OPPOSITION No B 2 864 125

Gibson Brands, Inc., 309 Plus Park Boulevard, Nashville, United States (opponent), represented by Allen & Overy LLP, One Bishops Square, E1 6AD London, United Kingdom (professional representative)

a g a i n s t

Music Tribe Global Brands Ltd., Trident Chambers, Wickhams Cay PO Box 146, VG1110, Road Town, Tortola, Virgin Islands (Virgin Islands Of Great Britain), (applicant), represented by Frank Theilmann, Otto-Brenner-Str. 4a, 47877 Willich, Germany (employee representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 864 125 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

According to the notice of opposition, the opponent filed an opposition against all the goods of European Union trade mark application No 16 150 724 for the word mark ‘OBERHEIM’, namely against all the goods in Class 15. The opposition is based on European Union trade mark registration No 441 519 and German trade mark registration No 2 080 367, both for the word mark ‘OBERHEIM’ in relation to which the opponent claimed Articles 8(1)(a) and (b), 8(3) and 8(5) EUTMR. Furthermore, the opponent also invoked Articles 8(3) in relation to word mark ‘OBERHEIM’, protected in Estonia, Netherlands, Czech Republic, European Union, Denmark, United Kingdom, Hungary, Poland, Cyprus, United States, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Benelux, Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and, Ireland and 8(4) EUTMR in relation to a non-registered sign ‘OBERHEIM’, protected in Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Croatia, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom.

CEASING OF EXISTENCE OF THE EARLIER RIGHT EUTM No. 441 519.

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

On 15/03/2017, the opponent filed a notice of opposition claiming as the basis of the opposition European Union trade mark registration No 441 519 for the word mark ‘OBERHEIM’, which was filed on 11/12/1996 and registered on 02/09/1998.

However, this earlier right was cancelled in its entirety with decision of 05/09/2018 in the Cancellation proceedings No 14179 (C) (revocation) which is now final.

As it is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

Therefore, the opposition must be rejected as based on this earlier right and on Articles 8(1)(a) and (b), 8(3) and 8(5) EUTMR.

SUBSTANTIATION OF THE EARLIER GERMAN TRADE MARK REGISTRATION No. 2 080 367

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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 a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 28/03/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit has been extended and expired on 11/11/2019.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded as based on this earlier mark and Articles 8(1)(a) and (b), 8(3) and 8(5) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR AND NON‑REGISTERED MARK USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also invoked as grounds of the opposition Article 8(3) EUTMR in relation to the remaining word mark ‘OBERHEIM’, protected in Estonia, Netherlands, Czech Republic, European Union, Denmark, United Kingdom, Hungary, Poland, Cyprus, United States, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Benelux, Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and, Ireland and Article 8(4) EUTMR in relation to a non-registered sign ‘OBERHEIM’, protected in Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Croatia, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and, United Kingdom.

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

 the signs are identical or only differ in elements that do not substantially affect their distinctiveness;

 the goods and services are identical or equivalent in commercial terms;

 the applicant is an agent or a representative of the owner of the earlier mark;

 the application was filed without the consent of the owner of the earlier mark;

 the agent or representative fails to justify its acts.

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.

The above mentioned conditions as regards each of the opposition grounds invoked are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR or Article 8(4) EUTMR respectively cannot succeed.

Therefore, the opposition cannot succeed as based on Article 8(3) EUTMR or Article 8(4) EUTMR for the reasons set out below.

In the absence of any restriction in Article 8(3) EUTMR, and in view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and covers not only registered trade marks, but also applications and non-registered trade marks. According to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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.

The opponent has to prove its ownership of the trade mark and the time of acquisition of that mark. As the trade mark can be either a registered trade mark or a non-registered trade mark, the opponent may submit either evidence of registration anywhere in the world or evidence of acquisition of rights through use.

Consequently, non-registered trade marks are covered by the provision of Article 8(3) EUTMR provided that the law of the country of origin recognizes rights of this kind. The opponent needs to, therefore, provide the Office with evidence establishing that under the relevant laws he has acquired exclusive rights for his claimed non-registered trade mark. The notice of opposition was, however, not accompanied by any evidence in this regard.

On 28/03/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit has been extended and expired on 11/11/2019.

The opponent did not submit the necessary evidence mentioned above. For this reason, an assessment on whether or not the conditions under the relevant laws are fulfilled cannot be made. It follows from the above that, in relation to Article 8(3) EUTMR, the opponent has failed to establish that it has acquired exclusive rights for the invoked non-registered trade marks in the countries in question.

In relation to the opponent´s claim under Article 8(4) EUTMR, according to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part – 03/06/2017) if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

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 information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Rule 19(2) EUTMIR, mentioned above). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision.

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 submit any information on the legal protection granted to the type of trade sign invoked by the opponent. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

Therefore, the opposition cannot succeed on the basis of the rights, as invoked by the opponent and Articles 8(3) and 8(4) EUTMR. Consequently, the opposition is to be rejected in its entirety.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

María José LÓPEZ BASSETS

Monika CISZEWSKA

Trinidad NAVARRO CONTRERAS

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.