OK RENT A CAR | Decision 2596990 - RENT A CAR (Société Anonyme) v. OTHMAN KTIRI GROUP SLU

Date Published: Oct 1, 2017

OPPOSITION No B 2 596 990

Rent a Car (Société Anonyme), 1, Rue Antonin Mercié, 75015 Paris, France (opponent), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative)

a g a i n s t

Othman Ktiri Group SLU, avd. Gran Vía Asima, 36, A, 07009 Palma de Mallorca, Spain (applicant), represented by Bird & Bird (International) LLP, Calle Jorge Juan, 8 ,1ª Planta, 28001 Madrid, Spain (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 596 990 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 282 222. The opposition is based on European Union trade mark registration No 5 478 532, , French trade mark registration No 02/3 142 922, , a company name, RENT A CAR and a trade name, RENT A CAR. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to the earlier European Union and French trade marks and Article 8(4) EUTMR in relation to both the company name and trade name.

SUBSTANTIATION: French trade mark registration No 02/3 142 922

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 shall 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 shall 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 French trade mark registration No 02/3 142 922 on which the opposition, inter alia, is based.

On 28/10/2015 the opponent was given until 09/03/2016 to submit the abovementioned material. Subsequently, an extension was requested by the opponent and, consequently, this time limit was extended until 09/05/2016.

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

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 shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The Opposition Division will now examine the opposition in relation to the opponent’s earlier European trade mark registration No 5 478 532.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 12: Vehicles, vehicles for tourism, utility vehicles, industrial vehicles, trucks, vans, trailers, electric vehicles.

Class 39: Rental of vehicles, rental of vehicles for tourism, rental of utility vehicles, rental of industrial vehicles, rental of trucks, rental of vans, rental of trailers, rental of electric vehicles.

The contested services are the following:

Class 35: Retail services in relation to vehicles; wholesale services in relation to vehicles; advertising services relating to the sale of motor vehicles.

Class 36: Fundraising and sponsorship; issuing gift certificates which may then be redeemed for goods or services; issuing of tokens of value in relation to customer loyalty schemes.

Class 39: Depot services for the storage of vehicles; car rental; booking of hire cars; arranging of car hire; booking agency services for car hire.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The principles set out above apply to any services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping etc.

Consequently, the contested retail services in relation to vehicles; wholesale services in relation to vehicles are similar to a low degree to the opponent’s vehicles in Class 12.

The contested advertising services relating to the sale of motor vehicles are dissimilar to the opponent’s goods and services. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. The opponent’s goods and services, which can be summarised as vehicles in Class 12 and rental of vehicles in Class 39 are intended to transport people or goods. Therefore, the abovementioned contested services and the opponent’s goods and services have different origins and purposes, target a different public, via different channels and are not complementary or in competition with one another. The fact that the opponent’s goods or services could appear in advertisements, is not considered a sufficient link to find similarity.

Contested services in Class 36

The contested fundraising and sponsorship; issuing gift certificates which may then be redeemed for goods or services; issuing of tokens of value in relation to customer loyalty schemes are considered dissimilar to all the goods and services of the opponent. The contested services relate to the process of gathering money or other resources by requesting donations or providing backing and services for issuing vouchers to be exchanged for goods and/or services as an alternative to money. These services have no links with the opponent’s goods in Class 12 and the services in Class 39. The nature and purpose of these goods and services are different. Furthermore, they are offered by distinct manufacturers and/or providers via differing channels. The services are not complementary, and they are neither in competition with one another nor interchangeable. The fact that the opponent’s goods or services could be purchased by vouchers is not considered a sufficient link to find similarity.

Contested services in Class 39

The contested car rental; booking of hire cars; arranging of car hire; booking agency services for car hire is considered to be identical to the opponent's rental of vehicles protected by the earlier right. Despite the different wordings used, they designate the same services. Hence, they are identical.

The contested depot services for the storage of vehicles consist of providing space for large fleets of vehicles. Whilst the earlier right has protection for vehicles and rental of vehicle these goods and services are dissimilar to these contested ones. Clearly the nature and purpose of these goods and services are very different and they target different users via different distribution channels. It is true that vehicle manufacturers and rental companies may use the contested services, however, it is equally true that they do not provide such facilities. Therefore, just as with the contested advertisements, the fact that the opponent’s goods or services could require depot services, is not considered a sufficient link to find similarity.

2. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or lowly similar are directed at the public at large.

Taking into consideration the price of vehicles, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a vehicle, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

Furthermore, the renting of vehicles is also an infrequent and costly purchase. Given that it is also a service which is often organised well in advance of its provision consumers often invest time and effort in ensuring that they acquire the best arrangement for their needs. Consequently the degree of attention is higher than average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark containing the verbal elements ‘RENT’, ‘a’ and ‘CAR’. The ‘a’ has the beginnings of an outside loop, but it does not fully surround it. There are also figurative elements, namely a blue rectangular background, along with both a white and red line, and a red circular background for the ‘a’.

The contested sign consists of the verbal elements ‘OK RENT A CAR’. The ‘OK’ is the largest element and appears in stylised green letters with black shadowing. ‘RENT A CAR’ appears in smaller standard black letters.

The expression ‘RENT a/A CAR’, which appears in both signs, is non-distinctive for services of vehicle rental (descriptive) and retail of vehicles (as it would indicate that the vehicles offered for sale are ex-rental ones) and for the Class 12 goods as it could describe either their intended use or their source. This is because these English words are used throughout the relevant territory in conjunction with these services.

The element ‘OK’ is a widely used English word meaning, amongst others, all correct, all right; satisfactory, good; well, in good health or order. in early use, occas. more intensively: outstanding, excellent. now freq. in somewhat weakened sense: adequate, acceptable (Oxford English Dictionary online oed.com). It is understood throughout the relevant territory due to its widespread use. Depending on the intended meaning, and as the best case scenario for the opponent, it can be perceived as being used to indicate outstanding or excellent products or services. Consequently this element is considered to be weak for all the contested services. However, when faced with a weak element and a non-distinctive element, the more distinctive element is the weak one.

The earlier mark has no dominant element. The contested sign’s element ‘OK’ is the dominant element due to its size, position and colour.

Visually, the signs coincide in the words ‘RENT’ and ‘CAR’ and have ‘a’ and ‘A’ which, whilst not identical, are highly similar. However, these are non-distinctive elements. The signs differ in the ‘OK’ of the contested sign which, whilst it is weak, is still more distinctive than ‘RENT A CAR’ and is the contested sign’s dominant element. The signs also differ in the earlier mark’s figurative elements.

As the signs only coincide in non-distinctive elements, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the non-distinctive words ‘RENT A CAR’. The pronunciation differs in the sound of the letters ‘OK’ of the contested sign.

As the signs only coincide in non-distinctive elements, the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. However, given that the shared concept is non-distinctive, the signs are not conceptually similar, as the contested sign will have the concept of ‘OK whilst the earlier mark will not be associated with any distinctive meaning.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation in France in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

Item 1: Four pages showing a list of agencies operating under the mark . The evidence is in French, regards primarily locations in France and relates to car and van rental. However, the evidence is undated (other than saying 10th anniversary).

Item 2: A certificate dated 25/04/2013 from N. Jochimowicz, Administrative and Finance Director, listing in euros the advertising investments for the trade mark “RENT A CAR” for the years 2005 to 2012. The figures given range from EUR 831,655 to EUR 1,242,365 with the average being in excess of EUR 1,000,000.

Item 3: A one page news article titled “Rent A Car on prime time!” from the French magazine Aprés-Vente dated 01/09/2013. The translation states: “Until July 28th 2013, Rent A Car was accompanying the TV-series Les Experts on TF1 and the ‘Capital’ and ‘100% Mag’ magazines on M6. ‘Vehicle rental has become an extremely competitive sector. In this context, the ‘standard’ rental companies have more than ever to communicate and claim their expertise and their professionalism’, summarizes Guilhem Mazzia, Managing Director.”

Item 4: Two news articles. The first is a one page extract titled “Rent A Car renter hires around ten franchisees” from the French website Autoactu.com, dated 19/03/2010. The translation reports the opening of 10 car rental franchises in 2011 and that 20 agencies were opened in 2009. The second is a one page extract titled “Rent A Car looking for new partners” from the French magazine Enterprise and Franchise, dated 01/04/2010. The partial translation states “The car rental network Rent A Car, member of the French Franchise Federation, will be attending the Franchise Expo Paris 2010 Show on stall B12.”

Item 5: One page extract titled “Rent A Car leader in local car rental service” from the French magazine MEDEF Ile-de-France, dated 10/2010. The translation reports that the sign is the leader in France of “proximity location with 400 location agencies, 1000 collaborators and 100 millions of turnover.”

Item 6: Eleven pages extracted from a 2011 brochure. The brochure shows car and van rental services being offered in France under the sign.

Item 7: Three page extract of a 2011 French Press Release. The brochure shows car and van rental services being offered in France under the sign.

Item 8: One page extract titled “Rent A Car hires more distributors” from the French magazine Le Journal de l’Automobile 30/09/2013. The translation states “The car rental company wishes to sign partnerships with more distribution groups … in order to increase its retail outlets network from 450 to 700.”

The opponent also submitted, at the same time, evidence of use of the trade and company name. As this evidence was filed within the deadline for providing evidence for enhanced distinctiveness or reputation it will also be examined here.

Item 9: Extracts from the French Corporate Registry with two partial translations, showing that the company name RENT A CAR was registered first on 03/08/1977 and again on 10/04/1989.

Item 10: A 2011 brochure (item 6 above), email newsletters from 2014, undated extracts from the opponent’s website, two customer invoices from 2005 and 2006, three invoices from providers from 2012 and 2014 and an undated blank vehicle condition card. These documents are in French with partial translations. The sign shown is mostly , but on a couple of the documents the following sign appears: .

Also included in item 10 are seven pages of a TNS Sofres opinion poll providing information of the global notoriety of vehicle rental signboards. The document is in French with a partial translation and is dated 11/2007. “Rent A Car” appears in three of the five charts. In those where it does appear it comes in fifth position. The charts show the percentage of awareness of the signboards of various vehicle rental companies with “Rent A Car” shown with an awareness that ranges from just over 50% to just over 67%.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Firstly, none of the evidence filed shows any link to the earlier Class 12 goods. Therefore, as no evidence at all was filed showing these goods, the claim to an enhanced distinctiveness or reputation for this goods has not been proven.

The earlier mark  does appear in many of the documents filed, but not all, and often reference is made to just “RENT A CAR”. However, as also mentioned above in section c) this element is descriptive for the goods and services of the earlier mark. Therefore, the distinctiveness of the earlier mark lies in the mark as a whole and especially the arrangement and position of the figurative elements and not just the verbal elements. Consequently, the opponent must prove that the mark as registered, namely, has an enhanced distinctiveness or reputation.

The majority of the evidence shows use of the mark, but does not contribute to proving reputation. For example, items 1, 6, 7 and the brochures and email newsletters in item 10 are documents which show the mark being used, but not the degree of recognition of the mark by the relevant public. To explain further, the brochure (item 6) filed by the opponent is not provided with evidence of the number of such items printed and/or distributed, therefore, it is impossible for this piece of evidence to show any degree of reputation by the public. Likewise, the filing of two invoices showing the provision of services (item 10) is incapable of providing the Opposition Division with any information that would enable us to gauge the degree of recognition. Furthermore, two invoices are unable to support the claim, made in item 5, of turnover of “100 millions”. The opponent could have filed either larger number of invoices to support this claim, or alternatively, published financial accounts.

Item 2 is a signed certificate vouching for the size of the advertising investments made by the opponent. Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.

The three invoices from providers (in Item 10) do appear to show evidence of spending on advertising (for instance one of the items is for payments to the value of EUR 152,000 for advertising in the French business telephone directory including its online edition). However, these items do not show the sign which was being advertised. They do show the company name “RENT A CAR” (listed as “client annonceur” and “No de Client” for example) but there is no reference to the sign nor examples of the resulting advertisements. Item 3 shows indirect evidence of spending on advertising, although the actual monetary value invested in the advertisements identified in Item 3 is not stated. Consequently, the evidence filed does not support the statements expressed in the certificate.

Items 4 and 8 are extracts from magazines and refer to the opponent’s efforts in increasing the number of franchise outlets between the years 2009 and 2013. Logically a larger number of outlets would potentially permit the opponent to reach a larger group of consumers (and this would suggest a larger geographical extent of use, at least for France). However, this information by itself does not translate to showing a level of recognition in the relevant public.

Finally, the opinion poll (Item 10) shows “Rent A Car” appearing in three charts in fifth position relating to the percentage of awareness of the signboards of various vehicle rental companies. “Rent A Car” is shown with an awareness that ranges from just over 50% to just over 67%. The evidence sent is not a full study, nor is it fully translated. Furthermore, the evidence does not include the following: details of the number of the interviewees; the method and circumstances under which the survey was carried out; the complete list of questions included in the questionnaire; whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied. The absence of this information reduces the probative value of this item.

The Opposition Division is also concerned in the current case about the fact that the survey refers to “RENT A CAR” and “awareness of the signboards”. As already seen above “RENT A CAR” is descriptive and, therefore, it is the sign as a whole that must be shown to be recognised. The “signboard” referred to in the survey for “RENT A CAR” cannot be assumed to be the same as the earlier mark as the opponent has not provided the full survey. Finally, the earlier mark , which the opponent is trying to show has an enhanced degree of distinctiveness or is reputed, was filed on 07/11/2006, whereas the responses used in the survey are listed as being collected in November 2006 and May 2007. Whilst it is not impossible for the opponent to have achieved such a level of awareness in such a short time, without proof that the signboard on which the correspondents were referring is the same as the earlier mark on which the opposition is based, the Opposition Division cannot put a particularly high probative value on this item, and it will not be sufficient on its own to support a finding of enhanced distinctiveness or reputation.

In conclusion, the majority of the evidence does not show consumer awareness or promotional actions to such an extent that one would be lead to a conclusion of enhanced distinctiveness or reputation. Indeed, most of the evidence would appear to indicate the normal commercial activities for any enterprise actively operating in the provision of consumer goods or services as is the case here. Furthermore, the evidence lacks objective data relating to the sales and advertising figures, has no indication of market share information and provides no information that can be categorically linked to the earlier mark of the degree of recognition of the public who will actually be purchasing the opponent’s goods or services. Therefore, the Opposition Division concludes that the opponent failed to prove that its trade mark has an enhanced distinctiveness or reputation for any of the goods and services in relation to which enhanced distinctiveness or reputation was claimed.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark’s verbal elements must be seen as low for all of the goods and services in question, and the distinctiveness of the earlier mark lies in its arrangement and position of its figurative elements.

5. Global assessment, other arguments and conclusion

The services have been found partially identical, partially similar to a low degree and partially dissimilar.

The distinctiveness of the earlier mark’s verbal elements has been seen as low for all of the goods and services in question. The distinctiveness of the earlier mark lies in its arrangement and position of its figurative elements.

The shared elements between the signs, namely the words ‘RENT A CAR’, have been found to be descriptive. The differences between the signs are more distinctive, even the verbal element ‘OK’ of the contested sign, which the opponent argued, can also be weak. The Opposition Division considers that the stylised figurative element that makes up the verbal element ‘OK’ is enough in order to render the sign as a whole distinctive. It has the capacity to catch the attention of the relevant public which would in such a case not concentrate only on the verbal element ‘OK’, but the figurative manner in which it is presented.

Consequently, as the signs only coincide in non-distinctive elements, the attention of the consumer, which was found to be at least higher than average, will rather be focused on the differences. Therefore, the global assessment of the signs is different and the mere association which the public might make between them as the result of their analogous, but descriptive, semantic content is not sufficient to conclude that there is a likelihood of confusion.

Considering all the above, the Office finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on this ground.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As previously concluded the evidence submitted by the opponent does not demonstrate that the earlier mark acquired reputation.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

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 shall 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 shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 shall 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 shall 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.

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. 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 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.

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 sufficient information on the legal protection granted to the types of trade sign invoked by the opponent, namely a company name and a trade name. It made a reference to Article L.117.4 of the French Intellectual Property Code along with a short extract from this article. However, it did not provide the applicable law in the original language, nor did it submit sufficient 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 France.

Therefore, the opposition is not well founded under 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

Chantal VAN RIEL

Ric WASLEY

Vita VORONECKAITĖ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.