OPPOSITION Nо B 2 549 635

 

Natek Gmbh, Lichtenbergstraße 8, 85748 Garching, Germany (opponent),

 

a g a i n s t

 

Jean-Michel Namand, Rošických 603/4, 150 00 Praha 5, Czech Republic (applicant), represented by Litváková A Spol., S. R. O., Patent And Trademark Office, Sliačska 1/A, 831 02 Bratislava, Slovakia (professional representative).

On 30/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 549 635 is rejected in its entirety.

 

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

 

REASONS

 

On 09/07/2015, the opponent filed an opposition against all the services of European Union trade mark (EUTM) application No 13 723 218 (figurative mark). The opposition is based on United Kingdom (UK) national trade mark application No 3 107 619, ‘NATEK’ (word mark); German national trade mark registration No 302 014 065 299, ‘NATEK’ (word mark); EUTM application No 13 448 154, ‘NATEK’ (word mark); Austrian national trade mark application No 951/2015, ‘NATEK’ (word mark) and company name ‘NATEK’ GmbH used in the course of trade in Germany. The opponent invoked Article 8(1)(a), Article 8(1)(b) and Article 8(4) EUTMR.

 

CEASING OF EXISTENCE OF THE EARLIER EUTM APPLICATION

 

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

 

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

 

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR; 

 

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

 

(iii) trade marks which are well known in a Member State.

 

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

 

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

 

On 09/07/2015, the opponent filed a notice of opposition claiming as the basis of the opposition, inter alia, EUTM application No 13 448 154, ‘NATEK’ (word mark), which was filed on 11/11/2014. However, this earlier right was totally refused with decision of 05/12/2017 in opposition B 2 499 070 which is now final.

 

As it is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

  

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

  

EARLIER UK RIGHT

 

On 01/02/2020, UK withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that UK trade mark registration No 3 107 619, ‘NATEK’ (word mark) no longer constitutes a valid basis of the opposition.

 

The opposition must therefore be rejected as far as it is based on this earlier right.

 

 

SUBSTANTIATION OF EARLIER GERMAN AND AUSTRIAN TRADE MARKS

 

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part, now Article 7(1) EUTMDR), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part, now Article 7(2) EUTMDR), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part, now Article 7(2)(a)(ii) EUTMDR.

  

In relation to the earlier Austrian trade mark application No 951/2015, ‘NATEK’ (word mark), the opponent provided, together with the notice of opposition, the extract from the Austrian Office (Öasterreichisches patentamt) with some information in English (the language of the proceedings) but no indication at all of the protected goods and services other than a general indication of the Class numbers 9, 36 and 42, and no translation of the status of the mark.

 

In relation to earlier German trade mark registration No 302 014 065 299, ‘NATEK’ (word mark), the opponent provided, together with the notice of opposition, the extract from the official German Patent and Trade Mark Office (DPMA) in German, which is not the language of the proceedings.

 

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

 

In the present case, the evidence filed by the opponent is not in the language of the proceedings.

 

On 06/10/2015 the cooling-off period before the start of the adversarial part of the opposition proceedings was extended, and the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 04/10/2017.

 

The opponent did not submit all of the necessary evidence concerning the substantiation of the earlier Austrian trade mark, nor did it provide the translation of all the information provided. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

The opponent did not submit the necessary translation of the evidence provided in German relating to the earlier German trade mark.

 

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded. 

The opposition must therefore be rejected as unfounded, as far as it is based on earlier German trade mark registration No 302 014 065 299, and earlier Austrian trade mark application No 951/2015, both for the word mark ‘NATEK’.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

The opposition is also based on company name ‘NATEK GmbH’ used in the course of trade in Germany, in relation to which the opponent invoked 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 trade mark.

 

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.

 

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part, now Article 7(1) EUTMDR), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part, now Article 7(2) EUTMDR), within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade, merely an extract from the German Commercial register (translated into English) regarding the company name of the opponent and a one page printout with information on the ‘About us’ section of the web http://www.natektech.com.

 

On 06/10/2015, as mentioned above, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/10/2017.

 

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

  

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must also be rejected as unfounded insofar as these grounds are concerned.

 

COSTS

 

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

 

 

Helena GRANADO CARPENTER

Helen Louise MOSBACK

Julia GARCIA MURILLO

 

 

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.