Decision on Opposition No B 2 802 471 page: 9 of 13
Class 16: Printed matter; photographs; artists' materials; paint brushes;
typewriters; instructional and teaching material (except apparatus).
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.
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 OHIM 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
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.
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.
In the present case, the opponent provided only information on the legal protection
granted to the type of trade sign invoked by the opponent, namely non-registered
trade mark, for the United Kingdom.
No such information was provided by the opponent in regards to Austria, France,
Germany, Italy, Spain and Portugal.