OPPOSITION No B 2 591 983

Rentr Limited, The Atrium, 21/23 Clemens Street, Leamington Spa CV31 2DW, United Kingdom (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU, United Kingdom (professional representative)

a g a i n s t

Orla Shields, 2 Weavers Way, London NW1 0XE, United Kingdom (applicant), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London EC4A 1BL, United Kingdom (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 591 983 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 of European Union trade mark application No 14 254 122, namely against all the goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42 and 45. The opposition is based on non-registered trade mark RENTR. The opponent invoked Article 8(4) EUTMR.

RENTR	RENTR
Earlier trade mark	Contested sign

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 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 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. Prior use in the course of trade of more than mere local significance

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. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 15/06/2015. However, the contested trade mark has a priority date of 31/03/2015. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for Computer software relating to the rental market that helps landlords manage their properties and tenant relationships; advertising, information, business management, Software as a Service, advice and consultancy relating thereto.

On 10/05/2016 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• The app Rentr was published in the Android and Apple application stores online and listings of the app in the stores

• The publication of the advertising for the opponent’s app was agreed with the publishers of Landlord Today

• Information on number of installs of the application through the Google Playstore in 2014 and 2015 without any information on the countries of origin of the users

• Information on number of installs of the application through the AppStore (Apple) in 2015 without any information on the countries of origin of the users

• Information from the Whois-website stating that the website www.rentr.co is registered by the opponent’s development consultants

• Website traffic information from the year 2015

• Youtube advert

• Vimeo views – no information on the country of origin of the users

• Information on marketing activities from April-July 2015

• Newsletter sent to several thousand readers of the Landlord Today email list

• Four adverts named as advertorials

• Online Banner advertising

• Information on subcontracted SEO-strategies in 2014 and 2015 through an external company

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 43).

The documents filed, namely number of installs, banner adverts, YouTube-videos and information about marketing strategies, do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use. While it is clear that the opponent has started to use the mark, a lot of evidence is dated after the priority date of the contested mark (31/03/2015), which cannot play any important role in this case. Secondly, there is some sporadic evidence about the amount of installs and people reached with the advertising campaigns or the amount of people who watched the videos on YouTube or Vimeo, however none of this material gives clear information on where these installs were made and who watched these videos. By relying on a UK non-registered trade mark, the Opposition Division needs to be able to ascertain that use of mere than local significance was made within the United Kingdom. With the evidence provided by the opponent, this is clearly not the case. No invoices were presented, therefore it could well be the case that not a single sale of the Rentr-app was done in the United Kingdom, because the stores to purchase applications are accessible from (almost) all over the world. Besides, the application is for free in the Google and Apple store. Whether or not free use of the own product is use in the relevant market at all can be put aside as in any case it cannot be ascertained that these downloads were made from the United Kingdom. All the other evidence provided is secondary evidence which however cannot convince the Opposition Division that the mark was used in the United Kingdom of mere than local significance.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods and services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Renata COTTRELL

Lars HELBERT

Sigrid DICKMANNS

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