JUUCE | Decision 2505280 - Hair Jamm Pty v. COSS ApS

Date Published: Sep 22, 2017

OPPOSITION No B 2 505 280

Hair Jamm Pty, Lot 3/457 Tufnell Road, Banyo, Brisbane QLD 4014, Australia (opponent), represented by McDaniel & Co., 19 Portland Terrace, Jesmond, Newcastle upon Tyne NE2 1QQ, United Kingdom (professional representative)

a g a i n s t

Coss ApS, Landbrugsvej 16, 5260 Odense S, Denmark (applicant), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 505 280 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 of European Union trade mark application No 13 446 265 for the word mark ‘JUUCE’ in Class 3. The opposition is based on the following earlier rights:

• Swedish and United Kingdom non-registered trade mark for the word mark ‘JUUCE’.

• Swedish and United Kingdom non-registered trade mark for the figurative mark .

• Swedish and United Kingdom non-registered trade mark for the word mark ‘juuce pure’.

• Swedish and United Kingdom non-registered trade mark for the word mark ‘Hairjamm juuce’.

• Swedish and United Kingdom non-registered trade mark for the word mark ‘juuce’.

The opponent invoked Article 8(4) EUTMR in relation to the aforementioned earlier rights. In addition, the opponent invoked Article 8(3) EUTMR in relation to the earlier word mark ‘JUUCE’, based on a “trade mark in the European Union”.

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.

1. 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).

Furthermore, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the contested trade mark was filed on 11/11/2014. 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, respectively, the United Kingdom and Sweden prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for ‘hair preparations; hair care products; hair treatments; hair lotions; hair spray; shampoo; conditioner; hair styling products; hair dyes; essential oils; cosmetics; perfumery’, as claimed by the opponent.

On 23/10/2015 the opponent filed the following evidence:

• APPENDIX 1: Copies of e-mails exchanged between the opponent (an Australian company) and the applicant (Mr Daryl Young from the opponent and Mr Frank Sehested from the applicant, Coss ApS), evidencing their relationship and the negotiations for the applicant to become a distributor of the opponent’s goods in Denmark. The e-mails are dated from 2012, 2014 and 2015.

• APPENDIX 2: Copies of advertisements of hair care products (posters, photos of products) bearing the mark ‘JUUCE’, created and disseminated in Denmark by the applicant, Coss ApS. The opponent claims that it became aware of the fact that the applicant was marketing its own ‘JUUCE’ brand of hair care products in February 2015.

• APPENDIX 3 and 4: Further examples of advertisements made by the applicant, including online, of hair care products bearing the mark ‘JUUCE’. The applicant uses the additional slogan “Inspired in Australia – Perfected in Scandinavia” in relation to the goods. Copies of e-mails exchanged between Mr Daryl Young and Mr Frank Sehested discussing the situation, in which the applicant claims that it has produced its own ‘JUUCE’ products since 2007.

• APPENDIX 5: Commercial Company Extract of the opponent, Hair Jamm Pty Ltd, attesting that the company is incorporated in Australia and that Mr Daryl Young is one of the directors.

• APPENDIX 6: Extracts of several trade mark registrations in the name of the opponent in Australia and New Zealand, for the mark ‘JUUCE’ and for products in Class 3.

• APPENDIX 7: An extensive list of customer sales originating from the opponent. The provided lists show the name of the clients and the amount of the turnover per client, for the given time period (in Australian dollars). No trade marks are identified in the lists. In addition, it is not possible to verify the origin of the alleged clients. The lists concern periods that range from 2001 to 2015. In its observations, the opponent claims that ‘JUUCE’ is one of its main brands and that “over 90% of the products the Opponent has exported to Europe have been JUUCE products”. In its observations, the opponent also identifies the name of its distributors in the UK (Hairdressing Supplies Limited and Happy Hair UK) and Sweden (Right Hair Sweden AB) and provides overall sales turnover figures for these countries, from July 2007 to June 2015. The amounts are in Australian dollars and range from 16 thousand to 68 thousand dollars per year, per distributor.

• APPENDIX 8: Commercial extract of the company Right Hair Sweden AB, in Swedish. The opponent claims that this company has been a distributor of the opponent in Sweden since August 2012.

• APPENDIX 9: Copies of advertisements (9 pictures) which, according to the opponent, were used by the company Right Hair Sweden AB to promote the ‘JUUCE’ products of the opponent in Sweden. The pictures show hair care products bearing the mark ‘JUUCE’ and text in Swedish. However, they are not dated and there is no information as to their source (it is unclear if these advertisements were published at all, where, when, in which publication, etc.).

• APPENDIX 10: Copies of invoices issued by the company Right Hair Sweden AB to clients in Sweden (hair saloons), evidencing sales of hair care products with the ‘JUUCE’ brand: a total of 12 invoices dated between November 2012 and November 2015 (2 from 2012, 4 from 2013, 4 from 2014 and 2 from 2015). Each of the invoices shows the sale of a relatively small amount of ‘JUUCE’ products, as evidenced by the quantities mentioned; the goods sold are hair care products: shampoos, conditioners, hair oils, etc.; the maximum amount sold of a single product in a single invoice is 24; in addition, in none of the invoices the total quantity of products sold surpasses 100 units.

• APPENDIX 11: A list of clients (internal document) of the company Right Hair Sweden AB, containing their names and addresses, in Sweden. A declaration issued by Right Hair Sweden AB, in which this company declares that it is a distributor of the opponent in Sweden and that “80-90% of the HairJamm Pty products sold are JUUCE branded”.

• APPENDIX 12: Pictures of advertising posters for the opponent’s JUUCE hair care products. According to the opponent, these advertisements were extracted from its own website. The documents are not dated.

• APPENDIX 13 and 14: Copies of several promotional Newsletters issued by the opponent between September 2013 and October 2015. The newsletters show a multitude of advertising campaigns for JUUCE hair care products. All the prices mentioned are in Australian dollars. The opponent claims that these documents are also available on its website and Facebook page.

• APPENDIX 15: Copies of 5 invoices issued by the opponent on 12/09/2006, 19/09/2006, 24/10/2006 (2 invoices on this date) and 16/01/2007. The invoices show the sale of considerable amounts of ‘JUUCE’ branded hair care products to the UK company Happy Hair UK. The appendix also contains customs documents, confirming that the goods were shipped to the UK, as well as a copy of a bank transfer, confirming a payment of 20 660 Australian dollars made to the opponent by Happy Hair UK on 16/10/2006.

• APPENDIX 16: Undated copies of advertising posters, promoting hair care products with the JUUCE mark. The opponent claims that this material was “produced by the company Happy Hair UK and used as marketing in the UK in 2008”. However, as can be observed, all the posters are in Swedish and mention prices which are, most likely, in Swedish kronas. Furthermore, and in any case, there is no information as to the source of these documents, i.e., it is unclear if these advertisements were published at all, where, when, in which publication, etc.

• APPENDIX 17: Copies of 5 invoices issued by the company Eco Mundo (4 in 2013 and one in 2015), to the opponent HairJamm Pty. According to the opponent, this company provided technical assistance to ensure the compliance of the opponent’s hair care products with EU Regulations.

• APPENDIX 18: Copies of invoices issued by the company SZM Consulting (from Barcelona, Spain) to the opponent. According to the opponent, between July 2013 and March 2015, the opponent paid to this consultant 7 000 Australian dollars a month; the company was engaged to find distributors for the opponent’s goods in the EU.

• APPENDIX 19: Copies of correspondence exchanged between the opponent’s and the applicant’s representatives in 2015, in advance of this opposition proceeding.

The Opposition Division will also take into account the documents submitted by the opponent on 15/06/2016, which were submitted in reply to the applicant’s observations of 21/03/2016, namely:

• ANNEX 1: Declaration from Mr John Luppin, director of the opponent, signed on 04/05/2016. It states, inter alia, that Happy Hair UK became the exclusive UK distributor of ‘JUUCE’ hair care products in the UK since September 2006.

• ANNEXES 2 to 10: Copies of e-mails  exchanged between the parties since 2012 as well as several extracts from the Internet, as regards when and how did the applicant started to use the mark ‘JUUCE’ in Denmark.

• ANNEX 11: Copies of jurisprudence from the UK and Swedish courts, as well as copies of the Swedish legislation (in Swedish and accompanied by English translations).

Non-registered earlier trade marks in the UNITED KINGDOM - Prior use in the course of trade of more than mere local significance:

The opponent has based its case on 5 non-registered marks in the United Kingdom, mentioned above in the Reasons section. For ease of reference they will be hereunder referred as the earlier ‘JUUCE’ signs.

The notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 42(2) and (3) EUTMR (judgment of 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 24-27). The aims and conditions connected with proof of genuine use of registered EU or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) EUTMR (judgments of 09/07/2010, T-430/08, Grain Millers, EU:T:2010:304, § 26; 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 143). Therefore, use must be interpreted according to the particular type of right at issue.

The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) EUTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (judgments of 12/11/2002, C-206/01, Arsenal, EU:C:2002:651, § 40; 25/01/2007, C-48/05, Opel, EU:C:2007:55, § 18; 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 17).

Furthermore, rights falling under Article 8(4) EUTMR may only be invoked if their use is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) EUTMR, that is, both to unregistered trade marks and to other trade signs identifying commercial origin.

The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (judgment of 18/04/2013, T-506/11 & T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48).

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 (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 36-37 and 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

As far as the time of use of the sign is concerned, an opponent must prove that use took place before the filing of the EUTM application or the priority date if relevant (judgment of 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 166-168).

Moreover, the sign invoked under Article 8(4) EUTMR must be in use not only at the time of filing of the contested mark but it must continue to be used at the time of filing of the opposition. This was confirmed by the General Court in judgment of 23/10/2013 in case T-581/11, Baby Bambolina. The Court held that the earlier right relied on in support of an opposition must still exist at the time that notice of opposition is filed. This presupposes normally that the sign in question must still be in use at the time of the filing of the notice of opposition. Indeed, it is precisely the use of the sign in the course of trade which is the basis of the existence of the rights to that sign (23/10/2013, T-581/11, Baby Bambolina, EU:T:2013:553, § 26 and 27).

In the present case, the contested trade mark application was filed on 11/11/2014 and the opposition was filed on 08/04/2015.

A relevant part of the evidence filed by the opponent is undated (e.g., all the advertising material, allegedly used in the United Kingdom). In addition, the fact that this advertising material is in Swedish (see Appendix 16 above) and contains mentions of prices in Swedish kronas rather seems to indicate that it was not used in the United Kingdom. Similarly, all the newsletters of the opponent seem to target the Australian market, as the prices in Australian dollars indicate.

A vast part of the evidence is dedicated to the commercial relations between the applicant and the opponent and sheds no light on the alleged prior use in the United Kingdom either.

The only dated documents which provide a relevant indication of use in the United Kingdom are the 5 invoices from 2006 and 2007 (Appendix 15), which indicate the import of ‘JUUCE’ branded hair care products in the UK, by a single company: Happy Hair UK. However, this single proof of import dates from 7 years before the filing date of the contested sign and eight years before the filing of the opposition. All in all, it is clear that the evidence does not provide a convincing picture of use of the opponent’s signs at the time of the filing of the contested EUTM (11/11/2014) and even less so at the time of filing of the opposition (08/04/2015).

Indeed, it must be clear from the evidence that the use of the earlier sign(s) 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. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded (Rule 20(1) EUTMIR) (23/10/2013, T-581/11, Baby Bambolina, EU:T:2013:553, § 15).

In the present case, it results clear that the opponent did not demonstrate the continued existence of its marks in the UK. The only evidence of actual use in the UK market dates from 2006/2007. No other evidence was submitted to illustrate that the opponent’s goods are actually being sold to consumers in the UK, where, to what extent, etc.

Although the fact that a UK company imported a considerable amount of goods bearing the mark ‘JUUCE’ in 2006 and 2007 suggests that some use of the signs has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR, because it does not provide sufficient indications as regards, inter alia, the continued existence of the signs on the market, the length of their use and the actual spread of the goods in the market.

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).

Such conclusion cannot be made on the basis of the evidence submitted, as there is no indication that goods bearing the mark have actually been marketed in the UK and the only evidence of import of such goods in the UK dates back from 2006/2007.

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).

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

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, as far as it is based on the earlier non-registered marks in the United Kingdom.

2. The right under the applicable law - Non-registered earlier trade marks in SWEDEN

The opponent has based its case on 5 non-registered marks in Sweden, mentioned above in the Reasons section. For ease of reference they will be hereunder referred as the earlier ‘JUUCE’ signs.

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. 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.

In the present case, the opponent has invoked the provisions of the Swedish law, as regards the protection afforded to unregistered trade marks. According to the law governing the signs in question:

Swedish Trade Marks Act (2010:1877)  - Chapter 1, Article 7 and Chapter 2, Article 8 SE-TMA:

Conditions for protection:

The unregistered trade mark must have been used in such a way that it has become established on the market.

Rights conferred (a) and conditions (b):

1. The same as for registered trade marks: right to prohibit the use of subsequent trade marks.

2. A mark is considered to have become established on the market when it is, within a significant portion of the circle for which it is intended, known as a symbol for the goods being made available under it.

         

(emphasis added).

As explained by the opponent, the assessment of what is to be considered a ‘significant’ part of the circle for which the sign is intended cannot be specified in accordance with abstract criteria, but depends on the circumstances of each case. Still, it is a logical starting point to determine that an unregistered mark should be considered to be ‘established’ according to the same criteria which determine if a mark has acquired distinctiveness through the use which has been made of it on the marketplace.

Based on this premise, the opponent and the applicant enter into a discussion as to what is the indicative percentage of consumers that must associate the relevant goods with the relevant mark in order to reach the ‘establishment’ threshold. According to the opponent, the doctrine and relevant Swedish case-law seem to set the ‘establishment percentage’ at about 30%. However, in certain more competitive market sectors with a large number of operators and brands, a lower percentage may be acceptable (21% of knowledge by the relevant public was accepted in a case where the relevant goods were wines). According to the applicant, however, no such formal barrier may be established and every case must be examined on its own merits.

Having examined the material described above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier unregistered trade marks have become established on the market, according to the criteria established by the Swedish law.

The documents submitted show some use of the trade mark ‘JUUCE’ in relation to hair care preparations in the territory of Sweden. However, the evidence submitted does not provide any convincing and solid indication of the degree of recognition of the trade mark by the relevant public.

It is the opinion of the Opposition Division that this element is of extremely high importance for proving that, as a result of intensive use of the ‘JUUCE’ signs, a ‘significant portion’ of the relevant public is knowledgeable of this brand and associates the respective products with the opponent. Indeed, while there are many competitors on the marketplace at issue (hair care products), only a small number of them will reach the substantial level of recognition by the relevant consumers necessary in order to justify the aforementioned finding.

Whatever the particular percentage expression of the threshold at issue might be, it is clear that the status of a mark known by a significant portion of the relevant public can only be considered to have been reached when solid proof that the mark in question is indeed known by a relevant part of the public has been submitted.

In the present case, the opponent has submitted no such evidence.

The documents which contain relevant indications as to the use of the signs in Sweden are essentially the advertising material (Appendixes 9 and 16) and the invoices (Appendix 10) submitted.

As regards the advertisements, although the same are in Swedish and contain prices in Swedish kronas, it must be noted that they are not dated. Furthermore, there is no information as to the source of these documents. It is not clear where and when (if at all) they were disseminated. It is not clear if they were used in some publication or directly in hair saloons (and if so, where, when, which publication/hair saloon, how many consumers did this publication reach, in how many hair saloons were the materials displayed and how many consumers were exposed to them, etc.).

As regards the invoices, as previously noted, they also show some use of the signs in the Swedish market, but are clearly insufficient to show that a significant part of the relevant public knows the opponent’s ‘JUUCE’ signs. The sales shown are not extremely high and, even assuming that these invoices constitute relevant samples from a larger whole, no relevant conclusion can be made as to the degree of recognition of the opponent’s brands based solely on these documents.

It was up to the opponent to show the size and other relevant characteristics of the market in question (market of the hair care products in Sweden) and to explain why the sales of its goods should be considered significant in the context of this market (e.g., by demonstrating market shares). This information cannot be considered a well-known fact. Therefore, the Office cannot be expected to conduct research to obtain such information, because this would amount to an ex-officio investigation. In other words, the burden of proof lies with the opponent.

The remaining documents are also manifestly insufficient to show the degree of recognition of the ‘JUUCE’ marks in Sweden. The vast list of the opponent’s clients sheds no light as to the geographical origin of these clients (presumably, all or most of them are Australian clients; Appendix 7). Likewise, the fact that Right Hair Sweden AB puts forward a vast list of customers is not particularly relevant, since it cannot demonstrate that ‘JUUCE’ products were sold to these clients (Appendix 11). The declaration made by this Swedish distributor (“80-90% of the HairJamm Pty products sold are JUUCE branded”) is also insufficient, because the decisive factor is the extent to which such products were sold and the degree to which they are known to consumers.

The opponent did not submit opinion polls or market surveys, which, in principle, are the most suitable means of evidence for providing information concerning the degree of knowledge of its sign(s) and the position it occupies in the market in relation to its competitors.

It would have been expected that additional evidence be submitted, namely declarations from independent third parties (in particular, Chambers of Commerce and/or other professional associations) attesting to the intensive use of the ‘JUUCE’ marks, audits confirming the overall claimed revenues, verifiable data of the market share held by the opponent in Sweden, advertisement expenditures, opinion polls, market surveys, copies of advertisements used in commerce and information about their dissemination and any other documents issued by third parties that would confirm the opponent’s claims as regards establishment of the signs at issue as unregistered marks, according to the laws of  Sweden.

As mentioned, the burden of proof was on the opponent. The claim of acquisition of the earlier rights at issue cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade marks on the market concerned.

In summary, the information and evidence submitted by the opponent is not sufficient to show, beyond any reasonable doubt and without the use of deductive reasoning, that the earlier unregistered ‘JUUCE’ trade marks have become established on the market and are known by a significant portion of the relevant public.

Therefore, the Opposition Division concludes that the evidence filed is not sufficient to demonstrate that the opponent has fulfilled the conditions of acquisition of the earlier rights claimed as a basis of the opposition (unregistered trade marks in Sweden), according to the conditions of protection established by the Swedish law.

Therefore, the opposition is not well founded under Article 8(4) EUTMR, as far as it is based on the earlier non-registered marks in Sweden.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER – ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

• the signs are identical or only differ in elements which do not substantially affect their distinctiveness;
• the goods and services are identical or equivalent in commercial terms;
• the applicant is an agent or representative of the owner of the earlier mark;
• the application was filed without the consent of the owner of the earlier mark;
• the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

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, as regards the ground of Article 8(3) EUTMR on which the opposition is based, in the opposition notice filed on 08/04/2015, the opponent declared that it owns the trade mark ‘JUUCE’ (word mark), in the European Union, in relation to goods in Class 3 (for ‘hair preparations; hair care products; hair treatments; hair lotions; hair spray; shampoo; conditioner; hair styling products; hair dyes; essential oils; cosmetics; perfumery’).

The contested mark was published on 09/01/2015 and the opposition period expired on 09/04/2015. The present opposition was timely filed on 08/04/2015. The correct identification of the earlier rights claimed as a basis of the opposition is an absolute admissibility requirement, which must be completed by the opponent within the opposition period.

If the opposition is based on more than one earlier right and at least one of them has been correctly identified, the examination of admissibility (relative requirements) can proceed based on that earlier right. The parties are informed thereof when the notification of the time limits of the opposition proceedings is sent to the parties.

On 21/04/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence of ownership of a European Union trade mark for the word mark ‘JUUCE’. Following an extension, this time limit expired on 26/10/2015. As results clear from the present proceedings, the opponent did not show that it owns a prior EU trade mark application/registration with the Office.

Therefore, the claim based on Article 8(3) EUTMR is unfounded, as the opponent has not proven ownership of the trade mark that it indicated as a basis of the opposition.

If the indication of ‘European Union’ in the Notice of Opposition (field ‘Countries in which the opponent owns trade mark’) is to be interpreted as indicating that the trade mark at issue is a non-registered European Union mark, the opposition is equally unfounded, because non-registered ‘European Union marks’ do not exist under EU legislation.

For the sake of completeness, it is to be noted that it would have been sufficient, for the substantiation purposes of the present proceeding, for the opponent to indicate the ownership of its earlier trade marks in Australia and New Zealand in the Notice of Opposition because, for oppositions based on Article 8(3) EUTMR, it is immaterial whether the earlier trade mark rights reside in the European Union or not. However, the indication has to be made before the end of the opposition period, which in this case expired on 09/04/2015. The opponent mentions these earlier rights in Australia and New Zealand for the first time in its observations of 23/10/2015 and, therefore, they cannot be considered earlier rights on which the opposition is based because, as mentioned above, the identification of the earlier rights is an absolute admissibility requirement.

Therefore, the opposition must be rejected as unfounded insofar as it is based on Article 8(3) 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

Patricia LOPEZ FERNANDEZ DE CORRES

Gueorgui IVANOV

Ewelina SLIWINSKA

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.