The trademark DECATHLON was filed by DECATHLON, a corporation established under the laws of the French Republic (the "Applicant"). The application was published for oppositions on March 24, 2002, and received one opposition filed on June 24, 2002 by Trespa International B.V. on Likelihood of confusion. the opponent was represented by BEST RECHTSANWÄLTE PARTMBB and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued June 24, 2002
The application was filed in French, and French was also language of all opposition proceedings (English was selected as the second language).
Two renewals of the trademark were recorded, one on December 17, 2006, and the other one on May 3, 2016.
Appointment and Replacement of representative of the trademark registration was recorded on April 26, 2001. Change of name and address of the trademark registration was recorded on July 29, 2007. Claims of seniority of the trademark registration was recorded on September 6, 2009. Change of name and address of the trademark registration was recorded on October 24, 2009. Change of name and address of the trademark registration was recorded on November 1, 2009. Claims of seniority of the trademark registration was recorded on October 3, 2010. Claims of seniority of the trademark registration was recorded on April 2, 2012. Relative errors of the trademark registration was recorded on May 2, 2012. Change of name and address of the trademark registration was recorded on June 12, 2014. Change of name and address of the trademark registration was recorded on October 26, 2014. Claims of seniority of the trademark registration was recorded on January 11, 2015. Claims of seniority of the trademark registration was recorded on February 12, 2015. Claims of seniority of the trademark registration was recorded on February 12, 2015. Change of name and professional address of the trademark registration was recorded on July 6, 2017. Change of name and professional address of the trademark registration was recorded on August 9, 2017.
The Refusal with reference B 000262931 was partially rejected according to Article 7(1)(b) CTMR with decision issued on July 6, 2000 by the EUIPO.
The application claimed as seniority of the Portuguese Republic trademark null registered on November 28, 1990 which was accepted by the office.
Goods And Services
The mark was filed in class 1 with Chemicals used in industry, except adhesives, in science and photography, as well as in agriculture, horticulture and forestry and manures, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesive preparations for surgical bandages, anti-freeze, compost, chemicals for waterproofing leathers, leather-dressing oils, distilled water, ethanol, stain-preventing chemicals for use on fabrics, silicon, talc, vulcanising preparations..
The mark was filed in class 2 with following description of goods:
Paints
Varnishes (except for insulating varnishes), lacquers (paints)
Preservatives against rust and against deterioration of wood
Colorants
Mordants (not for metals or for seeds)
Raw natural resins
Metals in foil and powder form for painters, decorators, printers and artists.
The mark was filed in class 3 with Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps except for soaps for medical use, perfumery, essential oils, cosmetics, hair lotions, dentifrices, shampoos for pets, sun protection products, shaving soaps, scented wood, depilatory waxes, depilatory preparations, tissues impregnated with cosmetic lotions, make-up products, bleach, parquet floor waxes, scouring waxes.
The mark was filed in class 4 with Industrial oils and greases, lubricants, dust-absorbing, wetting and binding compositions, solid, liquid and gaseous fuels (including motor spirit) and illuminants, candles and wicks (lighting), fire lighters, briquettes (fuel), gas for lighting, firewood, charcoal, grease for arms, grease for shoes, textile and clothing oils..
The mark was filed in class 5 with Dressings, first aid products and dietetic products.
The mark was filed in class 6 with Common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery (non-electric) and small items of metal hardware, pipes and tubes of metal, safes, ores, advertisement columns of metal, traps for wild animals, bird baths, horseshoes, tree protectors of metal, anchors, bicycle parking installations of metal, letter boxes, containers of metal for compressed gas or liquid air, beach huts of metal, chests of metal, padlocks, chains for dogs, nails, screens of metal, fixed towel dispensers, metal ladders, tool boxes of metal, tanks of metal, non-luminous and non-mechanical signs, bells..
The mark was filed in class 7 with Machine tools, motors and engines (except for land vehicles), machine couplings (non electric) and transmission components (except for land vehicles), agricultural implements, other than hand operated, incubators for eggs, sparking plugs for internal combustion engines, aeration pumps for aquaria, lifts, engines for motor boats, bicycle dynamos, apparatus for serving beer under pressure, machinery for working wood, electric tin openers, wire cutters, electric knives and scissors, electric adhesive guns, compressors, electricity generators, car jacks, dynamos, manual winding spools for flexible piping, presses, electric ovens, lawn mowers, boilers, clothes washers, washing machines, sewing machines, electric hole punches, paint guns, pumps, engine exhaust pipes, book-binding apparatus, sausage machines, saws.
The mark was filed in class 8 with Hand tools and implements (hand operated), cutlery, non-electric, except for fishing and for medical use, side arms, razors, scissors, nail files, manicure sets, nail cutters, saws, gardening implements, insecticide sprayers, tin openers and oyster openers, non electric, sugar tongs, vegetable cutters, punches, swords, sabres, harpoons.
The mark was filed in class 9 with Scientific (other than for medical purposes), nautical, surveying, photographic, optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments and teaching apparatus and instruments except those relating to decathlon events, apparatus for recording, transmission and reproduction of sound or images, magnetic data carriers except those relating to decathlon events, recording discs except those relating to decathlon events, optical discs except those relating to decathlon events, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculators, data processing equipment, computers, fire extinguishing apparatus, anti-theft alarms, alcoholmeters, scales, video tapes except those relating to decathlon events, barometers, compasses, spirit levels, camcorders, bar code readers, audio and video compact discs except those relating to decathlon events, marine compasses, speed checking apparatus for vehicles, false coin detectors, smoke alarms, slides except those relating to decathlon events, projectors and screens, dictation machines, flashes, holographs, video games, peepholes for doors, binoculars, navigational instruments, gauges, pedometers, radars, sonars, sighting telescopes for firearms, clothing and gloves for protection against fire and irradiation, wetsuits, life buoys, life belts and life jackets, swimming belts, water wings, divers' masks, earplugs for divers, bulletproof vests, sights for firearms, safety helmets, contact lenses, spectacles, spectacle cases, magnets, encoded magnetic cards, electric shoe polishers, whistles, computer software except those relating to decathlon events, computer peripheral devices, computer programs except those relating to decathlon events, computer keyboards, batteries, electric, facsimile machines, telephone apparatus, television apparatus, illuminated signs, cases fitted with dissecting instruments, animated cartoons except those relating to decathlon events, electric cables and coils, mouth guards, electric irons..
The mark was filed in class 10 with Orthopaedic articles, abdominal girdles, elastic bandages, orthopaedic bandages for joints, stockings for varicose veins, medical girdles, orthopaedic shoes, apparatus for aesthetic massage, medical apparatus for physical exercise, condoms, feeding bottles, teats.
The mark was filed in class 11 with Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, extractor hoods, air cooling devices, air conditioning installations for vehicles, cold stores, electric pressure cookers, electric bottle warmers, baths, barbecues, cookers, freezers, hairdryers, refrigerators, ornamental fountains, gas lighters, toasters, ice-making equipment, electric lights, sauna installations, electric coffee makers, solar panels, solariums, shower cubicles, electric lightbulbs, electric Christmas tree lights, headlights and lamps for vehicles, filters for drinking water.
The mark was filed in class 12 with Vehicles, apparatus for locomotion by land, air or water, bicycles, bicycle stabilizers, inner tubes for tyres, tyres, pumps, saddles, spokes, tubeless bicycle tyres, mirrors, bells, chains, pedals, rims, bicycle brakes, mud guards, puncture repair kits, canoes, caravans, seat belts for vehicles, child security seats for vehicles, prams, vehicle covers, vehicle seat covers, baggage racks, bicycle racks, ski racks for cars, push chairs, parachutes, skilifts, windscreens, airships, anti-theft devices for vehicles, oars, boats, boat hooks, control devices for boats, boat propellers, hand trucks, wheelbarrows, anti-skid chains, golf trolleys, wheelchairs.
The mark was filed in class 13 with Fire arms, ammunition and projectiles, explosives, fireworks, air pistols, rifles, hunting guns, revolvers, teargas weapons for protection, bandoleers for arms, cartridge belts, harpoon guns, shooting trestles, dynamite, fog signals, ballistic missiles.
The mark was filed in class 14 with Precious metals and their alloys other than for dental purposes and jewellery, watches, horological and chronometric instruments, cuff links, tie pins, fancy keyrings, watch straps, sundials..
The mark was filed in class 15 with Musical instruments, constituent parts of musical instruments.
The mark was filed in class 16 with Paper, cardboard (untreated, semi-finished or for stationery), printed matter except that relating to decathlon events, bookbinding material, photographs except those relating to decathlon events, stationery, adhesives for stationery or household purposes, artists' materials, paintbrushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus) except that relating to decathlon events, bags and sheets of paper or plastics, for packaging and playing cards, printers' type, printing blocks, staples for offices, drawing pins, pencil sharpeners, correcting fluids, paper cutters, drawing sets, pencils, pencil lead holders, rubber erasers, envelopes, folders, albums except those relating to decathlon events, almanacs except those relating to decathlon events, pamphlets except those relating to decathlon events, exercise books, calendars, posters except those relating to decathlon events, maps, tear off calendars, printed timetables, newspapers except those relating to decathlon events, typewriters, spools for inking ribbons, sealing wax, mailing machines, stapling presses, tape dispensers, shredders for paper, napkins of paper for removing make-up, disposable nappies of paper or of cellulose, coffee filters of paper, transfers (decalcomanias), wrapping paper, signboards of paper or cardboard, terrestrial globes, toilet paper, table linen of paper, hand towels of paper, mats for beer glasses, canvases for painting, postcards except those relating to decathlon events, compasses for drawing..
The mark was filed in class 17 with Rubber, gutta-percha, gum, asbestos, mica and semi-finished products of plastic, flexible tubes not of metal, floating anti-pollution barriers, garden hoses, sealing rings, buttons of rubber, glass wool for insulation purposes, insulating gloves, fibres of plastic except textiles, horseshoes not of metal..
The mark was filed in class 18 with Leather and imitations of leather, articles of leather or imitation leather (except for cases adapted to the products they are designed to hold, gloves and belts), animal skins, trunks and suitcases, umbrellas, parassols and canes, whips and saddlery, harnesses, rucksacks and alpine walking sticks, camping, beach, travel, school and food bags, travelling sets, animal collars, animal vests, muzzles, sadddles, whips, saddle attachments, horse covers, saddle covers, headstalls for horses, feeding bags, harnesses, knee bandages for horses, walking stick seats, school satchels, wallets, game bags, clothing covers (travel), purses, wallets, key holders (leather), straps for skates, slings for carrying children, wheeled shopping bags.
The mark was filed in class 19 with following description of goods:
Building materials (non-metallic)
Non-metallic rigid pipes for building
Asphalt, pitch and bitumen
Non-metallic transportable buildings
Monuments, not of metal
Worked timber, construction and panelling timber, swimming pools (constructions not of metal), bird baths (constructions not of metal), cabanas not of metal, luminous paving, lighting
Perches, diving boards, not of metal.
The mark was filed in class 20 with following description of goods:
Furniture, mirrors,
Frames (except for building construction), art works or ornaments of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes of all thesse materials, or of plastics,
Dog kennels, beehives, honeycomb, advertising boards, fixed towel dispensers, not of metal, gun racks, playpens, cradles, sleeping bags for camping, cushions, clothes pegs, mannequins, mattresses, deckchairs, food decorations of plastic, stuffed animals, shells, office furniture
Tables, offices, armchairs, chairs, stands for computers and printers, facsimile machines, photocopiers, cupboards, bottle corks.
The mark was filed in class 21 with Household or kitchen utensils and containers, non-electric (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes), brush-makaing materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), tableware, not of precious metal, glassware, porcelain and earthenware, aerosol dispensers, heat-insulated containers for food and drink, drinking flasks, mess-tins, portable coolers, non-electric, goblets, not of precious metal, grills, kitchen utensils, fitted picnic baskets (tableware), litter trays, combs for animals, watering implements, household gloves, carpet sweepers, brooms, chamois leathers for cleaning purposes, shaving brushes, toothbrushes, toothpicks, corkscrews, bottle openers, metal boxes for dispensing paper towels, soap dispensers, household sponges, extendable clothes lines, dustbins, insect traps, trouser presses, crumb trays, cages for pets, bird cages, shoe horns, shoe stretchers, shoe trees, insect traps.
The mark was filed in class 22 with Cords (not of rubber or for rackets and musical instruments), strings, nets, tents, awnings (except safety awnings and pushchair covers), sails, sacks and bags of textile for wrapping, padding and stuffing materials (except of rubber and plastic), raw fibrous textile materials, fishing nets, hammocks, rope ladders.
The mark was filed in class 23 with Threads of elastic or plastic for textile use, cotton thread and yarn, sewing threads, woollen thread and yarn.
The mark was filed in class 24 with Textiles and textile goods, bed and table covers, adhesive fabrics for application by heat, upholstery fabrics, bath linen (except clothing), billiard cloths, oilcloth (table cloths), sleeping bags (sheeting), tissues of textile for removing make-up, mosquito nets, labels of cloth, canvas for tapestry or embroidery, flags, blinds of textile.
The mark was filed in class 25 with Clothing, sports clothing except diving suits, shoes (except orthopaedic shoes), headgear, swimming trunks, caps, dressing gowns, sweaters, socks, football boots, beach shoes, ski boots, sports shoes, shirts, water ski suits, underwear, babies' napkins of textile, cyclists' clothing, soles for footwear, gloves, studs for football boots, non-slipping devices for shoes, tips for footwear, suspenders, belts, ties.
The mark was filed in class 26 with Lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, small pins, fastenings for clothing, ornamental badges, hair bands and nets, hair pins, hair-slides, hair, false hair, fancy goods, zippers, shoe laces, buttons, snap fasteners.
The mark was filed in class 27 with Carpets, rugs, mats and matting, linoleum and other floor covering (except for tile floorings and floor paints), gymnastic mats, wall hangings not of textile, car mats, bath mats, artificial lawns.
The mark was filed in class 28 with Games and playthings, gymnastic and sporting articles (except clothing, mats and shoes) except those relating to decathlon events and except discuses for sports, javelins, shots and discuses for throwing and poles and Decorations for Christmas trees, building blocks (playthings), hang gliders, paragliders, kites, artificial fishing bait, fishing rods, reels for fishing rods, landing nets for anglers, harpoon guns (sporting articles), hooks, fishing line, decoys for hunting or fishing, items for shooting, targets, clay pigeon traps, clay pigeons, fencing weapons, foils, fencing masks, discuses for sport, darts, base-ball gloves, boxing gloves, protective clothing (sports articles), machines for physical exercise and appliances for gymnastics, exercisers (expanders), exercise bicycles, exercise benches, abdominal exercising equipment, trampolines, running tracks, oars, billiard cues, billiard tables, billiard balls, golf clubs, golf balls, guts and cords for rackets, tennis rackets, badminton rackets, squash rackets, skis, ski bindings, water skis, dumb-bells, skittles, swimming webs, ice skates, roller skates, skateboards, sailboards, surfboards, masts, booms, table football, table tennis tables, tennis nets, table tennis bats, table tennis balls, slides, shuttlecocks (games), conjuring apparatus, model vehicles, toy masks, toys for pets, swings, Christmas crackers, toy masks..
The mark was filed in class 29 with Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables and jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats, preparations for making bouillon, powdered eggs, chip potatoes, proteins for human consumption, milk beverages..
The mark was filed in class 30 with Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, edible ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice for refreshments, almond paste, coffee, tea, cocoa and chocolate based drinks.
The mark was filed in class 31 with Agricultural, horticultural and forestry products (non-prepared and non-transformed), grains (seeds), live animals, fresh fruits and vegetables, plant seeds, plants and natural leaves, foodstuffs for animals, malt, pet food, fishing bait (live).
The mark was filed in class 32 with Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages (except coffee, tea or cocoa based drinks, milk beverages).
The mark was filed in class 33 with Alcoholic beverages (except beers), peppermint liqueurs, alcoholic essences, aperitifs, ciders, cocktails, digesters, spirits, wines.
The mark was filed in class 34 with following description of goods:
Tobacco goods, smokers' articles, not of precious metal.
The mark was filed in class 35 with following description of goods:
Advertising except that relating to decathlon events
Business management except that relating to decathlon events
Business administration except that relating to decathlon events
Office functions
Newspaper subscription services for others
Business management, business administration, business information
Import-export agencies, commercial information agencies, cost price analysis, employment agencies
Publicity columns preparation except that relating to decathlon events, shop window dressing, demonstration of goods, marketing studies, organisation of exhibitions for commercial or advertising purposes, computerized file management, rental of advertising space, marketing research, opinion polling, television advertising except that relating to decathlon events, public relations except those relating to decathlon events, document reproduction.
The mark was filed in class 36 with Insurance, financial affairs, monetary affairs, real estate affairs, accident insurance, factoring, banking services, credit card services, currency exchange, issuing of travellers' cheques, charitable fund raising, real estate management, appartment house management, organisation of lotteries.
The mark was filed in class 37 with Building construction and repair, installation services, vermin extermination other than for agriculture, installation and repair of lifts, vehicle repair, laundering, quarrying services, shoe repairs, service stations, factory construction, vehicle maintenance, burglar alarm installation and repair.
The mark was filed in class 38 with Telecommunications, news and information agencies, press agencies, communications by computer terminals, broadcasting of television programmes, radio and television programmes (except programmes dedicated to decathlon competitions) and electronic mail and data communication services..
The mark was filed in class 39 with Transport, package and storage of goods, travel arrangement, services relating to escorting of travellers, air transport, tourist agencies (except hotel and boarding house reservations), warehousing, packaging of products, storage, rental of warehouses, delivery of goods, rental of cars, transport of valuables.
The mark was filed in class 40 with following description of goods:
Treatment of materials, transformation of agricultural products for others (wine-making, distillation, slaughtering, fruit crushing, flour milling
Sawing, planing, embroidery, sewing, cutting, polishing, metal coating
Dyeing of fabric or clothing, treatment of fabrics against mites, fabric waterproofing, binding of documents, tin-plating, purification and regeneration of air, vulcanization (treatment of materials), video tape editing, photographic printing
Fabric waterproofing, binding of documents, tin-plating, purification and regeneration of air, vulcanisation (treatment of materials), video tape editing, photographic printing.
The mark was filed in class 41 with following description of goods:
Education, training, entertainment, sporting and cultural activities, publication of books and magazines, lending libraries, animal training, production of shows and films, agencies for actors, rental of films, phonographic recordings, cinema projection apparatus and theatre scenery, organisation of competitions for educational or training purposes
Arranging and conducting of colloquiums, conferences and congresses, organization of exhibitions for cultural or educational purposes
(none of the aforesaid services relating to decathlon events).
The mark was filed in class 42 with Providing of food and drink, temporary accommodation, medical, hygienic and beauty care, veterinary and agricultural services, legal services, scientific and industrial research, computer programming, detective agencies, night guards, dating agencies, marriage bureaux, chemical analyses, animal breeding, pet grooming, catering, architecture, copyright management, Turkish baths, videotape recordings, cocktail lounge services, beauty salons, providing of patents, providing of cafes, restaurants, cafeterias, holiday camp services (accommodation) and canteens, chiropractors, dating services, hairdressing salons, computer consultancy, evening dress rental, child care facilities, providing campsite facilities, underwater exploration, horoscopes, gardening, licensing of intellectual property, rental of buildings, software development, massages, medical services..