Decision on Opposition No B 2 633 025 page: 4 of 5
a) Prior use in the course of trade of more than mere local significance
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a European Union trade mark, irrespective of the requirements to be
met under national law in order to acquire exclusive rights. Furthermore, such use
must indicate that the sign in question is of more than mere local significance.
It must be recalled that the object of the condition laid down in Article 8(4) EUTMR
relating to use in the course of trade of a sign of more than mere local significance is
to limit conflicts between signs by precluding an earlier right that is not sufficiently
definite — that is to say, important and significant in the course of trade — from
preventing registration of a new European Union trade mark. A right of opposition of
that kind must be reserved for signs with a real and actual presence on their relevant
market. To be capable of preventing registration of a new sign, the sign relied on in
opposition must actually be used in a sufficiently significant manner in the course of
trade, and its geographical extent must not be merely local, which implies, where the
territory in which that sign is protected may be regarded as other than local, that the
sign must be used in a substantial part of that territory. In order to ascertain whether
that is the case, account must be taken of the duration and intensity of the use of the
sign as a distinctive element for its addressees, namely purchasers and consumers
as well as suppliers and competitors. In that regard, the use made of the sign in
advertising and commercial correspondence is of particular relevance. In addition,
the condition relating to use in the course of trade must be assessed separately for
each of the territories in which the right relied on in support of the opposition is
protected. Finally, use of the sign in the course of trade must be shown to have
occurred before the date of the application for registration of the European Union
trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and
In the present case, the contested trade mark was filed on 25/09/2015. Therefore,
the opponent was required to prove that the two trade names on which the
opposition is based were used in the course of trade of more than local significance
in Romania and Hungary prior to that date. The evidence must also show that the
opponent’s trade names have been used in the course of trade for goods and
services, business activities in connection with Classes 3, 5 and 35.
On 10/12/2016 the opponent filed the following evidence:
Screenshots showing samples of the applicant’s packaging: these samples are
clearly irrelevant for showing use of the opponent’s signs.
Screenshots showing samples of the opponent’s products/packaging: the
screenshots were printed on 09/12/2016. Therefore, they cannot show use of
the two trade names prior to 25/09/2015 (the filing date of the contested sign).
Three pages with contact information show the copyright sign and the year
2015. However, this indication is not conclusive proof that the entire content of
the screenshots were accessible before 25/09/2015.
In any case, even if the samples of the opponent’s packaging were taken into
account to prove that certain goods were offered by the opponent, the opponent
failed to provide any evidence that it used the two trade names in a sufficiently
significant manner in the course of trade. No evidence, such as invoices and sales
figures, were filed to show the length, intensity and geographical spread of use.