OPPOSITION No B 2 556 531

Supagard Limited, Stoatley Rough, Farnham Lane, Haslemere, Surrey GU21 1HF, United Kingdom (opponent), represented by Chancery Trade Marks, Chancery House, 40a Castle Street, Guildford, Surrey GU1 3UQ, United Kingdom (professional representative)

a g a i n s t

Normfest GmbH, Siemensstr. 23, 42551 Velbert, Germany (applicant), represented by Weisse Moltmann & Willems Partnerschaftsgesellschaft, Am Lomberg 13, 42555 Velbert, Germany (professional representative).

On 03/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 556 531 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 of European Union trade mark application No 13 982 418. The opposition is based on the following rights:

• the non-registered trade mark ‘PROTECT’, allegedly used in the United Kingdom;

• the non-registered trade mark ‘PROTECT’, allegedly used in the United Kingdom.

The opponent claimed that these earlier rights have been used in the course of trade in relation to the following:

Paints, varnishes (other than insulating varnish); lacquers; fixing agents; preservatives against rust and against deterioration; sealants; wax coatings, agglutinants, thinners, thickeners, binding preparations; colourants; dyes; natural resins and waterproofing materials; fillers; anti-corrosive preparations; all included in Class 2.

The opponent invoked Article 8(4) EUTMR.

PROTECT
Earlier non-registered trade marks	Contested sign

PRELIMINARY REMARK

According to Article 41 EUTMR:

Within a period of three months following the publication of an EU trade mark 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 […]

The same article, in its third paragraph, specifies that:

Opposition shall be expressed in writing, and shall specify the grounds on which it is made.

In the present case, the opponent invoked Article 8(1)(b) EUTMR in its arguments submitted on 07/01/2016, eight months and nine days after the publication of the European Union trade mark application on 29/04/2015. Consequently, as the only ground invoked by the opponent in its notice of opposition is Article 8(4) EUTMR, the Opposition Division will not take into consideration the ground of Article 8(1)(b) EUTMR.

However, according to Article 8(2)(a) EUTMR an ‘earlier trade mark’ is defined as a trade mark ‘with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks’.

Among the documentation submitted within the period for substantiating its claim, the opponent included a certificate of registration for the United Kingdom trade mark No 3 119 734, ‘SUPERGARD PROTECT’, which shows that its filing date (28/07/2015) was after the filing date of the contested application (24/04/2015). Therefore, the opponent’s United Kingdom trade mark No 3 119 734 does not comply with the requirements of the abovementioned provision and it will not be taken into account in the further examination of the opposition.

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

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 the EUIPO 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. 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 merely provided an explanation of the grounds of its opposition in the notice of opposition, stating the following in relation to the two non-registered rights claimed:

• The opponent has been using the mark and the name ‘PROTECT’ in the UK and other European countries since at least 2008. The mark has a widespread reputation for goods in Class 2. Members of the public would be confused about the origin of the goods sold by the applicant, as its stylised mark also contains the recognisable English word ‘PROTECT’ and registration is sought for identical and similar goods.

• The opponent has been using the mark ‘PROTECT’ in the UK and other European countries since at least 2008, and the mark has a reputation in the motor industry. Therefore, the use and registration of the almost identical mark filed by the applicant would lead customers to confuse the companies’ goods.

As is clear from the above, the opponent did not submit any information on the legal protection granted to the type of trade signs invoked by the opponent, namely the non-registered trade marks ‘PROTECT’. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is 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

Inés GARCÍA LLEDÓ

Eamonn KELLY

Adriana VAN ROODEN

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.