OPPOSITION No B 2 605 528

Rodica-Eliza Gutău, Piața Alexandru Lahovari nr. 1A, sc. A, ap. 56 Sector 1, Bucharest, Romania (opponent), represented by Catrinel Elena Florescu, Str. Sevastopol no. 17C, Sector 1, 010991 Bucharest, Romania (professional representative)

a g a i n s t

Catalin Stefan Ionita, Östanvag 96, 21617 Limhamn, Sweden (applicant), represented by Nestor Nestor Diculescu Kingston Petersen, 201 Barbu Vacarescu Street Globalworth Tower,17th floor 2nd District, 020276 Bucharest, Romania (professional representative).

On 20/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 605 528 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 30, 40 and 43 of European Union trade mark application No 14 300 107 for the word mark ‘PLAYBAKE’. The opposition is based on earlier well-known trade marks within the meaning of Article 6bis of the Paris Convention, of which the opponent claims the well-known character in all Member States of the European Union, on earlier non-registered trade marks and trade names used in the course of trade in the European Union and in all Member States of the EU, and on a company name used in the course of trade in Romania. The opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(a) EUTMR in relation to the well-known trade marks and Article 8(4) EUTMR in relation to the remaining earlier rights.

WELL-KNOWN TRADE MARKS UNDER ARTICLE 8(2)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(1) EUTMR

The opposition is based on the word mark ‘PLAYBAKE’ and on the figurative mark ‘ ’, of which the opponent claims the well-known character within the meaning of Article 6bis of the Paris Convention in all Member States of the European Union.

The opponent invokes Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) EUTMR.

According to Article 8(2)(c) EUTMR, ‘earlier trade marks’ means ‘trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention’.

According to Article 6bis of the Paris Convention:

the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

Consequently, the application of Article 8(2)(c) EUTMR (in conjunction with Article 8(1)(a) and (b) EUTMR) is subject to the fulfilment of two conditions:

1. that the earlier mark was well-known in the relevant territory on the date when the contested mark was filed, and

2. that, because of the identity or similarity between the contested mark and the earlier well-known mark and because of the identity or similarity between the goods and/or services covered by the marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

Even though the terms ‘well known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ (as used in Article 8(5) EUTMR) denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C‑375/97, General Motor, EU:C:1999:408 (concluding that the different terminology is merely a ‘nuance, which does not entail any real contradiction’, 14/09/1999, C‑375/97, General Motor, Chevy, EU:C:1999:408, § 22).

In practical terms, the threshold for establishing if a trade mark is well known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark that has acquired well-known character to have also reached the threshold laid down by the Court in its judgment of 14/09/1999, C‑375/97, General Motor, EU:C:1999:408, for marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known or well-known to the relevant sector of the public’ for well-known marks versus ‘known by a significant part of the relevant public’ for marks with reputation).

This has also been confirmed by case law. The Court characterised the notions of ‘reputation’ and ‘well-known’ as kindred notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (22/11/2007, C‑328/06, Fincas Tarragona, EU:C:2007:704, § 17; and 11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 56-57).

Therefore, when assessing if an unregistered mark has reached the threshold to be considered ‘well known’ in the sense of Article 6bis of the Paris Convention, the question is if the mark is well known to the relevant sector of the public in relation to the goods and services for which it is claimed to be well known.

The goods and services for which the opponent has claimed that the non-registered marks are well known are:

Class 30: Coffee, tea, cocoa and artificial coffee, rice tapioca and sago, flour and preparations made from cereals; bread, pastry and confectionery; edible ices, sugar, honey, treacle yeast baking-powder; salt, mustard; vinegar sauces (condiments), spices ice.

Class 35: Advertising; business management; business administration; office functions.

The services in Class 35 target business customers. The goods in Class 30 target the public at large.

The well-known character of the earlier marks

In order to determine whether a mark is well known, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided 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, the Office shall 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, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

According to Rule 19(2)(b) EUTMIR, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory.

In the present case, the contested trade mark was filed on 28/06/2015. Therefore, the opponent was required to prove that the non-registered marks on which the opposition is based were well-known before that date in at least one of the Member States of the European Union.

To support the well-known character of its marks, the opponent submitted the following evidence on 28/10/2015 and 02/11/2015.

• Printouts from the website www.playbake.com, printed on 28/10/2015, with a copyright date of 2013, showing the trade marks ‘ and ‘PlayBake’, as well as photographs of cakes and other sweet foodstuffs.

• Printouts from www.facebook.com also showing photographs of cakes under the title ‘Photos from PlayBake’s post’. They include some comments on the photographs, in Romanian.

• Printout from the website (blog) www.greywolf.ro, in Romanian, showing a photograph of a pie, mentioning a ‘cafeteria PlayBake’ and showing the trade mark .

• Printouts from the website (blog) ‘www.behance.net’ in English, corresponding to an article published on 29/09/2014, mentioning ‘I was commissioned to shoot a couple of editorial slots for PlayBake pastry in Bucharest, Romania. All their products are made with the finest natural ingredients and have a rough-homemade look. Their taste is as real as it gets and therefore no food styling was needed. What you see is what you get.’ Several photographs of pastries are enclosed. The number of views is 569 and the number of ‘likes’ is 22. Another printout, corresponding to an article published on 12/02/2014 with 303 views and 8 ‘likes’ is also submitted.

• Copy of an email from the opponent’s husband concerning the creation of the website www.playbake.com.

• Certificates issued by the Romanian’s trade mark office concerning the registration of the company name ‘PLAYBAKE SRL’.

While the evidence suggests that, for pastry and other sweet foodstuffs, some use of the sign has been made, it does not provide sufficient information on the degree of recognition of the earlier trade marks by the relevant public. There is no information concerning the extent of such use such as figures of sales, market share or promotional expenses. The mere appearance of the trade mark on a website and on social networks does not allow any conclusion regarding the level of awareness of the trade marks among the relevant public in Romania. The number of comments, of ‘likes’, and of viewers are far from being significant enough to denote recognition up to the threshold required under Article 8(2)(c) EUTMR.

Consequently, the Opposition Division deems that the evidence listed above does not succeed in establishing that the marks were well known for pastry and related goods, in Romania, prior to the filing date of the contested application, let alone for other goods in Class 30 and for the services in Class 35, and/or for countries other than Romania, to which the evidence does not relate.

Not even the opponent’s observations cast any doubt on the above conclusion since she just indicates in the vaguest terms that the ‘brand is internally and externally known’ after explaining the steps that led her to open the business (in January 2014) and what were her responsibilities and those of her associate.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) EUTMR.

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

The opposition is based on the non-registered trade marks and trade names ‘PLAYBAKE’ and ‘ ’ which, according to the notice of opposition, are used in the course of trade in the European Union and in all member states of the European Union. The opposition is also based on the company name ‘PLAYBAKE’ used in the course of trade in Romania.

For all of the above mentioned rights, use is claimed to have taken in relation to the goods and services in Classes 30 and 35 as previously mentioned.

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.

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.

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.

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 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.

Where the opponent 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.

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 provide the applicable law(s) or any publication containing the applicable law(s). She only provided very succinct information about the content of the Romanian law as regards the protection of non-registered trade marks and trade names. As regards non-registered trade marks, she indicated that the law (Article 3(d) and Article 6(2)(f) of the Romanian Trade mark Law), required that non-registered trade mark be well-known within the meaning of Article 6bis of the Paris Convention and that there be a likelihood of confusion. As regards trade names, she indicated that only the owner of a trade name can oppose a trade mark and that prior use on the market was also a condition.

The Opposition Division notes that the information provided by the opponent is extracted from the ‘Table on National Rights that constitute ’earlier rights’ in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR. The table in question just makes general references to the applicable legislation, for information purposes, and is not sufficient to satisfy the previously mentioned requirements as established by case-law (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

No information has been provided regarding the applicable law(s) for company names and/or concerning territories other than Romania.

Furthermore, the opponent has not provided any argument regarding the fulfilment of those requirements in the particular case at hand.

Additionally, it is noted that 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. Such use must indicate that the sign in question is of more than mere local significance.

In the present case, the requirement of use of more than local significance is clearly not satisfied. No other evidence than the one previously listed has been submitted in relation to the earlier rights invoked under Article 8(4) EUTMR. The documents in question do not provide any indication as to the extent or significance of the use.

Therefore, the opposition is rejected as unfounded under Article 8(4) EUTMR.

For the sake of completeness, it is noted that the Opposition Division considered that there was no need, for reasons of economy of proceedings, to enter into the issue of the admissibility of the earlier rights invoked, even if it is clear that some are inadmissible because they are not protected under the relevant law.

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

Frédérique SULPICE

Catherine MEDINA

Benoit VLEMINCQ

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.