OPPOSITION No B 2 605 585

Saltek s.r.o., Drazdanska 561/85, 400 07 Usti nad Labem, Czech Republic (opponent), represented by Propatent - Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative)

a g a i n s t

Phoenix Contact GmbH & Co. KG, Flachsmarktstr. 8, 32825 Blomberg, Germany (applicant), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative).

On 20/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 605 585 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 352 918 for the figurative mark depicted below, namely against all the goods in Class 9 and some of the goods and services in Classes 16 and 42. The opposition is based on the Czech non-registered trade mark of the figurative sign depicted below. The opponent invoked Article 8(4) EUTMR.

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 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.

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 its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

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 10/07/2015. 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 Czech Republic prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for electronic devices and electrical engineering, as broadly indicated on page 5 of the opponent’s observations filed on 02/11/2015 together with the notice of opposition.

On 02/11/2015 the opponent filed the following evidence:

• 19 Invoices issued from August to October 2013, directed at clients in the Czech Republic. The sign is not depicted. (Item 1). Although the invoices are not in the language of proceedings, it follows from the code numbers and the further evidence (catalogues) that they relate to surge protective devices.

• 2 promotional catalogues, dated September 2013 and March 2015 (item 2 and 7), not in the language of proceedings.

• 2 promotional brochures (item 3 and 5), dated August 2013 and February 2014, not in the language of proceedings.

• 2 product overview catalogues, dated September 2013 and February 2014 (item 4 and 6), not in the language of proceedings.

• Print-out from the website ‘red-dot.org’ regarding the competition for the annual best product design, dated 21/1/2015 (item 8), according to which the opponent was awarded the ‘red dot’ award in 2014 for the design of its products.

• 2 photos from the ‘AMPER’ 2014 fair trade in Brno (Czech Republic), depicting the opponent’s exhibition stand.

As a preliminary remark, it should be noted that the opponent did not submit translations of the material, but merely made some handwritten remarks on some evidence. However, taking into account the nature of the documents which have not been translated, namely invoices and catalogues, and their self-explanatory character, the Opposition Division considers in favour of the opponent that the explanatory remarks are sufficient to enable an evaluation of the material.

The evidence is dated before the relevant date and refers to the relevant territory.

However, 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 invoices, brochures and catalogues, do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use.

In particular, there is no information about the commercial volume, since the opponent does not provide any turnover and sales figures; there is neither any affidavit nor sworn declaration made by the opponent regarding the commercial volume. Furthermore, all the invoices are blackened and, thus, do not give any information on sales and/or turnover figures.

Finally, the invoices cover only an extremely short period of three months, namely from August to October 2013. It is impossible to establish from the submitted material that a longstanding and frequent use of the sign has been made in the relevant territory.

In this regard the Opposition Division notes that the General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the

exposure given to the sign, for example, through advertising or on the internet (judgments of 24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Consequently, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to the intensity of use (sales made under the sign), the length of use, the spread of the goods (location of the customers), the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

The material submitted does only relate to the territorial spread, given that the invoices are addressed to various clients throughout the relevant territory. However, it does not prove neither the intensity nor the length of the use.

Therefore, it is not apparent from the evidence that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) EUTMR. The invoices indicate a commercial use in relation to some goods for a short period of three months. Documents showing a certain commercial significance of the brand (e.g. figures relating to sales turnover, market share or brand awareness etc.) have not been submitted by the opponent. Likewise, apart from some photographs of an exhibition stand, the opponent has not shown that it had developed any advertising activity and/or campaign to ensure that its business establishment was promoted throughout the relevant territory. Finally, the material referring to the ‘red dot’ award merely relates to the design of the opponent’s products, but does not prove any recognition of the sign among the public, commercial significance, etc. In any case, the Opposition Division also notes that it is not clear whether the evidence refers to the sign as filed in the notice of opposition and depicted above.

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.

For the sake of completeness the Opposition Division finally notes that the opponent also stated that the applicant filed the contested trade mark in bad faith. However, this cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point cannot be addressed.

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

Zuzanna STOJKOWICZ

Konstantinos MITROU

Julie GOUTARD

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.