CDK GLOBAL | Decision 2444159 - GLOBAL S.R.L. v. CDK Global, LLC
Date Published: Sep 25, 2017
OPPOSITION No B 2 444 159
Global S.R.L., Via Bernardi 1, 35030 Rubano (Pd), Italy (opponent), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio, 56, 36100 Vicenza, Italy (professional representative)
a g a i n s t
CDK Global LLC, 1950 Hassell Road, Hoffman Estates Illinois 60195, United States of America (applicant), represented by Studio Legale SIB, Corso dei Tintori 25, 50122 Firenze, Italy (professional representative)
On 24/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 444 159 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all of the goods and services of European Union trade mark application No 13 185 426 in classes 9, 16, 35, 38, 41 and 42. The opposition is based on non-registered trade mark and company name ‘GLOBAL’ both used in the course of trade in Italy for the same goods and services. The opponent invoked Article 8(4) EUTMR.
GLOBAL |
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Earlier non registered trade mark and company name | Contested sign |
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
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 rights under the applicable law
According to Article 76(1) CTMR, 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) CTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) CTMR, 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 EUIPO 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.
The opponent submitted such evidence correctly together with its English translation on 27/07/2016. It follows that, in the present case, as regards Italian legislation, protection of unregistered trade marks and other signs used in the course of trade is submitted to the condition that they are notoriously known throughout Italy or a substantial part thereof (Article 12(a) and (b) of the Italian Intellectual property code).
In practical terms, the assessment is principally based on qualitative considerations regarding the degree of knowledge of the mark and the company name among the public.
Consequently, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the rights invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. Furthermore, the evidence must show that the signs are notoriously known for the same goods and services on which the opposition is based, namely the following:
Class 9: Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service sales leads and communicate with customers through multiple channels; Downloadable software for use in customer relationship management (CRM); Downloadable software for use in tracking and managing accounts payable, payments and payroll; Downloadable software for managing documents and forms in the automotive retail sales process, namely, software for creating, archiving, and organizing documents and forms; Downloadable software for use in network management;Downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals, and printers; telephones; bar code scanners.
Class 16: Printed materials, namely, training manuals, books, newsletters, and forms to be used by retailers and manufacturers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles.
Class 35: Advertising and marketing; Digital marketing services; Computerized database management; Providing business intelligence services; Business management services; Digital marketing strategy consultancy; Management consulting services, namely, providing analysis and recommendations on optimizing retail workflows; Outsource service provider in the field of customer relationship management; Business consulting in the field of predictive analytic solutions; Business consulting, namely, gathering, analyzing and providing business information and data to others; All of the foregoing services provided to retailers and manufacturers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles.
Class 38: Integrated telephony solutions that allow automotive retailers to connect and communicate via presence, instant messaging, voice and video.
Class 41: Educational and training services for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles and recreational vehicles.
Class 42: Software as a service (SAAS) services for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Software as a service (SAAS) services for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track 3 sales, financing, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Software as a service (SAAS) services for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service and sales leads and communicate with customers through multiple channels; Software as a service (SAAS) services for use in customer relationship management (CRM); Software as a service (SAAS) services for employers to track and manage accounts payable, payments and payroll; Software as a service (SAAS) services for managing documents and forms in the automotive retail sales process, namely, software for creating, archiving, and organizing documents and forms; Software as a service (SAAS) services for use in network management; Software as a service (SAAS) services that provide real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Technical support services; Computer software design, development, and programming services for others; Computer services, namely, designing, implementing, and maintaining web site for others; Hosting the web sites of others on computer servers for a global computer network; Installation of computer software.
On 27/07/2016 the Office received the opponent’s submitted evidence of use. 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 evidence consists of the following documents:
- Invoices: 632 pages of invoices showing the sale of several products under brands like E-time, e-CARS21, E-cont21, My.EIS, Datacar, E-SVP21, WinC@r covering the years 2008 – 2014 made out by Global Srl to various companies throughout Italy, showing the logo
- Some advertisements and brochures from the years 2009, 2013 and 2014 explaining the activities of ‘Global’ in the field of specialized software for the automotive industry, referring mainly to the products under the brands Ecars21, and by Datafirst S.A.S. and by Datafirst and
- An undated brochure by ‘Renault Italia dealers Union” referring to the brand ‘Ecars21’ by as an ‘exclusive solution to its Authorized Network’.
- Several copies of leaflets of the yearly ‘Automotive Dealer Day’ in Verona, Italy, from the years 2003, 2006, 2007, 2008, 2010 and 2013 showing sponsorship by
- Two copies of the magazine ‘Interauto News’ referring to the same sponsorship of ‘Global’ of the ‘Automotive Dealer Day’ in 2012 and 2014.
- Two job advertisements in the Italian newspaper ‘La Repubblica’ on 13/11/2003 and 01/06/2006 and “company specialized in software solutions and services for the automotive industry”.
- Copy of an IT Newsletter dated 15/01/2014 to the Hyundai Network announcing the intregration of ‘ECARS21’ by the provider ‘GLOBAL’.
- Copy of a letter dated 17/11/2010 by Renault Italia S.p.A. stating that ‘eCARS21’, distributed by ‘GLOBAL S.r.l.’ is recommended to their Authorized Network.
Although the opponent provided numerous invoices by ‘Global Soluzioni Informatiche’ showing substantial sale of e.g. specialized software for the automotive industry under several different brands and made several advertisement efforts (e.g. being a sponsor of the yearly ‘Automotive Dealer Day’ in Verona, Italy), there is – however - no indication that the campaigns actually reached the relevant consumer and that they were actually successful.
The opponent did not submit any objective press release stating that the signs ‘GLOBAL’ are notoriously known in Italy. Even if the evidence submitted could be considered enough to show that the signs have been used in the course of trade, as the opponent correctly argues, these documents do not, in any event, provide the Opposition Division with sufficient information concerning the notorious character of the signs relied on throughout Italy or a substantial part thereof, which is the prerequisite for protection of a non-registered trade mark or other sign used in the course of trade, under the Italian national legislation in order to enforce its earlier non-registered rights vis à vis a subsequent trade mark.
In order to ascertain the notorious character of the signs, the opponent, should provide evidence that gives an indication of the degree of recognition of the trade mark and/or company name by the relevant public. Indeed, apart from two recommendations by Hyundai and Renault, there are no documents to demonstrate the existence of a network of economically active branches throughout the relevant territory, nor any press cuttings showing the degree of recognition on the part of the Italian public of the signs relied on. Furthermore, the evidence does not indicate the market share of the trade mark and/or the company name. As a result, the evidence does not prove that the signs are known by a significant part of the relevant public nor shows the degree of recognition of the trade mark and/or the company name by that public.
Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark or company name is notoriously known in Italy, in relation to all or some of the goods and services on which the opposition is based.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.
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
Ioana MOISESCU | Cynthia DEN DEKKER | Jessica LEWIS |
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.