OPPOSITION No B 2 749 755

Mobilesuite cowo GmbH, Pappelallee 78/79, 10437 Berlin, Germany (opponent), represented by Meissner & Meissner, Hohenzollerndamm 89, 14199 Berlin, Germany (professional representative)

a g a i n s t

Office Club ApS, c/o Karberghus A/S Århusgade 88, 2100 København Ø, Denmark (applicant), represented by Budde Schou, A/S, Hausergade 3, 1128 Copenhagen K, Denmark (professional representative).

On 13/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 749 755 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 (Classes 35, 36 and 41) of European Union trade mark application No 15 189 004 for the word mark ‘OFFICE CLUB’. The opposition is based on the company name ‘officeclub.com’ used in the course of trade in Germany. 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 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.

a) 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 precluding an earlier right that 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 for 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, 166).

In the present case, the contested trade mark was filed on 08/03/2016. However, the contested trade mark has a priority date of 21/01/2016. 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 Germany prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for rental of offices and office infrastructure, and the provision of office and value-added services.

On 31/10/2018 the opponent filed the following evidence:

 Brochure showing the terms “OFFICE CLUB” related to services such as co-working, meeting and office services (at the top of the document it appears a date of the year 2018).

 Transfer of the domain “officeclub.com” to the opponent, dated in August 2015.

 Excerpt from the opponent´s website showing the terms OFFICE CLUB and a brief explanation of their services (such as conference rooms to rent).

 8 invoices addressed to clients in Denmark, Germany and United Kingdom, dated from 2015 to 2016. The terms OFFICE CLUB appear in the invoices. They indicate the services provided (co-working). The prices are also indicated (they vary from 5,95€ to 321,38€).

 2 emails dated in 2015 and 2016 sent to the director of the opponent´s mark.

Assessment of the evidence

Having examined the evidence to be taken into account, the Opposition Division is of

the view that the opponent failed to prove that the use of the sign ‘officeclub.com’ in the course of trade was of more than mere local significance.

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 to T- 321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

The Opposition Division notes that the evidence submitted by the opponent relates to a very limited use. The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the sign ‘officeclub.com’.

The evidence filed does not corroborate the claims and explanations in the opponent’s observations and does not contain convincing indications concerning the particular kind of services offered, the size of the opponent’s customer base, its business partners, their location or geographical distribution, etc. to allow the Opposition Division to adduce the economic dimension of the sign.

The invoices provided relate to very low quantities. Indeed, they do not show economic significance of the use that is able to prevent the registration of the contested mark. In particular, they relate to the sale of an insignificant quantity of services.

Furthermore, from the fact that there was email exchange between the opponent and third parties, no firm conclusion can be drawn as to what services (if any) were provided under the invoked sign. As regards the brochure and the opponent´s homepage printout, it should be noted that the mere presence of the sign on such corporate identity materials or on a website is, of itself, not sufficient to prove use unless the evidence also shows the place, time and extent of use or unless this information is otherwise provided, which is not the case. Account should be taken of the fact that the opponent did not provide complementary information about the actual use of the internet site.

The above mentioned evidence is clearly insufficient for supporting a finding that the sign was used to a degree that would reach the threshold of ‘more than local significance’. To conclude, while it appears that use on some level of the unregistered sign ‘officeclub.com’ has occurred, the nature of the evidence filed makes it very difficult for the Opposition Division to draw any firm conclusions about the geographical and economic dimensions of this use in Germany. It is not evident from the submitted documents that this use was long term or intensive and the evidence filed fails to clarify, in particular, the concrete activities/services performed under the sign and their economic significance including reliable and sound information regarding achieved turnover (such as financial statements, accounts, etc.), the location of the customers, and the advertising made under the sign, all criteria which are essential for determining whether a sign’s use is of more than mere local significance. The use demonstrated by the opponent cannot be deemed sufficient to prove the use of ‘officeclub.com’ as an important and significant business identifier used by the opponent to such an extent as to justify the acquisition of exclusive rights in a non-registered sign.

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 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 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Martin EBERL

Gonzalo BILBAO TEJADA

Konstantinos MITROU

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.