OPPOSITION No B 2 866 682

Scomadi Worldwide Limited, Unit 2e, Smith Green Depot, Stoney Lane, Galgate, Lancaster LA2 0PX, United Kingdom (opponent), represented by Wilson Gunn, 5^th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)

a g a i n s t

Ra Engineering Co. Ltd, White Bear Yard Park Road Adlington, Chorley PR7 4HZ, Lancashire, United Kingdom (applicant), represented by Vossius & Partner Patentanwälte Rechtsanwälte MbB, Siebertstr. 3, 81675 Munich, Germany (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 866 682 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 217 911 ‘SCOMOTO’. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 11 239 341 ‘SCOMADI’;

2. United Kingdom trade mark registration No 3 058 122 ‘SCOMADI’;

3. Non-registered trade mark ‘SCOMADI’ used in the course of trade 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 the United Kingdom.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to earlier rights 1 and 2, and Article 8(4) EUTMR as regards earlier right 3.

SUBSTANTIATION of earlier United Kingdom trade mark registration

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 to the earlier registered trade marks on which, inter alia, the opposition is based.

On 21/04/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was further extended and expired on 26/12/2017.

On 03/01/2018, the opponent requested a continuation of proceedings pursuant to Article 105 EUTMR, which was granted on 12/01/2018.

According to Article 105(1) EUTMR, an applicant for, or proprietor of an EU trade mark or any other party to proceedings before the Office who has omitted to observe a time limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made, the omitted act has been carried out. The request for continuation of proceedings shall be admissible only if it is submitted within two months of the expiry of the unobserved time limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid.

Moreover, according to Article 105(4) EUTMR if the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. If a decision has been taken between the expiry of that time limit and the request for the continuation of proceedings, the department competent to decide on the omitted act shall review the decision and, where completion of the omitted act itself is sufficient, take a different decision. If, following the review, the Office concludes that the original decision is not required to be altered, it shall confirm that decision in writing.

In the present case, the opponent did not submit any evidence concerning the substantiation of the earlier registered trade marks on which the opposition is based along with the request for a continuation of proceedings.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until the 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 far as it is based on earlier United Kingdom trade mark registration No 3 058 122. However, as the opponent has also based its opposition on the grounds laid down in Article 8(1)(b) EUTMR on European Union trade mark registration No 11 239 341, for which it is not necessary to file any evidence of substantiation, the Opposition Division will firstly examine the merits of the opposition in so far it is based on the latter earlier registered trade mark.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

The goods on which the opposition is based inter alia are the following:

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Motorcycles;

Scooters.

The contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Vehicles; apparatus for locomotion by land, air or water are identically included in both lists of goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at professionals and non-professionals. Taking into consideration, on the one hand, the low frequency of purchase and, on the other hand, the price of vehicles and apparatus for locomotion by land, air or water, as could be for example, car, boats and planes, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a vehicle or an apparatus for locomotion by land, air or water, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42; 15/10/2015, R 316/2015-2, LIVING ELECTRIC, § 28).

3. The signs

SCOMADI	SCOMOTO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The marks in conflict in the present case are word marks comprised of a single term, namely, ‘SCOMADI’ for the earlier mark and ‘SCOMOTO’ for the contested sign. Neither of the signs have any meaning as a whole in the perception of the relevant public.

According to case-law, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,§ 25). On the other hand, the parties did not argue otherwise.

However, having regard to the fact that when perceiving a sign, consumers will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57), it cannot be excluded in the Opposition Division’s view that, at least part of the relevant consumers will dissect the element ‘MOTO’ from the contested sign in the context of vehicles and apparatus for locomotion by land, air or water. As the element ‘MOTO’ conveys concepts such as that of a motor or a motorcycle to the consumers that will dissect it from the contested sign, they will perceive it as having, at most, a low distinctive character in relation to the goods in question. Therefore, and since the element ‘SCO’ is meaningless for the relevant public, they will perceive this element as the most distinctive element of the contested sign.

In contrast, for the consumers that will perceive the contested sign as a whole, there is no element that can be considered more distinctive than other elements.

On the other hand, since as explained above, the earlier mark has no meaning as a whole and contrary to the contested sign, it is unlikely to be broken down into several elements, it is distinctive and it has no element that may be considered more distinctive than other elements.

Visually and aurally, the signs coincide in their initial letters ‘SCOM***’ as well as in their length. However, they differ in their last letters ‘ADI’ in the earlier mark, versus ‘OTO’ in the contested sign.

Therefore, the signs are visually and aurally similar to, at most, an average degree.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory, however part of the public will dissect the element ‘MOTO’ from the contested sign, so that for them, the signs are not conceptually similar. For the remaining part of the public, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark has a reputation and enjoys a high degree of recognition among the relevant public in the European Union in connection with all the goods and services for which it is registered, namely the following:

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Motorcycles; Scooters.

Class 35: Advertising; Publicity and business; Business management; Business administration; Retailing of vehicles, whether or not motorised, motorcycles, scooters and accessories; Retailing of parts for vehicles, motorcycles and scooters; Creating and managing of data files, in particular those relating to commercial information; Import-export agencies; Business mediation in the trading, purchase and sale of vehicles, whether or not motorised, motorcycles, scooters and parts for vehicles, motorcycles and scooters; Interim management and business project management; Market canvassing and market research; Organization of trade fairs for commercial or advertising purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whethr or not provided via electronic channels, including the Internet.

Class 37: Building construction; Maintenance and repair of vehicles, whether or not motorised, motorcycles, scooters and accessories and parts for vehicles, motorcycles and scooters; Installation services; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not via electronic channels, including the Internet.

This claim must be properly considered, given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater the likelihood of confusion will be, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Witness statement

Statement from the EUIPO representative of the opponent, dated 03/01/2018, according to which the opponent ‘arranges manufacture and distribution of a range of motor scooter models worldwide’ and that it expanded in 2015 throughout Europe.

• Turnover and advertising figures

Table from an unknown source concerning ‘sales turnover’, ‘advertising’ and ‘royalties’ of Scomadi UK and Scomadi Europe, as well as affiliated companies for the territories outside the relevant territory (Thailand, Malaysia, Singapore, New Zealand, Nepal, Korea, Australia and Vietnam) from October 2016 to an undetermined date.

• Bills of lading and invoices

• Two bills of lading dated 2014 and 2016, where the opponent appears as consignee concerning the shipment of 129 ‘Scooter and spare parts’ and 142 containers of ‘Motorcycle and motorcycle spare parts’.

• Two invoices dated 2014 and 2016 addressed to the opponent regarding sales of, inter alia, 99 scooters amounting to US$ 77,220 for one, and 100 motorcycles amounting to US$ 184,500 for the other.

• Website screenshots and extracts

• Article apparently extracted from the opponent’s website dated 01/05/2015 entitled ‘SCOMADI AT BOB NORTH’ showing the picture of a ‘Scomadi’ scooter and dealing with the ‘Best of Britannia Event’ stating that, ‘Many people visited our stand on Saturday and Sunday as a result of the TV coverage that we received with many telling us that they just had to come and see the scooters on display. All in all a successful weekend which offered us a fantastic opportunity to spread the Scomadi Story to whole new audience!’

• Article apparently extracted from the opponent’s website dated 22/11/2015 entitled ‘SCOMADI AT EICMA 2015 MILAN’ showing the pictures of a ‘Scomadi’ scooter as well as ‘Scomadi’ clothing, caps and shoes. The article further includes two sentences regarding two new models of scooters.

• Article apparently extracted from the opponent’s website dated 01/12/2015 entitled ‘NEW COLOURS FOR 2016’ dealing with the availability in 2016 of three new colours for Scomadi scooters.

• Article apparently extracted from the opponent’s website dated 14/03/2016 entitled ‘BREAKING NEWS’ showing pictures of scooters and dealing with the launch of a new Scomadi scooter.

• Article extracted from http://scooterotica.org showing forum conversations regarding ‘Scomadi’ scooters along with pictures of scooters.

• Screenshot of what seems to be a Facebook® page called ‘Scomadi PM Tuning’ where pictures of scooters are visible.

• Article extracted from http://www.classicscooterist.com dated 15/07/2009 and entitled ‘Eurolambretta Jamboree 2009’ in regards to the earlier mark, and stating that, ‘A case in point was the Scomadi duo of Frank Sanderson and Paul Melici who had been invited along to show off their latest auto conversions, including their latest LT250’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has a reputation, or has acquired a high degree of awareness among the relevant public.

Despite showing some worldwide use of the trade mark, which apparently started in 2009, the evidence provides very little information on the extent of such use, and no indications whatsoever in relation to the extent of recognition of ‘Scomadi’ by the consumers in the European Union.

The evidence concerning the extent of use consists exclusively of the witness statement from the opponent’s representative for EUIPO which includes ‘sales turnover’, ‘advertising’ and ‘royalties’ figures and the two invoices and two bills of lading dated in 2014 and 2016.

In this regard, the Opposition Division notes that, the figures mentioned, either in the witness statement or in the bills of lading and invoices from its providers are not particularly significant. Moreover, viewed together, these pieces of evidence show a use of the earlier mark in the relevant territory which started at the earliest in 2009 and, hence, cannot be qualified as long standing.

All in all, the evidence thus does not demonstrate that the earlier mark has been used extensively in the relevant territory.

The opponent has not submitted any direct evidence as to the degree of recognition of the brand in the relevant territory. Furthermore, the few articles submitted, dealing with the launch of new products under the earlier mark and the availability of new colours for the ‘Scomadi’ scooters, are not suitable to show that consumers in the European Union have been confronted extensively with the earlier mark in such a way that it could be assumed that the earlier mark has acquired a high degree of recognition among the public.

Although when assessed as a whole, the evidence may attest to some use of the earlier mark on the European Union market, essentially in the United Kingdom, it does not show that the earlier trade mark has a reputation for the relevant products or even that the relevant consumer is aware of the brand.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation or has acquired a high degree of recognition among the relevant public due to intensive use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Although the signs coincide visually and aurally in their initial letters ‘SCOM***’ and the goods in question are identical, it is Opposition Division’s view that a likelihood of confusion between the marks in question can be safely excluded.

Indeed, in spite of their position at the end of the signs, the differing letters ‘ADI’ in the earlier mark versus ‘OTO’ in the contested sign are clearly perceptible. Bearing in mind the high level of attention that the relevant consumers will display while purchasing the goods in question in the present case, it is thus very unlikely that they overlook this different ending and therefore, they will be able to safely distinguish between the signs.

This absence of a likelihood of confusion a fortiori applies to the part of the public that will dissect the element ‘MOTO’ from the contested sign. This is because, as a result of the clear concept conveyed by that element, the public will perceive the signs as being conceptually not similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition based on Article 8(1)(b) EUTMR must be rejected.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above-mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 29/12/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Motorcycles; Scooters.

Class 35: Advertising; Publicity and business; Business management; Business administration; Retailing of vehicles, whether or not motorised, motorcycles, scooters and accessories; Retailing of parts for vehicles, motorcycles and scooters; Creating and managing of data files, in particular those relating to commercial information; Import-export agencies; Business mediation in the trading, purchase and sale of vehicles, whether or not motorised, motorcycles, scooters and parts for vehicles, motorcycles and scooters; Interim management and business project management; Market canvassing and market research; Organization of trade fairs for commercial or advertising purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whethr or not provided via electronic channels, including the Internet.

Class 37: Building construction; Maintenance and repair of vehicles, whether or not motorised, motorcycles, scooters and accessories and parts for vehicles, motorcycles and scooters; Installation services; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not via electronic channels, including the Internet.

The opposition is directed against the following goods:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

In order to determine the mark’s level of reputation, 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.

On 03/01/2018, the opponent submitted the evidence listed above in section d), in which the claim of enhanced distinctiveness of the earlier mark has been examined. As explained above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired an enhanced degree of distinctiveness, and therefore, these conclusions must be the same in regards to the claim of reputation of the earlier mark.

2. Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition based on this provision must be rejected. These criteria are cumulative, so that the failure to prove one of these criteria results in failure of the claim under Article 8(5) EUTMR, without the Opposition Division having to examine the other criteria.

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.

1. The right under the applicable law

According to Article 95(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 (in the version in force at the time when the adversarial part of the proceedings started), 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 to national law, the opponent must cite the provisions of the applicable law on the conditions governing the 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.

In the present case, the opponent did not submit any information on the legal protection granted to the type of right invoked by the opponent, namely a non-registered trade mark used in the course of trade 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 and Sweden for goods and services in Classes 7, 9, 12, 14, 16, 18, 25, 35 and 37 and, in so far as the United Kingdom is concerned, it merely stated the following:

The UK Law of passing off provides that the owner of an unregistered right can prevent the use and registration of a similar right if it can establish the following:

• Goodwill – trading activity

• Misrepresentation

• Damage as a result of the misrepresentation

The opponent did not submit any information on the possible content of the law 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, only submitting information regarding the United Kingdom.

In addition, as regards to the law applicable in the United Kingdom, the Opposition Division notes that it is not sufficient to make a general reference to the content of the national legislation and as the United Kingdom is a common law jurisdiction, the opponent should have submitted case law.

2. Conclusion

As the opponent has not provided a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the law applicable in the territories in which it claims the use of an unregistered trade mark in the course of trade, the opposition is not well founded under Article 8(4) EUTMR.

Therefore, the opposition must 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.

The Opposition Division

Nicole CLARKE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.