GK | Decision 2736919
Date Published: Sep 28, 2017
OPPOSITION No B 2 736 919
Guided Knowledge IP Pty Ltd as trustee for the Guided Knowledge IP Unit Trust, 113/2 Albert St, Randwick NSW 2031, Australia (opponent), represented by Mewburn Ellis LLP, City Tower, 40 Basinghall Street, London EC2V 5DE, United Kingdom (professional representative)
a g a i n s t
GK4, Tal-Bonzu, Triq L-Imghazel, Swieqi 3141, Malta (applicant),
On 11/05/21017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 736 919 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods in Classes 9, 25 and 28 of European Union trade mark application No 15 226 004.
The opposition is based on the following earlier rights:
- international trade mark registration No 1 276 212 designating the European Union;
- international trade mark registration No 1 273 430 ‘GKLO’ designating the European Union;
- international trade mark registration No 1 273 598 designating the European Union;
- international trade mark registration No 1 258 857 ‘GK ILLUMINATE’ designating the European Union;
- international trade mark registration No 1 259 062 ‘GK ACADEMY’ designating the European Union;
- international trade mark registration No 1 275 605 ‘GK LABS’ designating the European Union.
The opponent invoked Article 8(1)(b) and 8(5) EUTMR as regards these earlier rights.
- earlier non-registered trade marks ,‘GKLO’, , ‘GK ILLUMINATE’ , ‘GK ACADEMY’, ‘GK LABS’ purportedly used in the course of trade in the European Union and in all Member States of the EU.
The opponent invoked Article 8(4) EUTMR in connection with these earlier rights.
GKLO GK ILLUMINATE GK ACADEMY GK LABS | |
Earlier trade marks | Contested sign |
SUBSTANTIATION OF ARTICLES 8(1) (b) AND 8(5) EUTMR.
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 earlier trade marks on which the opposition is based.
On 22/07/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2016.
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 and legal grounds.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opposition is based on the non-registered trade marks in relation to Classes 9, 35, 41, 42 and 45; ‘GKLO’ and in relation to Classes 9, 14, 15, 25, 28, 35, 38, 41 and 42; ‘GK ILLUMINATE’ in relation to Classes 9 and 35, ‘GK ACADEMY’ in relation to Class 41, ‘GK LABS’ in relation to Classes 41 and 42, which, according to the notice of opposition, are used in the course of trade in the European Union and in all member states of the European Union.
As regards the non-registered trade marks in the European Union, the Opposition Division notes that non-registered marks do not exist under Union legislation. Hence, it follows that a non-registered European trade marks cannot be invoked as a basis for an opposition under Article 8(4) EUTMR because no such right exists. It follows from the above that the opposition should be considered as not well founded under Article 8(4) EUTMR as far as it is based on this earlier rights.
The opponent also claims to be the owner of non-registered marks in each and every one of the Member States of the European Union, but the opposition must still fail under 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.
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.
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 will be 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 the present case, the notice of opposition was not accompanied by any evidence of use of the earlier non-registered trade marks in the course of trade.
On 22/07/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2016.
The opponent did not submit any evidence of use in the course of trade of the earlier non-registered trade marks or signs in the course of trade 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 insofar as this ground is concerned.
In conclusion, the opposition is rejected in its entirety.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Alexandra APOSTOLAKIS | Richard BIANCHI | Inés GARCIA LLEDÓ |
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.