not constitute proof of knowledge by the relevant public of the fitness services which it provides within the European Union (Annex 17). Furthermore, it maintains that the affidavits from owners of the affiliated gyms (Annex 18) were submitted to demonstrate the manner in which the affiliated gyms use that mark in connection with fitness services and that they offer courses under the name ‘crossfit’. In addition, the applicant maintains that the number of followers on social media accounts is also indicative of the number of people who are aware of the fitness services under the name ‘crossfit’ offered by gyms (Annexes 6 and 12) and that, while the affidavits date from 2018, namely, prior to the date of registration of the mark applied for, the printouts of the social media accounts date from 2020. As regards the geographical extent and intensity of use of the earlier mark, supposed to demonstrate knowledge of that mark by the relevant public, the applicant claims that they result from various items of evidence which it submitted, namely the total number of affiliated gyms in the European Union (Annex 12) and ‘crossfit’ affiliate agreements concluded between it and gym owners since 2008 (Annex 17).
84 With regard, more particularly, to those affiliate agreements, the applicant claims that they indicate that the affiliates are free to include the earlier mark CROSSFIT in the name of their gym or a registered domain name, but that they are not authorised to use that mark and the service subject to the licence unless the affiliated gym offers such training by licensed ‘crossfit’ trainers. Accordingly, although each affiliated gym has kept its individuality by using different other names and figurative elements alongside the earlier licensed mark, the applicant maintains that consumers are aware of the existing link between the affiliated gyms and that mark and of the true origin of the services at issue.
85 Thirdly, the applicant relies on printouts from an Internet archive site relating to the holding of training seminars (Annex 9) which include a statement clearly specifying the number of people who participated in the ‘crossfit’ certification courses organised in the European Union. Furthermore, it submits that the fact that the number of participants fluctuated yearly does not reflect a loss of interest in the ‘crossfit’ programme or a drop in the number of affiliated gyms (Annex 7).
86 Fourthly, the applicant disputes the Board of Appeal’s finding that there is no proof of the investments made to promote the ‘CrossFit’ training programme. In its submission, first of all, the most important promotion of its programme is primarily carried out by the affiliated gyms themselves. Next, another major promotional tool is the ‘CrossFit Games’, namely a global event organised by the applicant during which regional qualifications are organised, including in the European Union (Annex 21). Furthermore, there was an increase in popularity in that the number of views on the YouTube website increased significantly between 2008 and 2014 (Annex 11). Lastly, another means of promoting the earlier mark is the selling of branded promotional products on which that mark appears, such as apparel created in collaboration with the REEBOK brand and other branded products such as posters, magnets, water bottles, wrist wraps, barbell collars or notebooks (Annex 22).
87 In conclusion, the applicant claims that the Board has examined each piece of evidence without putting it into its context, by assessing its evidential value in relation to the other pieces of evidence submitted.
88 EUIPO disputes the applicant’s arguments.
89 According to the case-law, in order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, such as traders in a specific sector. In examining whether this condition is fulfilled, account should be taken of all the relevant facts of the case, that is to say, in particular, the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it (judgment of 13 December 2004, El Corte Inglés v OHIM – Pucci (EMILIO PUCCI), T‑8/03, EU:T:2004:358, paragraph 67).
90 However, since the above list is merely illustrative, it cannot be required that proof of the reputation of a mark should pertain to all of those elements (see judgment of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 30 and the case-law cited).
91 Thus, it is appropriate to carry out a global assessment of the evidence provided by the proprietor of a mark to establish whether that mark has a reputation (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72). It cannot be ruled out that an accumulation of evidence may allow the necessary facts to be established, even though each of those pieces of that evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see, to that effect and by analogy, judgment of 9 December 2010, Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 106 and the case-law cited).
92 Furthermore, although the reputation of an earlier mark must be established as at the filing date of the application for the trade mark, documents bearing a date after that date cannot however be deprived of evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (judgment of 16 December 2010, Rubinstein and L’Oréal v OHIM – Allergan (BOTOLIST and BOTOCYL), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 52).
93 In the present case, the Board of Appeal considered that the items of evidence submitted by the applicant before the adjudicating bodies of EUIPO were insufficient and did not make it possible to establish that the earlier mark enjoyed a reputation on the filing date of the application for registration, namely 14 May 2019 (‘the relevant date’), in respect of certain services covered by Class 41, namely ‘fitness’ and ‘fitness-related services’ in the European Union.
94 First, it must be noted that, as the Board of Appeal found, neither the glossary relating to ‘crossfit’ appearing on the applicant’s website (Annex 1), nor the video explaining the specifics of the training programme ‘CrossFit’ appearing on the YouTube website (Annex 11) can be characterised as use of the earlier marks in respect of ‘fitness’ and ‘fitness-related services’ included in Class 41. The applicant provides no indication that workout videos or online training sessions were offered on its website. The mere number of visits to the applicant’s website, the duration of those visits and the number of views of the video (Annexes 10 and 11) are not sufficient to demonstrate that the earlier mark is known by a significant part of the relevant public.
95 Secondly, as regards the 2018 and 2019 reports on the European health and fitness market prepared by the company Deloitte and concerning the market situation, respectively, in Germany in 2017 (Annex 13) and in Spain in 2018 (Annexes 15 and 16), the Board of Appeal correctly found that the list of the 10 leading regular operators by number of sports clubs did not mention the applicant and that there was no proof that the relevant public perceived all the affiliated gyms as belonging to one and the same operator bearing the name of the earlier mark.
96 Thirdly, it must be stated that, as the Board of Appeal noted, the affidavits (Annex 18) are also not sufficient to establish a reputation for the earlier mark, but rather confirm the existence of affiliated gyms in several Member States of the European Union. While those affidavits indicate the approximate number of members per year who participated in the ‘crossfit’ training course before the relevant date, no information is provided regarding the basis on which those figures were calculated, the turnover generated by those courses or the investments made in order to promote the ‘CrossFit’ training programme. Contrary to the applicant’s assertion, those figures cannot be considered to be supported by the number of subscribers to the social media accounts of the affiliated gyms, considering that the number of subscribers to those social media indicates global figures which do not allow any inference to be made regarding the relevant public in the European Union.
97 The same applies to the various printouts taken from the archived websites of the affiliated gyms (Annex 7). Although those printouts confirm the existence of gyms offering the ‘CrossFit’ training programme before the relevant date, they do not contain any information enabling it to be established, for example in terms of membership agreements concluded, the number of courses offered, the number of people having attended those courses or the turnover generated, the knowledge of the earlier marks by the relevant public.
98 Fourthly, as correctly noted by the Board of Appeal, it is also for that reason that the references made to the ‘CrossFit’ training programme in a book or an online article (Annexes 1, 2, 7, 8 and 23) or the use of the mark for sports clothing or shoes (Annex 22) have per se no evidential value in assessing the knowledge of the earlier mark by a significant part of the relevant public for ‘fitness’ services included in Class 41.
99 Fifthly, as regards the evidential value of the affiliate agreements concluded by the applicant since 2008 with gyms located in Member States of the European Union (Annex 17), they do not prove, as noted by the Board of Appeal, to what extent those gyms made use of the earlier mark and, therefore, do not demonstrate knowledge of the earlier mark by a significant part of the relevant public. Furthermore, the Board of Appeal found that, according to those agreements, the affiliates did not operate under the mark CROSSFIT, but under signs which include the element ‘crossfit’ among other elements, as illustrated by the screenshots of the gyms taken from the social media accounts (Annex 6). The agreements also provide that, where the affiliated company provides ‘other services distinct from the licensed services’, this does not mean that those other services are approved by the applicant. Those items of evidence therefore demonstrate that the affiliated company offers services other than the ‘CrossFit’ training programme and that the mere existence of an affiliated gym does not allow a conclusion to be drawn as to the extent of the use of the earlier mark for the ‘CrossFit’ training programme.
100 Sixthly, it must be observed that, as the Board of Appeal noted, 12 documents out of 22 items of evidence submitted by the applicant in order to demonstrate its reputation, namely Annexes 5, 6, 7, 10, 11, 12, 13, 15, 18, 19, 20 and 21, refer to periods prior to the relevant date.
101 In this regard, although it is possible to take into account, for the purposes of the case-law referred to in paragraph 89 above, items of evidence which predate the date of registration of the mark applied for, it nevertheless remains, for the purposes of that same case-law, that those items must make it possible to establish that the reputation of a mark was acquired progressively. However, it must be stated that this is not the case here and that those items of evidence must be considered insufficient to demonstrate the reputation of the earlier mark.
102 Lastly and in any event, it should be noted that, according to the case-law referred to in paragraphs 90 and 91 above, the reputation of the earlier mark must be assessed globally having regard to all the evidence provided by the applicant. In the present case, it is apparent from paragraphs 94 to 99 above that the Board of Appeal based its assessment on a body of evidence which did not demonstrate that the reputation of the earlier mark was established in the relevant territory.
103 Accordingly, since one of the cumulative conditions for the application of Article 8(5) of Regulation 2017/1001, for the purposes of the case-law referred to in paragraph 78 above, namely that the earlier mark must enjoy a reputation in the European Union, is not fulfilled, the Board of Appeal correctly rejected the opposition filed by the applicant on the basis of that provision.
104 In the light of all of the foregoing, the third plea in law must be rejected and the action must therefore be dismissed in its entirety.
Costs
105 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
106 Although the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that a hearing were convened. Since no hearing was held, each party should be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders CrossFit LLC and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Spielmann | Mastroianni | Brkan |
Delivered in open court in Luxembourg on 29 November 2023.
V. Di Bucci | | S. Papasavvas |