OPPOSITION No B 2 632 308

Varenne AB, Jakobsbergsgatan 16, 11144 Stockholm, Sweden (opponent), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative)

a g a i n s t

Varenne Capital Partners, 50 avenue Montaigne, 75008 Paris, France (applicant), represented by Lynde & Associés, 5 rue Murillo, 75008 Paris, France (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 632 308 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services in Classes 35, 36 and 41 of European Union trade mark application No 14 567 011 ‘VARENNE’. The opposition is based on the company name ‘Varenne AB’ used in the course of trade in Sweden. The opponent invoked Article 8(4) EUTMR.

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(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 Rules 19(2) and 19(2)(d) 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. In particular, 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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

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.

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.

On 18/01/2016 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 23/05/2016.

The opponent submitted evidence on 23/05/2016. However, it did not submit sufficient information on the legal protection granted to the type of trade sign invoked, namely the company name ‘Varenne AB’ since it merely indicates that ‘the Swedish Trademarks Act provides proprietors of a registered company right with the right to forbid the use of a younger trademark’ and the footnote indicates ‘1 Ch. 7 § 1^st. paragraph, 1 Ch. 8 § and 2 Ch. 9 § of the Swedish Trademarks Act as well as EUIPO’s guidelines on oppositions based on Article 8.4.’.

The content of these provisions was not provided, nor explained. Therefore, the Opposition Division considers that opponent did not submit information on the possible content of the right invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law of the Member State mentioned by the opponent. Furthermore, it is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in 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.

On 25/11/2016, the opponent filed further documents in order to substantiate its earlier right, namely the translations of the evidence of use filed previously on 23/05/2016 and evidence concerning the right under the applicable law (the text of the legal provisions applicable).

However, according to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish use in the course of trade of the sign on which the opposition is based.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

In any case, the Opposition Division also notes 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 business activities on which the opposition was based before the relevant date and in the relevant territory. The evidence submitted merely consists of extracts from internet websites (some from the opponent itself), press releases and some details about the company ‘Varenne AB’. Most of these documents are in Swedish and the translations cannot be taken into account since they were not provided within the time limit set by the Office. The remaining documents in English are clearly insufficient since they do not provide any information concerning the commercial volume, the duration, and the frequency of use.

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

Frédérique SULPICE

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.