HANSON | Decision 2726514 - Hanson Asset Management Limited v. Honourable Robert William Hanson
Date Published: Sep 28, 2017
OPPOSITION No B 2 726 514
Hanson Asset Management Limited, 8th Floor, 1 Grosvenor Place, London SW1X 7HJ, United Kingdom (opponent), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative)
a g a i n s t
Honourable Robert William Hanson, 7 Ashgrove Road, Huddersfield, West Yorkshire HD2 1FQ, United Kingdom (applicant).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 726 514 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 104 821 for the word mark ‘HANSON’, namely against all the services in Class 36. The opposition is based on the United Kingdom non-registered trade mark ‘HANSON’. The opponent invoked Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opponent based its opposition on the non-registered trade mark ‘HANSON’, used in the course of trade in the United Kingdom.
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.
- 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 12/02/2016. However, the contested trade mark has a priority date of 07/01/2016. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for financial services.
On 17/11/2016 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 evidence consists of the following documents:
- Exhibit 1: An undated summary overview of Hanson Asset Management Limited (the opponent), which appears to be an internal document prepared by the opponent, showing the indication ‘Strictly Confidential’ on its first page and containing information about the opponent, its history and its activities. It is stated that ‘Hanson Asset Management (Hanson) is an independent investment and advisory firm’ which manages ‘liquid and private equity assets’; ‘Hanson is authorized and regulated by the Financial Conduct Authority and holds regulatory passports throughout the European Economic Area and the European Union’.
- Exhibit 2: three internal documents prepared by the opponent (evident from their nature and the disclaimers in these documents):
- A presentation dated December 2014, showing the indication
on its first page and containing information about the opponent, its history, its advisory and investment management activities and its performance. It also refers to several private equity case studies.
- A presentation dated April 2015, titled ‘Hanson Deep Value Opportunities’ and showing the indications
and ‘Strictly Private & Confidential’ on its first page. It contains information about investment opportunities offered by the opponent.
- A presentation dated May 2015, showing the indication
- Exhibit 3: a market commentary document, bearing the indication
at the top of the first page. The document is dated August 2013 and is prepared by Mr. Christophe Darbord, who, as explained in the document, leads the opponent’s commodities activities and manages DH Minerals Ltd., which advises on the Hanson Group’s natural resources investment activities. The opponent points out in its observations that it has provided this document as an example of a ‘HANSON’-branded market commentary newsletter, showing a range of financial trends in the commodities market.
- Exhibit 4: two documents in the form of invitation letters, prepared by the opponent Hanson Asset Management, referring to two events: a Summer Drinks Party on 24/07/2014 and a Family Polo Day on 29/06/2014.
- Exhibit 5: Two articles published in online media:
- An article dated 04/03/2014, published in London Evening Standard on http://www.standard.co.uk, titled ‘Hanson is banking on Spanish tie-up’. The article refers to an alliance between Hanson Asset Management, chaired by Mr. Robert Hanson, and the Spanish bank Renta 4 Banco. The article states, in particular, the following: ‘Boutique bank Renta 4 Banco is taking a 14.99% stake in Hanson Asset Management, the London wealth management firm that Hanson chairs. The stake is said to be worth £1 million’. It is added that this alliance enables Hanson Asset Management to strengthen its access to clients in Spain and Latin America.
- An article dated 28/07/2016, published in Citywire on http://citywire.co.uk, titled ‘Rowan Dartington hires five as UK expansion continues’. The article mentions that Johnny Arthur, who moved over from Hanson Asset Management, has joined Rowan Dartington’s team. It does not contain any other reference to the opponent or its activities.
- Exhibit 6: a document prepared by the opponent and dated 02/06/2016, containing a list of authorized signatures in Hanson Asset Management Limited.
- Exhibit 7: a Share Subscription Agreement between, inter alia, Hanson Asset Management Limited (the opponent), Hanson Capital Limited and several other entities on one side, and the Spanish entity Renta 4 Banco, dated 19/02/2014, relating to the acquisition of shares in Hanson Asset Management Limited by Renta 4 Banco. The document demonstrates that the Hon. Robert Hanson (the applicant) is the director and principal shareholder in Hanson Capital Limited.
- Exhibit 8: a schedule from an agreement for the association of Hanson Asset Management Limited. The agreement states that all Intellectual Property rights owned by the company are its property. It does not refer to any specific IP rights.
While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.
A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).
Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43).
The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).
Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements:
- the intensity of use (sales made under the sign);
- the length of use;
- the spread of the goods (location of the customers);
- the advertising under the sign and the media used for that advertising, including the distribution of the advertising.
Moreover, it must be clear from the evidence that the use continues on the date of the filing of the opposition. In this context, Rule 19(2)(d) EUTMIR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection of that right.
In the present case, the documents demonstrate that Hanson Asset Management (the opponent) is a UK private limited company. However, there are no independent documents providing any information concerning the commercial volume, the duration, the territorial scope and the frequency of use of the services in relation to which the opponent has claimed that it has used the trade mark ‘HANSON’ in the United Kingdom.
The majority of the documents submitted derive from the opponent itself. In particular, Exhibits 1, 2 and 6 consist of text documents, indicating that the opponent is an independent investment and advisory firm. These documents appear to be internal documents in the form of sheets with information, indicating the opponent as their author. As for the market commentary submitted as Exhibit 3 as an example of a newsletter issued by the opponent, it is not clear if this commentary was published in any media (as it is in the form of a simple white sheet with text) and if and how it was circulated to the public. There is no information on the actual impact of this publicity, as it is not clear if it has reached any consumers. Similarly, the invitation letters submitted as Exhibit 4 do not give any information about the size of the events referred to or the public they were intended for.
The Office makes a distinction between documents and statements coming from the sphere of the interested parties themselves or their employees and statements drawn up by an independent source, following the established case law. Such statements are not in themselves sufficient to prove use. The extent of use claimed in these documents needs to be corroborated by additional documentary evidence. Given the unofficial character of the documents mentioned above, they are not sufficient to corroborate the opponent’s assertion that it provides financial services under the mark ‘HANSON’ in the United Kingdom.
The only independent documents are the two publications, submitted as Exhibit 5, one of which is dated after the relevant period. The text in these articles informs of the existence of the company Hanson Asset Management and the acquisition of shares in it by another company in 2014. However, these articles contain no reference to the nature and the scale of the opponent’s activities, the territory in which it operates and how it performs in the relevant market. There are no indications of the group of addressees among which the sign in question has become known as a distinctive element. The same applies to the agreements submitted as Exhibits 7 and 8, which prove the existence of the company Hanson Asset Management, but do not give any information on the length of time for which the mark ‘HANSON’ has fulfilled its function in the course of trade, the intensity of use and the location of the opponent’s customers.
The opponent did not submit any evidence relating to the advertising and promotion of the mark in the United Kingdom, or other material showing that the sign in question had established itself in the marketplace to such an extent as to justify the acquisition of an exclusive right in a non-registered trade mark. From the documents submitted it is not clear what the volume and frequency of the provision of services were. These materials cannot prove the provision of services to potential clients, nor can they prove the number of contracts made (if any) for the relevant services during the relevant period. Since for earlier non-registered signs relied on in opposition proceedings constitute the factual premise justifying the existence of the right, this factual premise must exist, and be proven, on the date of filing of the opposition. The evidence does not provide a convincing picture of use of the opponent’s sign on the date of the filing of the opposition, neither on the priority date of the contested trade mark.
In its observations the opponent also provided a hyperlink to a website, where the Opposition Division could find further information about the opponent. However, a mere indication of a website does not constitute evidence. The onus of supplying evidence of use is on the opponent and not on the Office or the applicant. It is clear that the nature of a hyperlink to a website does not allow the content and data to which it is meant to refer to be copied and transmitted as a document so that the other party can access that information. In addition, websites are easily updated, and most do not provide any archive of previously displayed material or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited with only a hyperlink to a website cannot, therefore, be verified. Consequently, the submission of links to websites cannot be considered as a valid piece of evidence and cannot be taken into account.
Therefore, considering all the above, the evidence submitted is not sufficient to corroborate the assertion of the opponent that it provides services under the sign ‘HANSON’ in the United Kingdom in the context of commercial activity with a view to an economic advantage. The opponent has not demonstrated use of the mark as an important and significant business identifier used by the opponent. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market.
Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the services 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.
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.
Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.
The Opposition Division
Adriana VAN ROODEN | Boyana NAYDENOVA | Martina GALLE |
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.