Decision on Opposition No B 1 844 896 page: 2 of 4
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
The ground for the present opposition was Article 8(4) EUTMR. The sole earlier right
invoked in this opposition is an earlier non-registered trade mark ‘ONE LOVE’ (word),
well-known in the European Union and used in the course of trade of more than mere
However, non-registered trade marks (whether well-known or not) are not protected
at European Union level. Contrary to the Community Design Regulation which
acknowledges the category of ‘unregistered Community design’, the EUTMR does
not establish the category of unregistered European Union trade marks. According to
Article 6 EUTMR, an EU trade mark shall be obtained by registration.
As such, the opponent did not, and could not, substantiate such a non-existing right.
A ‘European Union non-registered trade mark’ is not an eligible basis for opposition.
However, even if the Opposition Division would interpret the ‘non-registered trade
mark, well-known in the European Union’ claimed by the opponent as referring to
non-registered trade mark in individual Member States of the European Union,
‘unregistered marks’ are only defined by the national trade mark legislations of those
Member States which recognize them. There are several Member States that do not
recognize them at all: Belgium, Bulgaria, Cyprus, Estonia, France, Latvia, Lithuania,
Poland, Romania and Spain.
Nonetheless, in order to comply with the condition set out by Article 8(4) EUTMR that
pursuant to the law of the Member State governing that sign, the sign must confer on
its proprietor the right to prohibit the use of a subsequent trade mark, it is also
required that in the actual case under consideration the conditions for obtaining such
injunctive relief, if the mark that is the subject of the opposed EUTM application were
used in the territory in question, are present. This can only be answered according to
each respective national law and in light of the evidence presented.
According to Article 95(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 (in the version in force at the time when the
adversarial part of the proceedings started), 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.