APE TEES | Decision 2669375

Date Published: Sep 22, 2017

OPPOSITION No B 2 669 375

Nowhere Co., Ltd, 22-3, Sendagaya 4-chome, Shibuya-Ku, Tokyo 1510051, Japan (opponent), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative)

a g a i n s t

Junguo Ye, c/Maricruz Álvarez 24 P, 03203 Elche, Alicante, Spain (applicant), represented by Alberto Paz Espuche, Agilmark Patentes & Marcas SL., Parque Científico de la Universidad Miguel Hernández de Elche, Avda. de la Universidad s/n, Edificio Quórum IV, 03202 Elche, Alicante, Spain (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 669 375 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 319 578 , namely goods and services in Classes 3, 9, 14, 18, 25 and 35. The opposition is based on:

• international registration No 996 157  designating the United Kingdom for goods in Classes 18 and 25;
• international registration No 871 962  designating the United Kingdom, Italy, France and Germany for goods in Classes 9, 14, 16, 18, 20, 25, 26 and 28.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to the marks listed above. The opposition is also based on:

• non-registered trade mark , used in the course of trade in the United Kingdom in relation to clothing, accessories, footwear, eyewear, headgear, retail services and related goods and services;
• non-registered trade mark, used in the course of trade in Italy, the United Kingdom and France in relation to clothing, accessories, footwear, eyewear, headgear, retail services and related goods and services;
• non-registered trade mark , used in the course of trade in Italy and the United Kingdom in relation to clothing, accessories, footwear, eyewear, headgear, retail services and related goods and services.

The opponent invoked Article 8(4) EUTMR in connection with the non-registered marks listed above.

SUBSTANTIATION OF THE INTERNATIONAL REGISTRATIONS

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the two international earlier trade marks on which the opposition is based.

On 21/03/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit, which was to expire on 02/08/2016, was extended in accordance with Rule 71 EUTMIR until 02/10/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

As seen above, in relation to Article 8(4) EUTMR the opposition is based on:

• non-registered trade mark , used in the course of trade in the United Kingdom in relation to clothing, accessories, footwear, eyewear, headgear, retail services and related goods and services;
• non-registered trade mark, used in the course of trade in Italy, the United Kingdom and France in relation to clothing, accessories, footwear, eyewear, headgear, retail services and related goods and services;
• non-registered trade mark , used in the course of trade in Italy and the United Kingdom in relation to clothing, accessories, footwear, eyewear, headgear, retail services and related goods and services.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The Opposition Division will first examine the earlier signs used in the course of trade in Italy and France.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent in relation to France and Italy. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) EUTMR insofar as the earlier non-registered signs used in the course of trade in France and Italy are concerned.

The Opposition Division will continue the evaluation of the opposition in relation to the tort of passing off in the United Kingdom.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 30/06/2015. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in the United Kingdom prior to that date.

On 03/10/2016 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The opponent submitted a number of annexes (A to G) with voluminous evidence consisting of photographs, commercial invoices, what seem to be delivery notes, some packing lists, purchase orders and lists of goods with codes.

None of the commercial invoices predate the filing of the contested mark, as they were issued in 2016, and, therefore, they cannot be taken into account.

Furthermore, the goods are not clearly identified in the invoices, lists of goods, delivery notes, etc. Although in some of the documents some codes can be seen, the opponent has not submitted brochures that would enable cross-referencing, and has instead merely handwritten some numbers on the images included in the evidence. Even if this were considered satisfactory by the Opposition Division, it has to be borne in mind that many of the images show signs that are not the unregistered signs on which the opposition is based, for example:

 

Even when the signs on which the opposition is based appear, the extent of use has not been proved, as seen above.

Consequently, the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the goods and business activities on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as it is based on Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Michele M. BENEDETTI-ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.