ZHAOFFICE | Decision 2685215

Date Published: Sep 22, 2017

OPPOSITION No B 2 685 215

ZHAOffice SPRL, rue de Bedauwe 13, 5030 Gembloux, Belgium (opponent), represented by ZHAOffice SPRL, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional representative)

a g a i n s t

Michael Schmid, Wilhelmstrasse 61, 90766 Fürth, Germany (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 685 215 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 14 984 561, namely against all the services in Classes 41, 42 and 45. The opposition is based on non-registered earlier rights in several countries. The opponent invoked Article 8(4) EUTMR in relation to:

• the trade name ZHAOFFICE (No 1) and the company name ZHAOFFICE (No 2) used in the course of trade in Belgium,
• the trade name ZHAOFFICE (No 3) used in the course of trade in France,
• the trade name ZHAOFFICE (No 4) used in the course of trade in Luxembourg,
• the trade name ZHAOFFICE (No 5) used in the course of trade in the Netherlands,
• the trade name ZHAOFFICE (No 6) used in the course of trade in the United Kingdom,
• the trade name ZHAOFFICE (No 7) used in the course of trade in Germany.

ZHAOFFICE	ZHAOFFICE
Earlier unregistered rights	Contested sign

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.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

Earlier rights in the Netherlands, UK and Germany (Nos 5, 6 and 7)

It should be noted that the opponent invoked trade name rights for the Netherlands, UK and Germany in the opposition notice (rights No 5, 6 and 7). However, in its observations filed on 23/10/2016 the opponent indicates that it has limited the basis of the opposition to the ‘trade names in Belgium, France and Luxembourg’.

For the sake of completeness, the Opposition Division points out that the opponent did not file any piece of evidence regarding these rights neither in the relevant time period for substantiation nor afterwards.

Therefore, the opposition cannot succeed as far as is based on the aforementioned earlier rights.

Earlier rights in Belgium (trade name and company name) (Nos 1 and 2)

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence. It may also be particularly useful to submit evidence of relevant case-law and/or jurisprudence interpreting the law invoked.

The Office must effectively assess the applicability of the ground for refusal invoked. In order to ensure the correct application of the law invoked, the Office has the power to verify, by whatever means it deems appropriate, the content, the conditions governing the application and the scope of the provisions of the applicable law relied upon by the opponent (judgment of 27/03/2014, C-530/12 P, Mano, EU:C:2014:186, § 44-46).

This power of verification is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (decision of 30/06/2014, R 2256/2013-2, ENERGY, § 26).

As regards national law, the opponent must provide evidence regarding the applicable law and evidence regarding the fulfilment of the conditions.

a) In relation to the provisions of the applicable law, evidence 

• on the conditions governing acquisition of rights (whether there is a requirement of use and, if so, the standard of use required; whether there is a registration requirement, etc.); and

• on the scope of protection of the right (whether it confers the right of prohibition of use; the injury against which protection is provided, e.g. likelihood of confusion, misrepresentation, unfair advantage, evocation).

b) In relation to the particulars proving fulfilment of the conditions, evidence

• of acquisition (entitlement; earlier acquisition; whether it is in force; evidence of use if use-based; evidence of registration if registration-based, etc.); and

• of the scope of protection (facts, evidence and/or arguments that the requirements laid down by the applicable law for a prohibition of use are met, e.g. the nature of the goods, services or business activity protected by the earlier right and their relation with the contested goods or services; a cogent argument showing that there is a risk of injury).

First, as regards the provisions of the applicable law, the opponent must provide the reference to and content of the applicable law invoked. The opponent must provide the 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 in its submission or by highlighting it in another publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision.

Furthermore, 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. However, a mere translation of the applicable law does not itself constitute proof and cannot substitute the original; therefore, the translation alone is not considered sufficient to prove the law invoked.

Where the opponent seeks to rely on national case-law or jurisprudence interpreting the law invoked, it must provide the relevant information in sufficient detail (e.g. a copy of the decision invoked or excerpts from the legal literature) and not merely by reference to a publication. The translation rules apply equally to that evidence.

The opponent filed together with its arguments to support the opposition on 23/10/2016, and therefore within the extended deadline for further facts and evidence, the following evidence in relation to the applicable law in Belgium:

• Art. 2.19 (3) of the Benelux Convention on Intellectual Property [Obligation the register, filed as Exhibit B1- in English language]
• Art. 1382 of the Belgian Civil Code, filed as Exhibit B 2 in French language and translated into the language of the proceedings in the observations;
• Arts. VI. 98, 104 and XVII.1 of the Code of Economic Law, filed as Exhibits B 3, B 4 and B 5; all in French language with translations into the language of the proceedings in the observations;
• Extract of an article [De spanning tussen de bescherming van een handelsnaam en een identiek of soortgelijk merk in de tijd; The tension between the protection of a trade name and an identical or similar trade mark in time] filed in Dutch language and the translation of some of the paragraphs of the article filed as Exhibit B 6;
• Two decisions of the Court of Appeal of Brussels, dated September 18, 2002 and April 25, 2000 relating to the right to oppose a trade mark on the basis of an earlier trade name and the requirements, both filed in Dutch along with a translation of the relevant paragraphs filed as Exhibits B 7 and B 8;
• Art. 2.4, f 1 and Art. 2.28 par. 3 b of the Benelux Convention on Intellectual Property, relating to the right of the owner of an earlier trade name to obtain an invalidation of a trademark filed in bad faith, filed in English as Exhibit B 9;
• Decision of the Court of Appeal of Liège, dated May 8, 2008, filed in French, with a translation of the relevant paragraphs, filed as Exhibit B 10.

As explained above, the relevant provisions of the Benelux Convention on Intellectual Property have been only filed in English. Official languages in Belgium are Dutch, German and French, but not English. Even referring to the Benelux countries together, English is not an official language. The English version of the Convention on Intellectual Property available over the website of the BOIP (Benelux Office of Intellectual Property) points clearly out that:

“This is the text of the BCIP as lastly amended by the Protocol of 22.07.2010. Entry in force 01.10.2013. The official text of the BCIP is in French and in Dutch. This English translation is provided by BOIP for information purposes. BOIP is not responsible for typing or translation errors”. [Emphasis added]

As neither in the observations of 23/10/2016 nor in the later submissions the original version of the aforesaid text has been provided, the opponent failed to submit relevant parts of the law in its original version.

The Opposition Division acknowledges that the filed evidence, namely the provisions from the Belgian Civil Code, the Code of economic law as well as the extract of the article and the Court Decisions are correctly filed in the original language accompanied by the relevant translations. However, these provisions that have been filed correctly are not sufficient to show the conditions governing acquisition of rights even considering that pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. The said articles simply provide that damages caused through a party´s fault need to be repaired, they further enumerate what are misleading and thus forbidden market practices and, finally, they set out that the president of the commercial court is responsible for establishing the existence and ordering the subsequent cessation of acts which are in violation of the code. In sum, they do not allow the Office to effectively assess the applicability in the case at hand of the ground for refusal invoked.  

As the requirements have to be fulfilled cumulative and one has not been met, a further examination of the evidence provided is not necessary.

Therefore, the opposition cannot succeed as far as it is based on the earlier rights in Belgium.

Earlier right in Luxembourg (No 4)

In its submissions of 23/10/2016 the opponent refers in relation to the trade name in Luxembourg to the aforementioned Art. 2.19 (3) of the Benelux Convention on Intellectual Property and refers as well to the very same Exhibit B1.

Furthermore, it filed Art. 1382 of the Luxembourg Civil Code in French with the translation into the language of the proceedings as well as Articles 14 and 23 of the specific Law of 30 July 2002 regulating certain commercial practices sanctioning unfair competition and transforming directive 97/55/CE of European Parliament and of the Council amending Directive 84, as well in French and translated into the language of the proceedings.

Therefore, also in relation to the earlier right in Luxembourg, the same reasoning  regarding to applicable law as already explained for the earlier right in Belgium applies.

As the text of the relevant provision of the Benelux Convention on Intellectual Property has only been filed in English language, what is not – as shown above – the original language of the text and, neither in the submissions nor in further Exhibits the original version of the text has been provided, the opponent fails to provide the applicable law.

The Opposition Division acknowledges that the evidence filed, namely the provisions from the Luxembourg Civil Code as well as the provisions of the unfair competition law are correctly filed in the original language with the translations. However, these provisions that have been filed correctly are not sufficient to show the relevant conditions governing acquisition of rights. The content of the said provisions largely corresponds to the invoked provisions of the Belgian Civil Code and the Code of economic law. In sum, as explained above, they do not allow the Office to effectively assess the applicability of the ground for refusal invoked.  

As the requirements have to be fulfilled cumulative and one has not been met, a further examination of the evidence provided is not necessary.

Therefore, the opposition cannot succeed as far as it is based on a trade name right in Luxembourg.

Earlier right in France (No 3)

According to the opposition notice, the opponent based its opposition on the trade name “ZHAOFFICE” in France.

The opponent filed within the relevant substantiation deadline the following documents relating to the applicable law:

• Article L. 711-4 of the French Industrial Property Code in French language, filed as Exhibit B 11; the translation of L. 711-4 Letter b is included in the opponent’s submissions and reads as follows:

“A sign may not be adopted as trade mark if it interferes with prior rights, in particular:

b) the trade name or corporate name, if there is a likelihood of confusion on the part of the public” [Emphasis added]

• Article L. 714-3 of the French Intellectual Property Code, filed in French as Exhibit B 12 and translated into the language of proceedings;
• Decision T-453/11 of the General Court filed in the language of the proceeding (English) as Exhibit B 13; the quoted paragraphs state - referring to L.714-3 and L. 711-3 of the French Intellectual Property Code - that business names or corporate names can be valid earlier rights under French law.

However, the relevant provisions in the original version, namely in French language, read as follow:

“b) A une dénomination ou raison sociale, s´il existe un risque de confusion dans l´esprit du public ;

c) A un nom commercial ou à une enseigne connus sur l´ensemble du territoire national, s´il existe un risque de confusion dans l´esprit du public ;

The opponent´s translation of Article L. 711-4 Letter b into the language of the proceedings, namely “A une dénomination ou raison sociale” into “the trade name or corporate name” is incorrect. The paragraphs of the Court decision referred to translate the term “dénomination” correctly as “a business name or corporate name”.

Therefore, the opponent failed to provide the provisions of the applicable law (in the original language and duly accompanied by a translation into the language of the proceedings) governing the acquisition and scope of protection of the earlier right invoked, namely a trade name used in the course of trade in France.

As the opponent invoked for France a trade name, the correct provision should have been Art. L. 714-3 of the French Intellectual Property Code but Subparagraph letter c. (which provision, although provided in the original language, was not translated into the language of the proceedings).

Even if the opponent’s claims could be constructed in the sense that the earlier right actually invoked in the notice of opposition was a business/corporate name (quod non, as from the evidence on file it is evident that these are two different rights), the opposition would still not be successful, for the reasons set out below:

According to the Office’s Guidelines, a trade name is not necessarily identical with the corporate name or commercial name entered in a commercial or similar register as trade names can cover other non-registered names such as a sign which identifies and distinguishes a certain establishment.

In the present case, the opponent did not provide any information or evidence concerning the conditions governing acquisition of a right to a business/corporate name (whether there is a requirement of use and, if so, the standard of use required; whether there is a registration requirement, etc.)

Consequently, the opposition must be rejected as unfounded also as far as earlier rights invoked under French law are concerned.

Given that the opponent could not show for any of the earlier rights claimed all of the necessary requirements of Article 8(4) EUTMR, the opposition must be rejected as unfounded for all of them.

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

Denitza STOYANOVA-VALCHANOVA

Claudia MARTINI

Richard BIANCHI

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.