OPPOSITION No B 2 478 942

RAAMaudio UK Limited, 25 The Drive, Sevenoaks TN13 3AB, United Kingdom (opponent), represented by Trade Mark Wizards Limited, 54 Hillbury Avenue, Harrow HA38EW, United Kingdom (professional representative)

a g a i n s t

Power Integrations Inc., 5245 Hellyer Avenue, San Jose, California CA 95138, United States of America (applicant), represented by A.A. Thornton & Co., 10 Old Bailey, London EC4M 7NG, United Kingdom (professional representative).

On 27/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 478 942 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services in Classes 9, 41 and 42 of European Union trade mark application No 13 466 719 for the word mark ‘PI’. The opposition is based on the non-registered trade mark ‘PI SUPPLY’ in the United Kingdom. The opponent invoked Article 8(4) EUTMR.

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 shall 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 opponent 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 opposition 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 – Passing off in the UK

The opponent claims to have the right to prohibit the use of the EUTM applied for under the tort of passing off and based on the United Kingdom non registered trade mark ‘PI SUPPLY’.

According to Article 76(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, 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 substantiation.

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 did not submit sufficient information on the legal protection granted to the United Kingdom non registered trade mark ‘PI SUPPLY’ under the tort of passing off. It made some references in its observations to case-law deriving from English courts as well as reference to ‘Halsbury’s Laws of England’. However, it is impossible to determine where the references originate from. More specifically, the opponent did not furnish any copies of the decisions and doctrine to which it refers.

In this respect, it should be recalled that when the opponent relies on national case-law to prove its case, it must provide the Office with this case-law in sufficient detail (a copy of the decision invoked) and not merely by references, quotations or extracts from decisions and publications somewhere in the legal literature. The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off that it is a common law tort. Moreover, treating the national legal situation as an issue of fact which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to, in particular, monitor the corresponding changes of legislation or development of the case-law in all the Member States. The opponent could have submitted copies of the case-law as well as the extracts from ‘Halsbury’s Laws of England’ showing the references which are referred in the observations. Pursuant to the previous cited Article 76(1) EUTMR, the opposition must be rejected already for these reasons.

For the sake of completeness, despite its common law roots, the passing off action is explicitly stated in section 5(4)(a) of the UK Trademark Act, under the other signs used in the course of trade which might prohibit the use of subsequent trade marks. However, the opponent did not base its opposition on section 5(4)(a), just as it did not provide any copy of the legal provision.

In view of the foregoing, the opponent also failed to substantiate and explain the particulars and content of the three essential elements of passing off. In particular, it did not sufficiently demonstrate what conditions have to be met to acquire goodwill, how misrepresentation is interpreted or how a potential damage is evaluated in the relevant legal system. Indeed, the opponent barely clarified the concepts of goodwill and damage with only two short extracts of decisions which, in addition, have not been produced. In other words, there is a lack of information and evidence regarding the content of passing off, the conditions of protection of the earlier right and its scope of protection.

At a later stage, on 11/04/2016, the opponent submitted further observations on goodwill and misrepresentation. However, in addition to being anecdotal and unable to correct the numerous deficiencies identified above, these submissions cannot be taken into account because they were filed only after the expiry of the opponent’s time limit for submitting facts, evidence and arguments in support of the opposition.

Lastly, it is again worth recalling that the onus is on the opponent to submit evidence as well as the opponent’s duty to collaborate when submitting evidence. According to Article 76(1) EUTMR and the limited power of examination of the Office, the filing of evidence must be sufficiently clear, precise, complete and reliable to enable the other party to exercise its right of defence and the Office to perform its examination, without reference to extraneous or supportive information. It is not the role of the first instance jurisdiction to check of its own motion the information regarding the national law currently in force. This is also justified by the general principle of equal treatment between the parties, i.e. that the Opposition Division must not act to favour one party.

It is true that the case law recognise that the Office has a certain power of verification. However, it 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 (see decision of 02/06/2014, R 1587/2013-4, GROUP, § 26 and decision of 30/06/2014, R 2256/2013-2, ENERGY, § 26).

In view of all the above, the opposition is therefore not well founded under Article 8(4) EUTMR.

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

Vanessa PAGE

Steve HAUSER

Frédérique SULPICE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.