CANCELLATION No 16 202 C (INVALIDITY)

Tart Optical Enterprises LLC, 23679 Calabasas Road #753 Calabasas, Los Angeles California, United States of America (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20, Malmö, Sweden (professional representative)

a g a i n s t

TVR OPT Co., Ltd., 7F.-1, No. 98, Sec. 4, Xinyi Rd., Da-An Dist., Taipei City 10682, Taiwan (EUTM proprietor), represented by 2K Patentanwälte Blasberg, Kewitz & Reichel, Partnerschaft mbB, Schumannstrasse 27, 60325 Frankfurt am Main, Germany (professional representative).

On 10/05/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 11 215 721 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 9: Spectacle glasses; spectacle frames; sunglasses; correcting lenses [optics]; optical lenses; contact lenses.

Class 18: Leather bags; leather wallets; card wallets; handbags; briefcases; travel bags; umbrellas; suitcases.

Class 25: Clothing; hats; shoes; socks; scarves; gloves; ties.

The application is based on the non-registered trade mark ‘ARNEL’ used in the course of trade in Austria; Finland; Greece; Italy; Sweden; EUIPO; France; United Kingdom; the Netherlands; Spain and Germany for eyewear and eyewear accessories. The applicant invoked Article 60(1)(c) EUTMR in relation to Article 8(4) EUTMR.

The applicant also invoked bad faith under Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM proprietor was acting in bad faith when filing the application for the contested EUTM.

The applicant explains that it is a manufacturer and distributor of eyewear and eyewear accessories. The company is based in California (USA) and has customers worldwide. It points out that the company has become well established in the business throughout the course of 69 years in the industry.

Furthermore, the applicant states that the trade mark ‘ARNEL’ is one of its prime brands and it had then been in use for eyewear and eyewear accessories since 1948 and has continuously been used for such products ever since. It is used primarily in Austria, Germany, Greece, France, Spain and the UK. It considers that the contested mark is partly identical with the earlier trade mark ‘ARNEL’ and the goods for which both marks are protected are very similar (contested goods in Class 9) or related (contested goods in Classes 18 and 25).

The applicant further states that China Vision Co., Ltd. (previous owner of the contested mark) is a Taiwanese corporation established in 2007 whose CEO and owner is Ms Yao Hsuan Wang. The applicant explains that it first met Ms. Wang in 2011 when she was representing the Taiwanese company Hot Ice Optical Company. Said company pursued the applicant for the manufacture, advertising and promotion of the applicant’s eyewear products.

As a result of this, both companies signed a licence agreement in 2011. Said licence agreement was assigned to the Taiwanese company Tart Optical Asia Co. Ltd. in 2011 whose representative was again Ms Yao Hsuan Wang. Said company subsequently changed its name into TVR OPT Co., Ltd, the current EUTM proprietor. As a result of numerous breaches of contract, the applicant terminated the License agreement with its licensee Tart Optical Asia Co. Ltd (the predecessor Hot Ice Optical Company) in December of 2012.

The applicant adds that during the time the Licence agreement was still in force, the representative of the licensee Ms Yao Hsuan Wang secretly had China Vision Co., Ltd. filing the application for the EUTM on 26/09/2012. The applicant argues that it did not know that the representative of its licensee was the same as the company which originally filed the contested mark. In 2017, there was a transfer of the mark from China Vision Co., Ltd. to the current owner.

According to the applicant, if China Vision (previous owner of the contested mark) had not obtained secret knowledge from its representative about the applicant’s business and its trade marks, the EUTM application would never have been filed.

In light of the above, the applicant argues that it is evident that the previous owner of the contested mark, at the time of filing of the EUTM application, knew about the applicant’s use of ARNEL and that the filing took place in order to evade contractual commitments and to gain profit from an unauthorized use of applicant’s trade mark. This conduct is far from compatible with accepted principals of ethical behaviour and honest commercial and business practices.

On the other hand, the applicant is the proprietor of the non-registered word mark ‘ARNEL’ used for eyewear products of more than local significance prior to 2012. The EUTM is confusingly similar to the earlier ARNEL in respect of all registered goods and, according to, inter alia, national Greek trade mark law (and probably also according to national trade mark law in other jurisdictions within the EU) the right ‘ARNEL’ confers on the applicant the right to prohibit use of the EUTM.

In support of its observations, the applicant filed the following evidence:

• Appendix 1: An extract from the US Patent and Trade Mark Office showing the registration details of the trade mark ARNEL filed in 2009 and registered in 2010 and owned by the applicant.

• Appendix 2: A distribution agreement between the applicant and a distributor in Greece in 2011 for the sale of, among other brands, ARNEL frames.

• Appendix 3: An extract showing the business details of the company China Vision Co, Ltd. whose CEO is Ms. Yao Hsuan Wang. It started its activity in 2007 in Taiwan. The report date is 2015.

• Appendix 4: An extract showing a licence agreement signed between the applicant and the Taiwanese Hot Ice Optical Company in 2011 to sell, among others, ARNEL frames.

• Appendixes 5-6: Extracts showing the business details of the EUTM proprietor in Taiwan. The former business name was Tart Optical Asia Co. Ltd.

• Appendix 7: A bill statement dated 2012 showing a breakdown of invoices signed between the applicant and Ms. Yao Hsuan Wang on behalf of Tart Optical Asia Co. Ltd.

• Appendix 8: A letter issued by the applicant and sent to its licensee in July of 2012 to the attention of Ms. Yao Hsuan Wang informing about the termination of the contract. One of the clauses requests the licensee to cease all use of the trade marks.

• Appendix 9: A copy of a company investigation report that had been carried out in connection with a suspected infringement of the ARNEL trade mark in USA. The CEO is Ms Lin who, according to the applicant, is Ms Wang’s husband.

• Appendix 10: A Writ of complaint from the applicant before the District Court of California against several defendants, among others, Ms. Yao Hsuan Wang.

On 13/04/2018 and 08/06/2018 the applicant filed further evidence. Before proceeding to list the evidence of use, it is noted that the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties.

The Cancellation Division accepts this request insofar as it relates to part of the evidence (specifically the sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already in the public domain (including available to the public, either in mass media or on the websites of the applicant).

The evidence consists on the following:

• Appendix 11: An agreement signed between the applicant, the company Tart Optical Asia Co. Ltd and the attorneys in 2012 for a Tart trade mark infringement case.

• Appendix 12: An order from the United States District Court of California in 2017. The applicant states that it acquired all trade mark rights of Tartal Optical Inc. (previous owner of the earlier trade mark ‘ARNEL’).

• Appendix 13: business cards of Mr Arthur Lin. According to the applicant, it is the same person as Mr Wei Cheng Lin, i.e. Ms Wang’s husband and the present CEO of TVR. The business card was received by Tart Optical shortly after it entered into the Licence agreement with Hot Ice on May 10, 2011.

• Appendix 14: a bank royalty wire. According to the applicant, it was sent from Mr Wei Cheng Lin, of Tart Optical Asia, (Hot Ice’s successor-in-interest) to Tart Optical Enterprises, evidencing the payment of royalties to Tart Optical Enterprises for the use of Tart Optical Enterprises trade marks.

• Appendix 15: undated website extracts depicting various ARNEL spectacles frames.

• Appendixes 16-24: copies of wire transfers and invoices dated between 2012 and 2017 in relation to eyewear frames goods in various EU countries (Austria, France, Germany, Greece, Spain and the United Kingdom).

• Appendixes 25-39: credit card confirmations from sales of ARNEL frames in Germany, UK, France, Spain, Greece, Croatia and Switzerland.

• Appendix 40: extracts from the applicant’s promotion of, inter alia, ARNEL frames during the Silmo tradeshow in Paris 2013.

The EUTM proprietor argues that Ms. Yao Hsuan Wang was not the legal representative of China Vision Co., Ltd. (China Vision) at the time when the EUTM was filed. It became the legal representative in 2013. Consequently, Ms Yao Hsuan Wang had nothing to do with the filing of the EUTM and the requirement of knowledge of the applicant’s trade mark ‘ARNEL’ by the proprietor is not proven.

The EUTM proprietor explains that the Taiwanese company Hot Ice Optical Company discovered that the applicant and Tart Optical Enterprises Inc. (New York) are two completely different companies and have no relationship with each other. As a result of that, and due to a lack of trust, it terminated its business relationship with the applicant.

The EUTM proprietor is an independent and sound company that spends a great deal of time and money investing and promoting brands around the world. It found out that the applicant used unauthorised movie stills on its websites while denying that it used them to the applicant. The proprietor explains that the trade mark ARNEL was originally established by Tart Optical Enterprises Inc. (New York) which is no longer in business and has stopped using ARNEL for a long time. Consequently, the proprietor considers that if there is any reputation for the term ARNEL, this has been established by another company a long time before the invalidity applicant had established its company and had filed its trade mark. The invalidity applicant itself pretends to be the alleged successor of Tart Optical Enterprises Inc. (New York), but, in fact, it uses the trade mark ‘ARNEL’ without proof of a legal successor.

In support of its observations, the EUTM proprietor filed the following evidence:

• Appendix 1: Certificates issued by the Taipei City Government in 2017 of the corporation with its English translation, showing the person responsible of the company China Vision. In one of the extract Ms. Yao Hsuan Wang appears as Chairman from March 2013.

• Appendix 2: Notification of entry in the EUIPO’s Register on 02/10/2017 noting the transfer of the ownership for the contested EUTM from China Vision to the current proprietor. Certificate of an Account Balance from the Bank of Taiwan. According to the proprietor, it regularly pays China Vision Co., Ltd. for the purchase of the EU trade mark ‘ARNEL’.

• Appendix 3: Extracts from Optometrist Attic, Gig Lamps, Pinterest, Wanelo, Ebay, Worthpoint, cometesevilla.com, solakzade, showing ARNEL eyeglasses. The products are shown in JY, Euros and US dollars. Some of the celebrities appear wearing the glasses.

• Appendix 4: Extract issued by the NYS Department of State in 2017 showing that Tart Optical Enterprises Inc. was created in 1966 but it is inactive. Extract from the Secretary of State, State of California dated 2009 showing the business details of the applicant Tart Optical Enterprises LLC.

• Appendix 5: Various extracts from several Internet pages showing negative reviews of the applicant’s company and products.

• Appendix 6: Extract from Vision Monday in 2008 informing about the founder of Tart.

• Appendix 7: Letter addressed to the applicant in 2013 in which Tart Optical Asia Co, Ltd. requests an economic compensation from the applicant. The contested mark is not mentioned. It includes attachments in relation to the trade mark TART.

• Appendix 8: Exchange of emails between Tart Optical and Hot Ice Taipei in 2011. It encloses a declaration made by Hot Ice in 2013 in which it explains the business relationship with the applicant since 2011 for the manufacture and marketing of the products in Asia. The contested mark is not mentioned but the trade mark TART.

• Appendix 9: Extracts from the Internet page of the proprietor www.tvropt.com showing the eyewear, among which, ARNEL is shown. The contested mark together with TVR ® is displayed.

• Appendix 10: Letter sent from TVR Opt to Tart Optical in 2016 to remove a post from Facebook.

• Appendix 11: Extract from Pinterest in 2010 showing a picture of James Dean and Johnny Depp wearing glasses.

• Appendix 12: Emails dated 2013 and 2016.

• Appendix 13: Exchange of emails dated 2012 between Richard Tart (the founder’s nephew) and Coco from Hot Ice Company.

• Appendix 14: Extract from the Internet page of Tart Optical.

In reply, the applicant states that the proprietor’s allegations are irrelevant and the evidence is presented in a chaotic manner.

It argues that the proprietor’s writ of reply clearly indicate that China Vision did not file the application in order to make genuine use of the EUTM, but for the sole purpose of assigning the EUTM. It states that from TVR’s own writ of reply, it is also clear that the initial arrangement included the agreement between China Vision and TVR (managed by Ms Wang’s husband), whereby the EUTM was predestined to be assigned. The assignment will be to Tart Optical Asia.

It considers that TVR and Hot Ice Optical, controlled by Ms. Yao Hsuan Wang and husband Mr. Wei Cheng Lin, acted to the contrary and used China Vision to file the application for the EUTM to take control over Tart Optical’s trade mark rights. China Vision had become the registered holder of the EUTM and the manager and owner of Hot Ice, and Tart Optical Asia, Co., Ltd., Ms. Yao Hsuan Wang, had taken control over China Vision in February 2013.

In its final observations, the proprietor reiterates its previous arguments and points out that the applicant’s assertions are not supported by concrete evidence. There is no evidence of using the ARNEL mark in the EU. It also insists on the fact that the applicant did not inherit the rights of the previous founder of Tartal Optical Enterprises Inc. and it is a fake company.

Preliminary remark

Admissibility – The identification of the applicant

The proprietor states that the identity of the applicant for cancellation cannot be derived undoubtedly from the request. There is no address or country mentioned in the request, which allows to identify the applicant for cancellation.

However, the application for invalidity clearly includes the contact details of the applicant for invalidity where the applicant’s name and address are identified. Therefore the proprietor’s claim is rejected as unfounded.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Assessment of bad faith

The previous relationship between the parties and the EUTM proprietor’s awareness of the applicant’s earlier mark

Bad faith might be applicable when the parties involved have, or have had, any kind of relationship, such as (pre-/post-) contractual relationships, giving rise to mutual obligations and a duty of fair play in relation to the legitimate interests and expectations of the other party (13/11/2007, R 336/2007‑2, CLAIRE FISHER / CLAIRE FISHER, § 24).

There is bad faith when the EUTM proprietor intends through registration to lay its hands on the trade mark of a third party with whom it had contractual or pre-contractual relations or any kind of relationship where good faith applies and imposes on the EUTM proprietor the duty of fair play in relation to the legitimate interests and expectations of the other party (13/11/2007, R 336/2007‑2, CLAIRE FISHER / CLAIRE FISHER, § 24).

The essential question is, therefore, whether the relationship between the parties created a close enough link to suggest that it is fair to expect the EUTM proprietor not to file an identical EUTM application independently without giving the invalidity applicant prior information and sufficient time to take action against the contested EUTM (13/12/2004, R 582/2003‑4, EAST SIDE MARIO’S, § 23).

Such a relationship might be sufficiently close if the parties have entered into contractual or pre-contractual negotiations which, inter alia, concern the sign in question. Such a relationship does not have to be specific in such a way as to deal exclusively with, for example, franchise rights for the territory concerned (13/12/2004, R 582/2003‑4, EAST SIDE MARIO’S, § 23).

Furthermore, if a duty of fair play exists, it must be established whether or not the EUTM proprietor’s actions constitute a breach of a duty of fair play, thereby having been made in bad faith.

In the present case, the evidence submitted by the applicant proves that Tart Optical Enterprises LLC is the owner of the mark ‘ARNEL’ registered in 2010 in the USA for goods in Class 9 (appendix 1). It is also proven that it started a business cooperation in 2011 with the Taiwanese Hot Ice Optical Company (licence agreement) for, inter alia, the manufacture and distribution of products under the trade mark ‘ARNEL’ (appendix 4). The representative of said Taiwanese company is Ms. Yao Hsuan Wang. It has been also proven that said licence agreement was assigned to the company Tart Optical Asia LLC, whose representative is also Ms. Yao Hsuan Wang (appendixes 7 and 8). It has also been shown that in December 2012, said licence agreement terminated.

The applicant states that China Vision Co., Ltd. (previous owner of the contested mark) is a Taiwanese corporation established in 2007, whose CEO and owner is Ms Yao Hsuan Wang. The applicant adds that during the time the Licence agreement was still in force the representative of the licensee Ms Yao Hsuan Wang secretly had China Vision Co., Ltd. filing the application for the EUTM on 26/09/2012.

On the other hand, The EUTM proprietor argues that Ms. Yao Hsuan Wang was not the legal representative of China Vision Co., Ltd. (China Vision) at the time when the EUTM was filed. It became the legal representative in 2013. Consequently, Ms Yao Hsuan Wang had nothing to do with the filing of the EUTM application and the requirement of knowledge of the applicant’s trade mark by the proprietor is not proven.

Indeed, it is clear to the Cancellation Division that appendix 3 of the applicant’s submissions shows that the CEO (Ms. Yao Hsuan Wang) of the previous owner of the contested mark, that is, China Vision Co. Ltd. is the same as the representative of the licensee agreement concluded with the applicant. However, from the evidence submitted by the applicant, taken as a whole, the Cancellation Division cannot establish the exact period when she became CEO of the company which filed the contested mark. On the contrary, the evidence submitted by the proprietor (exhibit 1) shows that Ms. Yao Hsuan Wang was the responsible person of the company China Vision Co. Ltd. in 2013, that is, after the filing date of the contested mark (26/09/2012).

According to the applicant, Mr Wei Cheng Lin is Ms Wang’s husband and the present CEO of TVR. It considers that TVR and Hot Ice Optical, controlled by Ms. Yao Hsuan Wang and husband Mr. Wei Cheng Lin, acted to the contrary and used China Vision to file the application for the EUTM to take control over Tart Optical’s trade mark rights.

However, from the evidence submitted, it cannot be concluded that Mr Wei Cheng Lin is Ms Wang’s husband and that she was the legal representative of the company who filed the contested mark. Therefore, it cannot be established with direct and sufficient evidence that they were closely linked at the time of filing of the contested mark.

The Cancellation Division notes that the evidence shows, and the arguments of both parties coincide in the fact that for a period of time and at the moment of filing of the EUTM, Hot Ice Optical Company and Tart Optical Asia LLC had the same CEOs, namely Ms. Yao Hsuan Wang. Nevertheless, the evidence does not show that the EUTM proprietor (or its predecessor China Vision) had the same CEO as the distributors at the time of filing of the contested mark in 2012 since the evidence submitted by the proprietor shows that Ms. Yao Hsuan Wang became a responsible of the company which filed the contested mark only in March 2013, which was after the date of filing of the EUTM.

In the present case, the applicant has not proven that the applicant and the EUTM proprietor, or the previous owner, were in a commercial relationship since 2011, or provided sufficient evidence which might go towards proving that the EUTM proprietor knew about the contested mark. Since the relationship between the applicant and the company which filed the contested EUTM has not been sufficiently shown, the applicant cannot be considered to have established that the EUTM proprietor did depart from accepted principles of ethical behaviour or honest commercial and business practices.

As regards the alleged previous knowledge by the proprietor, the applicant argues and proves (appendix 1) that it is the owner of the trade mark ARNEL registered in the USA since 2010 for eyewear products. Therefore, it considers that the contested mark is partly identical with the earlier trade mark ‘ARNEL’ and the goods for which both marks are protected are very similar (contested goods in Class 9) or related (contested goods in Classes 18 and 25).

It should be noted that the Court of Justice considered the awareness of the EUTM applicant as “one of the elements” of bad faith, not sufficient in itself since further elements are required which would disclose the intentions of the EUTM applicant. The Court pointed out that “the fact that the [EUTM] applicant knows or must know that a third party has long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the [EUTM] applicant was acting in bad faith” (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 40). In order to determine whether there was bad faith, the EUTM proprietor’s intentions at the time of filing must also be taken into account.

The invalidity applicant has not submitted any evidence to show that, at the time of filing the contested EUTM, the EUTM proprietor was aware of, or must have been aware of, any use by the invalidity applicant of a similar sign for identical or related goods/services for which there could be a likelihood of confusion. The fact that the signs are similar does not establish bad faith on the part of the EUTM proprietor, where there are no other relevant factors (01/02/2012, T‑291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 90). As seen above, it has not been demonstrated that the CEO of the company which filed the contested mark was the same as the representative of the applicant’s distributor at the time of filing of the contested mark but after the fact, and, moreover, as stated above, the mere fact that the EUTM proprietor may have had some knowledge about the applicant’s mark, is not sufficient for the conclusion of bad faith.

The registration of a supposedly similar sign is not a clear indication of an abusive or fraudulent intention. It is rather an indication that the EUTM proprietor intended to use its mark on the marketplace in accordance with the trade mark functions set out in the EUTMR.

The applicant has not proven any dishonest intentions and for a finding of bad faith, there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. The evidence does not reflect such a situation.

In summary, the applicant has not established that the proprietor applied for the contested EUTM with the sole intention to hinder the applicant’s business. The applicant has not proven that the previous trade mark owner was aware of the applicant’s earlier trade mark use when it applied for the contested mark. The Cancellation Division underlines that the burden of proof regarding the point in time in which proprietor got to know about the use of the earlier sign by the applicant lies on the applicant.

The Cancellation Division considers that the applicant has not demonstrated bad faith on the part of the EUTM proprietor at the moment of filing the application for registration of the EUTM. In the absence of evidence showing that Ms. Yao Hsuan Wang was a representative of the previous proprietor at the time of filing or her having any direct involvement with the company at that time, the Cancellation Division cannot presume bad faith.

As observed above and taking into account all the evidence and circumstances of the case, the Cancellation Division may not assess the issue of bad faith by assuming that the applicant´s unilateral statement is accurate, in the absence of any proper documentation supporting the alleged prior relationship between the parties and the awareness of the EUTM proprietor of the existence of an earlier similar mark. The applicant, as stated above, has the onus to prove its assertions by submitting concrete evidence and cannot expect the Cancellation Division to declare invalid a registered trade mark on the basis of a unilateral statement not corroborated by documents. Therefore, the applicant has failed to prove that the proprietor filed the EUTM in bad faith and the application, as based on this ground, must be rejected.

ARTICLE 60(1)(c) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR- NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE

According to Article 60(1)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

c) where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled.

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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

In the present case, the applicant is the proprietor of the non-registered word mark ‘ARNEL’ which it claims is used for eyewear products of more than local significance prior to 2012. The applicant argues that the EUTM is confusingly similar to the earlier right ARNEL and also that the earlier goods are similar to all of the registered goods and, according to, inter alia, national Greek trade mark law (and probably also according to national trade mark law in other jurisdictions within the EU) the right ‘ARNEL’ confers on the applicant the right to prohibit use of the EUTM.

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.

Therefore, the onus is on the applicant 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 Cancellation 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 applicant 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 applicant 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 applicant 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 applicant must also provide a complete translation of the legal provisions invoked.

Furthermore, the applicant 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.

Where the applicant 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.

In the present case, the applicant did not submit any information on the legal protection granted to the type of trade sign invoked by the applicant, namely a non-registered trade mark. The applicant did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the applicant to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the applicant. Moreover, for the sake of completeness it is noted that there is no legal protection for EUIPO wide protection for non-registered trade marks and as such, this right would be inadmissible.

Therefore, the application for invalidity is also not well founded under Article 60(1)(c) EUTMR in relation to Article 8(4) EUTMR.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Nicole CLARKE

Carmen SÁNCHEZ PALOMARES

Ioana MOISESCU

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.