W.A.B.B.A World World Amateur Body Building Association | Decision 454/2015-4
Date Published: Sep 28, 2017
THE BOARDS OF APPEAL
DECISION of the Fourth Board of Appeal of 9 December 2016
In Case R 2454/2015-4
WABBA ITALIA A.S.D. via Caprera 1 Verona Italy Opponent / Appellant
represented by Piergiovanni Cervato, Via Bronzetti 46, I-35138 Padova, Italy
v
Sport und Freizeitpark New Galaxy GmbH Talstraße 1 D-55232 Alzey Germany Applicant / Respondent
represented by Günter Schlösser, Keppentalerweg 21, D-55286 Wörrstadt, Germany
APPEAL relating to Opposition Proceedings No B 2 434 606 (European Union trade mark application No 13 067 145)
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and L. Marijnissen (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
Decision
Summary of the facts
1 By an application filed on 9.7.2014, the respondent sought to register the
figurative mark
for the following list of goods and services:
Class 41 – Organization of sports competitions; Organization of sports competitions; Organization of sports competitions.
2 On 4.11.2014, the appellant filed a notice of opposition based on Article 8(4) EUTMR on the basis of the following claimed earlier rights, all of which were said to be Italian non-registered trade marks/signs:
(a) The word mark:
WABBA
(b) The figurative mark:
2
(c) The company name: WABBA ITALIA A.S.D. (as an acronym for
‘Associazione Sportiva Dillettantistica’, an amateur sports association).
Each was claimed to have been used in the course of trade for the services of:
Sport camps, sports coaching, sports training, sports refereeing, sports officiating, sports tuition, sports activities, sporting services, sport camp services, sports education, training in sports, sports instruction, sports information, sports coaching services, sports entertainment, sports club services, instruction in sports, tuitions in sports, sports and fitness, organising of sports and sports events, sports camp services, providing sports facilities.
3 In the notice of opposition, and the statement of grounds filed with it, the appel- lant claimed that each of these earlier rights is used in Italy in the course of trade and is of more than local significance, and that pursuant to the law governing them, each of the trade marks/signs confers on its proprietor the right to prohibit use of a subsequent trade mark, stating in this regard that
‘For Italy (relevant territory of use of the aforesaid non-registered marks) the relevant law is the Industrial Property Code (IT-IPC) and in
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
particular art. 12, letter a) and b), which provide that a sign cannot be registered as a trademark when it is identical or similar to: a) a prior known non-registered trademark and/or b) a company name used in economic activities. In this manner such law provisions give the proprietor of this prior known non-registered trademark and company name the right of prohibition of any unauthorized use of identical or similar subsequent marks and of opposition against subsequent TM applications concerning such marks. As a conse quence the ownership and use in economic context of a prior known non-reg istered trademark and/or of a prior company name give their proprietor the right to prohibit the use of subsequent identical or similar marks and thus the right to oppose against any CTM application (...).’
4 In its grounds of opposition, the appellant claimed that it has owned and used the non-registered trade marks listed at paragraph 2 above since the beginning of 2014, when it was established as the Italian amateur sports association ‘WABBA ITALIA A.S.D.’ and that it became known by virtue of such use, which includes the use of the marks/signs in a domain name wabbaitalia.com. It provided a copy of the Memorandum of Association establishing the non- profitmaking amateur sports association (A.S.D.) WABBA ITALIA, dated and stamped by the Italian authorities on 27.1.2014 and by Mr Coselli and Mr Pretelli , as well as two pages of ‘Raw Register Data’ relating to the domain name wabbaitalia.com, a two-page print-out headed ‘W.A.B.B.A. ITALIA’ dated November 2014, an undated print-out of a page said to be an extract of the appellant’s Facebook page, bearing a figurative sign similar to that shown in paragraph 2(b) above, but bearing the word ‘Italia’ under W.A.B.B.A., to the right of which appears ‘Wabba Italia Squadra sportive dilettantistica’, a copy of a page entitled ‘Trofeo Forli’ bearing the date 20.4.2008 and the figurative sign shown in paragraph 2(b) above, a copy of a page relating to the ‘Grand Prix del Lazio 2011 WABBA’, an undated copy of a photograph of a group of people with ‘WABBA’ and ‘Championship’ visible on a banner in the background, and a copy of a page entitled ‘1 TROFEO “THE STRONGEST” bearing the same figurative sign in the upper left hand corner as in the Facebook page, and the date ‘11 Maggio 2014’.
5 On 14.11.2014, the Office granted the appellant a time limit expiring on
26.3.2015 in which to substantiate the earlier rights and submit further material.
6 On 17.11.2014, Mr Gerhard Neumer wrote to the Office on ‘W.A.B.B.A. World Amateur Body Building Association’ letterhead, to state that the contested EUTM is a logo which belongs to WABBA World, which owns the respondent, with its headquarters in Germany (at the same address as the respondent) and which has been using the sign for over 20 years. It filed, inter alia, a copy of a flyer for the WABBA final dated 26.5.1991 bearing the same figurative mark as in paragraph 2(b) above, and a trade mark transfer agreement dated 7.1.2010 from WABBA World ASBL to WABBA Germany for the figurative trade mark
3
(International Registrations No 593 652, and No 818 657A and
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
. This was sent on 20.11.2014 to the appellant by way of a copy of the observations of the applicant in response to the opposition.
7 On 3.12.2014, the appellant filed an English translation of the above-mentioned
Memorandum of Association, its constitutive instrument.
8 On 12.1.2015, Mr Hauck and Mr Neumer of W.A.B.B.A. Germany eV wrote to the Office (letter signed only by the former) to explain that the World Amateur Body Building Association (W.A.B.B.A.) was founded in 1975, and that W.A.B.B.A. Germany (represented by himself and Mr Neumer, the author of letter to the Office of 17.11.2014) purchased the trade marks rights as specified in the trade mark transfer agreement of 2010 it submitted. It also filed documents showing a WABBA 1999 World Championship, and copies of other letters, magazine articles and publicity regarding WABBA world competitions and congresses in 1979, 1992, 1993, 1998, 1999, 2000, demonstrating use of the signs ‘WABBA’ as well as the figurative sign relied upon by the appellant (para- graph 2(b) above), and showing that the former World President of WABBA International, Mr Piccolo, was based in Italy. He asserted that Mr Coselli and Mr Pratelli had represented the organisation in Italy since 2013 but split away when they failed to take control of it.
9 On 23.3.2014, the appellant filed further observations and evidence, and stated that, in addition to the legal provisions cited in its Notice of Opposition, it also relied upon ‘other law provisions concerning non-registered trade marks: art. 2 par. 4 IT-IPC and art-2571 Italian Civil Code concerning the prior use’. By way of evidence to show actual use in trade of the marks of more than mere local significance of the non-registered trade marks and company name, it filed the following documents:
A private agreement dated 17.1.2014 from Gianni Coselli licensing to A.S.D. WABBA ITALIA the right to use the word and figurative trade
marks WABBA and
. Three pages of print-outs concerning the domain name wabbaitalia.com, showing a creation date of 21.2.2005, a first update date of 19.2.2013, with the Registrant Name and Organization of Gianni Coselli, also given as the Admin Name and Organization. After an update on 14.2.2014, the Registrant Name and Organization is given as Customer 019874692 (name concealed). Copies of invoices to Gianni Coselli from Aruba s.P.A for domain name registration and web hosting wabbaitalia.com (dated 28.2.2005, 28.2.2014, and 28.2.2015). An undated screenshot of a website page said to be hosted on wabbaitalia.com, giving details of the WABBA INTERNATIONAL World Championship ‘CATANIA 2015’.
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
4
French trade mark No 3206703) and the Benelux trade mark No 794 4525
5
An undated screenshot of what appears to be the Facebook page for Wabba Italia, featuring the same CATANIA 2015 banner but with the word ITALIA inserted in the figurative trade mark, as well as a post of 13 March advertising a WABBA ITALIA fitness course for 28 to 29 March / 11 to 12 April 2015. Google analytics statistics and graphs regarding visitors to wabbaitalia.com between 20.2.2015 and 22.3.2015, and well as unattributed print-outs (repeated in most cases) showing various Wabba Italia ‘Post Details’ dated 26.1.2014, 25.2.2014, 7.4.2014, 25.7.2014, 6.9.2014, 13.10.2014, 21.11.2014, an undated Facebook page screenshot for Wabba Italia Amateur Sports Team with a post dated 16.3.2015, and an ‘Overview’ with regard to five Wabba Italia posts published in March 2015, including the one dated 16.3.2015. WABBA advertising materials relating to events in Italy: on 20.4.2008, on 6.6.2009, 14.5.2011, in 2012 (WABBA World Championship, Padova, Italy), 4.5.2014, 24 to 25.5.2014, as well as a photograph of people with a banner stating ‘Campionati Italiani WABBA 2014’, an undated photograph of people in tracksuits with banners ‘ITALIEN’ and ‘W.A.B.B.A. ITALIA’. 27.3.2014 Italian National Olympic Committee acknowledgment of A.S.D. WABBA ITALIA as a ‘sports association without legal personality’, and a 2015 certificate of affiliation of A.S.D. WABBA ITALIA to the Italian National Educational Sporting Centre. Extracts from the WIPO Gazette dated 15.5.2014 stating that International Registration No 818675A held by WABBA WORLD ASBL (relied upon by the respondent in its observations) had not been the subject of a renewal and was expected to expire on 11.9.2013.
10 On 25.3.2015, the respondent filed a letter dated 15.6.1990, from Mr Piccoli, President of WABBA International, to Alla WABBA, Mr Hauck and Mr Neumer, stating that WABBA Germany is authorised to the unrestricted use of the WABBA logo and the written word and can use it in the name of its association. A copy of the 2010 trade mark transfer agreement was again filed.
11 By decision of 16.10.2015 (the ‘contested decision’), the Opposition Division rejected the as amended in its entirety on the grounds that the appellant’s general reference to the national legislation was insufficient to prove its content, both in relation to proving acquisition of rights to the signs on which the opposition is based and to showing that the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled. Precise information in that regard had not been provided, in particular information about the conditions for acquiring rights under Italian national law (for instance, the precise conditions for acquiring protection of a non-registered mark in terms of extent of use required, whether the mark needs to be reputed, or as to what suffices as a company name in order to benefit from the right to prohibit any unauthorized use of identical or similar subsequent marks). Nor was any information provided as to the scope of these rights. Moreover, an opponent must submit the applicable law in the original language, accompanied by a translation into the language of proceedings if the law is in another language, in accordance with the standard rules of substantiation. In all the circumstances, the appellant failed to prove its rights in relation to its claimed earlier rights pursuant to the national
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
6
law. Since this failure means that the cumulative conditions required by Article 8(4) EUTMR are not fulfilled, the opposition was rejected in its entirety.
Submissions and arguments of the parties
12 On 10.12.2015, the opponent filed a notice of appeal, duly followed by a state- ment of grounds. It requests that the Board annul the contested decision, uphold the opposition in its entirety and refuse the contested application, and award costs in its favour. Its arguments can be summarised as:
In the grounds of opposition, and in its observations made within the period to substantiate the opposition, the appellant had stated that the applicable law was the law of Italy, with its general principles, rules and provisions and in particular that such provisions were IT-IPC Articles 2.4 and 12.1 (a) and (b), and Civil Code Article 2571; The appellant was under no obligation to provide more information about the relevant national law, since the case-law determines that the Office must of its own motion and, by whatever are considered appropriate, obtain information in that respect. This power to verify the national law as indicated by the opponent is also noted in the Office’s Guidelines; In accordance with Article 83 EUTMR, the Office must take into account principles of procedural law generally recognised in the Member States. Rule 19(1) CMTIR makes no requirement that the original text of the rele- vant national law must be presented or that its content must be proven by the opponent (it must only give evidence of the acquisition, continued existence and scope of protection of the right relied upon). In Italy, judges may base decisions on well-known facts, and in this respect it must be recalled that an abstract summary of the Italian legal principles is contained in the Office Guidelines, and is thus a generally accessible source, as indeed is the internet, where all the legal provisions can be found. In all the circumstances, the Office must apply the principle that ‘Iura novit Curia’ (the judge knows the law); In all the circumstances, the reference to the national law was sufficiently specific. A huge amount of evidence was filed regarding the acquisition, continued existence and scope of protection of the rights relied upon, which prove that the appellant acquired the right many years before the EUTM application subject to opposition, the continued existence of such right, and its scope of protection. The respondent did not contest any of this, and in accordance with the relevant principle of Italian law, it must therefore be deemed as true and proven; Without prejudice to the above, the original Italian texts of the relevant legal provisions are enclosed, together with English translations, together with an explanation of their scope, and citations and summaries of relevant Italian case-law, by way of additional or supplementary information which the Board has the power to consider under Rule 50(1) CTMIR.
13 The respondent did not file any observations.
Reasons
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
7
14 The appeal is not well founded. The appellant failed to duly substantiate any of
its claimed earlier rights and accordingly the opposition must be dismissed.
15 Article 8(4) EUTMR provides that 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 pursuant to the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registra- tion 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.
16 Accordingly, Article 8(4) EUTMR lays down the following requirements:
The sign must be used in the course of trade; It must be of more than mere local significance; The right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the European Union trade mark; The sign must confer on its proprietor the right to prohibit the use of a sub-
sequent trade mark.
17 The conditions for the acquisition of the national earlier right are governed by national law (24.3.2009, T-318/06 - T-321/06, ‘General Optica’, EU:T:2009:77, § 34).
18 Pursuant to Rule 19(2) CTMIR the opponent has the duty to substantiate these rights in all its aspects and conditions. The substantiation requirements must in any case be fulfilled within the time limit under Rule 19(1), (2) CTMIR at the very latest (17.6.2008, T-420/03, ‘BoomerangTV’, EU:T:2008:203, § 75; 13.3.2005, R 911/2005-4, ‘DOPODOPO’, § 37).
19 The Board observes that the time limit under Rule 19(1), (2) CTMIR was set to the opponent until 26.3.2015 (communications from the Opposition Division dated 14.11.2014 and 4.2.2015). The opponent filed further submissions and evidence of use before the expiry of this time limit, as summarised in paragraph 9 above, repeating its earlier reference to the national law and adding reliance on two more provisions.
20 Article 76(1) EUTMR states that in opposition proceedings the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The onus is on the opponent to provide the Office with all the necessary evidence, which includes citation of the applicable national law and a coherent explanation of how this is to be interpreted and why it is fulfilled, in addition to any evidence of use of the sign, as the rights under Article 8(4) EUTMR are exclusively use-based and exclusively based on national law.
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
8
21 Although the appellant cited the four articles of Italian law upon which it relied, at no stage throughout the opposition proceedings did it provide particulars establishing the content of that law, nor did it provide the Office with particulars showing that it satisfies the necessary conditions, in accordance with the national law of which it sought application. In particular, it failed to provide the text of the relevant national legal provisions in addition to their reference. Instead, it merely asserted that the ownership and use in trade of ‘a prior known non-registered trade mark and/or of a prior company name’ (without specifying that this latter sign must also be known) give the proprietor the right to prohibit use of identical or similar signs and thus the right to oppose the EUTM application.
22 Moreover, in referring to the national law provisions relied upon, the appellant did not state, as is incorrectly submitted upon appeal, that the Italian law provi- sions relied upon were IT-IPC Articles 2.4 and 12.1 (a) and (b), and Civil Code Article 2571. Instead, the appellant originally stated that its earlier rights were based on ‘the Industrial Property Code (IT-IPC) and in particular art. 12 a) and b)’ (emphasis added) and subsequently adding reference to ‘other law provisions concerning non-registered trade marks: art. 2 par. 4 IT-IPC and art- 2571 Italian Civil Code concerning the prior use.’ The wording ‘in particular’, unlike the wording ‘namely’ does not serve to restrict the legal basis to any concrete provi- sion, but merely serves to list such a provision together with the rest of the provisions of the general code. Further, to the extent that concrete provisions were mentioned, although the grounds stated that ‘in this manner such law provisions give the proprietor of this prior known trade mark and company name the right of prohibition’, in fact no explanation was given as to the manner in which the law provisions were said to apply to the case at hand, i.e. what, under Italian law (as determined by statute, case-law and/or accepted legal doctrine) constitutes ‘prior known’ (i.e. in relation to what standard of knowledge and what relevant public), and indeed the wording used by the appellant is that while under paragraph (a) a non-registered trade mark must be ‘prior known’, but that this condition is not specified in relation to company names under paragraph (b). Nor is it explained how, if at all, a non-profit sporting association, which the Italian Olympic Committee acknowledgement confirms is a ‘sports association without legal personality’, can be deemed to be a company name under Italian law.
23 In all the circumstances, these submissions are insufficient to constitute proof of acquisition of the right to the signs relied upon under the relevant national law. As the contested decision correctly noted, the original text of the relevant provisions, together with a translation into the language of proceedings should also have been provided. Without such provision and explanation, the assertions with regard to the content thereof cannot be properly scrutinized by either the other party or the Office. The importance of this requirement is highlighted by the fact that the appellant itself misrepresented what in fact those provisions state (see below).
The obligation of the appellant to provide these particulars
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
9
24 The argument of the appellant that it was under no such obligation to provide such particulars because the Office must, of its own motion and by whatever means it considers appropriate, obtain information about the national law, cannot be accepted.
25 Firstly, in the case at hand, the appellant provided the Opposition Division within the stipulated time period neither with the particulars establishing the content of the national law it purported to rely on, nor with the particulars to show that it satisfied the necessary conditions under that law to enable it to prohibit the use of the contested EUTM. There can be no doubt that the burden of proof is on the party invoking Article 8(4) EUTMR in this regard (29.3.2011, C-96/09 P, ‘Bud’, EU:C:2011:189, § 188 to 190), and it is not for the Office to rifle through the evidence filed in support of the statement of grounds in order to decipher what those grounds are (in this respect, see 15.1.2013, R 736/2012-4, ‘MES-Cockpit’, § 15). Evidence cannot replace arguments but serves to support what has already been clearly articulated. In inter partes proceedings concerning European Union trade marks, this is particularly important given that the other party and its representative may well be entirely unfamiliar with the law of Italy. In order to ensure that their right to defence is respected, the case against them must be duly substantiated in a clear manner identifying the precise law relied upon, and setting out how the requisite legal conditions are indeed fulfilled.
26 Indeed, to hold that merely because provisions of the national law cited may be available online, and the appellant considers them to be well known facts, entirely misses the point. On one hand, it is important for the opponent to provide a copy of the precise legislation relied upon, in its original version and with a translation, because by doing so, the other party to the proceedings and the Office are assured that the relevant text has been correctly and honestly reproduced by way of grounds of opposition. On the other hand, the mere reference to a legislative provision alone, without any argument or explanation as to why the case at hand satisfies what has been determined under national law (e.g. by the national courts) as the requisite conditions, leaves the other party and the Office entirely in the dark as to how the opposition is purported to satisfy the requisite conditions. The role of the Office and of the EUTM applicant is not to make the opponent’s case for it, but rather to receive a full and sufficient statement as to what that case is, and examine it to assess if the assertions are correct or not.
27 Since these details were not provided as required by Article 8(4) EUTMR, in conjunction with Rule 19(2)(d) CTMIR, the contested decision was correct to reject the request for a declaration of invalidity as unsubstantiated under Rule 20(1) CTMIR.
28 No other conclusions are warranted on account of the case-law cited by the appellant, in particular the judgment of the Court of Justice (27.3.2014, C-530/12 P, ‘Mano’, EU:C:2014:186). The Court of Justice merely examined whether the competent Court or EUIPO should do no more than examine the documents submitted by the applicant in order to establish the content of the applicable national law or whether they may exercise a power of verification regarding the relevance of the law invoked, and answered this in favour of the
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
10
second. It stressed that it was only after the cancellation applicant (or, as applicable, the opponent) has fulfilled its substantiation requirements that the Board is entitled to verify the accuracy of the submitted information and to draw its own legal conclusions as concerns the content and correct interpretation of the national law (‘Mano’, § 39, 41, 44, 45). This merely means that the Board is not bound to consciously apply a national law incorrectly for the mere reason that the opponent submitted certain – possibly incorrect or one-sided – information and evidence. It does however not discharge the opponent from his burden of substantiating exactly what provision of national law is relied on, and how it would apply. The opponent should not be given the benefit of invoking a broad, unspecified range of national provisions which might be potentially applicable and then leave it to the Office to pick and choose the provisions which might best suit the opponent. This is not only stemming from the requirements regarding substantiation of earlier rights, but equally stemming from the obligation of the Office to keep strict neutrality between the parties. The considerations of the above-mentioned judgment can only be properly understood in light of this. It would equally affect the Office’s neutrality if it were to apply provisions in favour of an opponent which, to its better knowledge, do not exist. The qualification of national law as a ‘matter of law’ or a ‘matter of fact’ is not helpful for resolving the issues of the present appeal proceedings.
29 At the end of the day, the other issues raised by the parties are no longer relevant. As concerns the use made by the opponent, it seems that use in principle was not denied by the applicant but the exact amount and nature of use that would be sufficient to create a right in a non-registered mark cannot be assessed in the abstract and without knowing what threshold the relevant national law sets up.
30 Finally, for the avoidance of doubt, it is also clear that the evidence provided by the appellant does not even suffice to show that the appellant used in trade any of the claimed non-registered trade marks by the relevant date (i.e. the date of filing of the contested application, 9.7.2014). The appellant has been shown to have been incorporated in January 2014, and so any use of the signs before that date cannot have been by it. Further, the private agreement purporting to grant the amateur sporting association WABBA ITALIA the right to use the word and figurative trade marks relied upon in opposition is dated before the official date of incorporation of that association (17.1.2014 as opposed to 27.1.2014), and it is not possible to license trade marks (even assuming that the licensor – Mr Coselli – had any rights in relation to the claimed unregistered trade marks, which has not been proven either) to an association which has not yet been legally established. This casts doubts on the credibility of the appellant’s statements of facts as a whole, in particular in view of the fact that the applicant has shown that an organisation ‘WABBA’ pre-existed for many years, and that a trade mark not related to the opponent had pre-existed for many years until 2013, namely International Registration No 818675A (see point 9, last indent, above). Nor is it clear that the evidenced use of those signs before 2014 was by Mr Coselli, as opposed to, for example, the former World President of WABBA International, who also lived in Italy, or indeed by another third party. The copies of Facebook pages and viewing statistics contain no indication as to whether the relevant ‘views’ were from viewers based within Italy, or even
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
11
within the European Union, nor in any case can merely viewing a webpage, of which there are millions, and many reasons for arriving there be equated with knowledge of a sign or company name. This is all the more so when, as in the present case, the vast majority of the evidence post-dates the relevant date, there being no basis for extrapolating that those who viewed the posts on one day necessarily knew even of the existence of that webpage previously.
31 The documents showing the creation of a domain name in 2005 by Mr Coselli firstly do not prove that this domain name was known by the relevant public, and secondly the opponent is not Mr Coselli; the opponent did not yet exist in 2005 so it cannot have been the ‘owner’ of that domain. Finally, no explanation or evidence regarding the conditions for applying for and receiving the 2014 certificate of acknowledgement of the appellant by the Italian National Olympic Committee or the 2015 certificate of affiliation have been submitted, and accordingly neither document can equated prima facie with any relevant knowledge standard of the claimed unregistered signs amongst the relevant public.
Late evidence purporting to substantiate the earlier rights
32 Under the third subparagraph of Rule 50(1) CTMIR, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time-limits set in or specified by the Opposition Division, unless the Board considers that additional or supplementary facts and evidence must be taken into account pursuant to Article 76(2) EUTMR (3.10.2013, C-120/12 P, ‘Proti Snack’, EU:C:2013:638, § 31).
33 When exercising its discretion under Article 76(2) EUTMR, the Board is required to examine, first, whether the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it or, second, that the stage of the proceedings at which that late submission takes place or, third, the circumstances surrounding it do not argue against such matters being taken into account: when one of those criteria alone is sufficient to establish that it must not take into account the evidence submitted late at issue, it is not necessary to examine the other criteria (3.10.2013, C-120/12 P, ‘Proti Snack’, EU:C:2013:638, § 44).
34 In the case at hand, the material which has been produced late is, on the face of it, not likely to be genuinely relevant to the outcome of the opposition brought before it because it fails to clarify precisely what extent of use, and what degree of knowledge by the relevant public, constitutes ‘already known’ in the sense of the cited legal provisions in Italy. Although the provided case-law summaries indicate that such earlier non-registered trade marks must be reputed amongst the relevant public, the evidence filed contains no indication of how reputation or relevant public is to be assessed under Italian law in relation to these provisions. Additionally, the late evidence does not explain or cite any legal provision or authority which clarifies that in Italy the name of a non-profit amateur sporting association, which has been stated to be without legal personality may constitute a company name under this Italian legislation.
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
12
Finally, in light of the manifest insufficiency of the evidence of use (as explained above in paragraphs 29 and 30 above), the late evidence would make no difference to the finding that the earlier rights have not been substantiated, but instead serve to confirm those findings.
35 Indeed, the appellant’s summary of the relevant legal provisions with regards to Article 12 (a) and (b) IT-IPC can be seen, when compared to the full original text as supplied by way of late evidence, to be materially inaccurate. The appellant asserted that under this legal provision ‘a sign cannot be registered as a trademark when it is identical or similar to: a) a prior known non-registered trademark and/ or b) a company name used in economic activities’, whereas in reality this provision concerns a) a sign already known as a trade mark, and/or b) a sign already known as a company name, i.e. the requirement of being ‘already known’ applies not only to trade marks but also to company names, and the failure to state this in regard to Article 12 (b) IT-IPC is a material omission which misrepresents that legal provision, and which makes it clear that all the supposed earlier rights upon which the opposition is based must be ‘already known’. In light of the insufficiency of the evidence, as explained above, this serves to reinforce that none of the earlier rights upon which the opposition is based has been substantiated (in the sense that acquisition has not been proven).
36 For these reasons alone, the evidence filed late is not relevant for the outcome of the opposition, and the Board refuses to exercise its discretion to allow its admission.
37 This criterion alone suffices to reject the late evidence. However, the Board observes that an additional criteria, itself also sufficient to reject this evidence, is also fulfilled: the circumstances surrounding the submission of the late evidence argue against such matters being taken into account, given that the appellant’s submissions regarding the content of the applicable national law, coupled with its failure to submit the full original copy of the provisions relied upon, served to materially misrepresent the true content of those provisions (see paragraph 35 above). The appellant had the possibility of providing the objective and official basis upon which it relied to substantiate its claimed earlier rights, yet it chose not to do so, in a situation where the misrepresentation was clearly stood to favour its case, and to induce the other party to believe that the opposition might be stronger than it in fact was.
38 On top of that, the Board adds that the final criteria, again sufficient in itself to refuse the late evidence, is also fulfilled: namely the stage of the proceedings at which it takes place argues against such matters being taken into account. The entire rationale behind the substantiation requirement under Rule 19(2)(d), 19(1) and 20(1) CTMIR is to ensure that, at the outset of the proceedings, not only the Office but also the other party is able to determine exactly on which earlier rights the opposition is well founded. Legally, the provisions relating to substantiation of unregistered rights upon which oppositions are based should be interpreted by analogy to the proof of the existence of a registered trade mark (Rule 19(2)(a)(ii) CTMIR) and accordingly the opponent must provide the particulars of the national law in the form of a copy of an official document, which will necessarily be written in the original language. This is precisely to prevent the kind of misrepresentation as to the content of those provisions as has
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
13
occurred in the case at hand. To accept substantiation by way of late evidence produced only upon appeal would be to subject the EUTM applicant to a long and potentially costly delay, with the corresponding legal and business uncertainties. It would also risk the other party believing during the intervening period that the misrepresented legal requirements, which would appear to slightly favour the strength of the opposition, are a true indication of the law in Italy. Moreover, no attempt, convincing or otherwise, has been made by the appellant to explain its delay in this respect, and accordingly the delay is unjustified.
Result
39 The appeal shall be dismissed.
Costs
40 As the appellant is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs incurred by the respondent in the opposition and appeal proceedings.
Fixing of costs
41 Pursuant to Article 85(6) EUTMR and Rule 94(7)(d)(ii), (vi) CTMIR, the amount of the representation costs to be paid by the appellant to the respondent is fixed at EUR 550 with respect to the appeal proceedings and at EUR 300 for the opposition proceedings. The total amount of the costs to be paid by the appellant to the respondent is EUR 850.
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.
14
Order
On those grounds,
THE BOARD
hereby:
1. Dismisses the appeal; 2. Orders the appellant to bear the costs incurred by the respondent in the
opposition and appeal proceedings; 3. Fixes the amount of costs to be reimbursed by the appellant to the
respondent for the opposition and appeal proceedings at EUR 850.
Signed
D. Schennen
Signed
L. Marijnissen
Registrar:
Signed
H.Dijkema
Signed
C. Bartos
09/12/2016, R 2454/2015-4, W.A.B.B.A World World Amateur Body Building Association / W.A.B.B.A.