OPPOSITION No B 2 989 948

Twisted Automotive Limited, Unit 1 & 2 Sussex Court, Thirsk Industrial Estate, Thirsk, North Yorkshire YO7 3TA, United Kingdom (opponent), represented by 3volution Limited, 10 South Parade, Leeds, West Yorkshire LS1 5QS, United Kingdom (professional representative)

a g a i n s t

Jaguar Land Rover Limited, Abbey Road, Whitley, Coventry Warwickshire CV3 4LF, United Kingdom (applicant), represented by Reddie & Grose LLP, The White Chapel Building 10, Whitechapel High Street, London E1 8QS, United Kingdom (professional representative).

On 23/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 948 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 16 619 819 ‘LR’ (word), namely against part of the goods in Class 9, all the services in Class 35 and part of the services in Class 37. Specifically, the contested goods and services are the following:

Class 12: Vehicles; motor vehicles; motor land vehicles; land vehicles; off-road vehicles; ATVs; racing cars; reconditioned classic vehicles; vehicles sold in kit form; commercial vehicles; electric vehicles; military vehicles; vehicles for use by emergency services, search and rescue services; powertrains for land vehicles; motors for land vehicles; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; nets and trays specially adapted for fitting in vehicles; vehicle head rest covers; car seat covers; covers for vehicle steering wheels; fitted covers for vehicles; wheels for vehicles; alloy wheels; wheel rims; spare wheels; hub caps for wheels; hub centre caps; wheel covers; spoilers for vehicles; covers for vehicles; seats for vehicles; safety seats for vehicles; anti-theft, security and safety devices and equipment for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; doors for vehicles; vehicle windows; vehicle windshields; window glass for vehicle windows and windshields; roof windows for vehicles; skylight windows for vehicles; vehicle bumpers; vehicle centre consoles sold as parts of vehicles and which incorporate electronic interfaces; bicycles; tricycles; parts, fittings and accessories for bicycles; roof racks, luggage carriers and nets, cycle carriers, sail board carriers, ski carriers, and snow chains, all for vehicles; parts and fittings for all of the aforesaid goods.

Class 35: Business consultancy services and business management advisory services, relating to the manufacture, provision, distribution, sale, maintenance, restoration and repair of motor vehicles, export and import of vehicles, their parts and fittings; organisation of promotional goods programmes; consultancy services relating to organisation of promotional goods programmes relating to vehicles and vehicle parts; distributorship services and retail store services relating to vehicles and parts, fittings and accessories for vehicles; promoting the sale of goods and services of others in the automotive industry by dissemination of promotional materials and product information through an online global computer network, through the distribution of printed material, audio and video recordings, television and radio recordings, online advertising, internet web-sites and promotional contests; retail store services in the field of automobiles, automobile parts, fittings and accessories, automobile cleaning and polishing preparations; automobile dealerships; organization, operation and supervision of loyalty and incentive schemes relating to vehicles or vehicle parts; customer loyalty services and customer club services, for commercial, promotional and advertising purposes; retail services in the field of bicycles, bicycle parts and accessories, bicycle cleaning and polishing preparations; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes relating to vehicles or vehicle parts; advertising and promotional services relating to vehicles or vehicle parts; providing information about automobiles and other vehicles for sale by means of the Internet; database services, namely compiling and managing a database of information in the field of automotive or bicycle maintenance and repair; providing consumer information services and making referrals in the field of entertainment services for products, services, events, activities, facilities and locations, all relating to vehicles or vehicle parts; information and advisory services relating to all of the foregoing.

Class 37: Maintenance, repair, servicing, reconditioning, restoration, inspection, care, cleaning, painting and polishing of motor land vehicles, automotive manufacturing machinery, agricultural machines, internal combustion engines or of parts and fittings for all these goods; applying external finishes or coatings to vehicles; diagnostic or Inspection services, all for motor cars or for parts and fittings therefor, or for internal combustion engines; Assembly of accessories for vehicles (installation services);Vehicle breakdown assistance [repair];Tuning of engines and motor vehicles; Providing maintenance and vehicle repair assistance and information to drivers regarding their vehicles; maintenance, upgrading and diagnostic repair services for in-car electronics systems or in-car entertainment systems; vehicle battery charging; Automobile customization services; automotive upgrade services; information, consultancy and advice relating to any of the aforesaid services and for the supply of parts for motor land vehicles.

The opposition is based on the non-registered trade mark ‘LR MOTORS’ (word) used in the course of trade in the United Kingdom for motor vehicles; cars; parts and fittings for vehicles; parts and fittings for cars; vehicle accessories; car accessories; advertising services relating to the sale of motor vehicles; retail services in relation to vehicles; wholesale services in relation to vehicles; auctioning of vehicles; the bringing together, for the benefit of others, of a variety of motor vehicles, enabling customers to conveniently view, select and purchase those goods in an automotive retail outlet or via the internet; lease purchase financing of vehicles; vehicle servicing; vehicle repair services; repair of automobiles; servicing of cars; car valeting; advisory services relating to vehicle repair; vehicle cleaning; vehicle rental; vehicle leasing services.

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) 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 Article 7(2)(d) EUTMDR, 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 (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision and the content (text) of the legal provision or as the case may be jurisprudence. 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. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

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.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign it invoked, namely a non-registered trade mark ‘LR MOTORS’ (word).

In particular, on 29/03/2018 and 03/04/2018, that is, within the time-limit to substantiate the opposition, the opponent made the following statements and provided the following references to the content of the national case-law or legal provision:

7. The opponent will establish in the statement that it has invested significant time, money and effort creating, marketing and supplying the opponent’s goods and services in connection with its earlier mark.

8. As a result of this goodwill and reputation, the opponent will establish that consumers will make a connection between the earlier mark and the application. This connection will result in consumers making a mental link between the application and the opponent’s goods and services under the earlier mark. This will cause significant damage to the opponent’s goodwill and reputation and will diminish the opponent’s rights in the earlier mark […].

9. Notwithstanding the comparative size of Jaguar and the opponent, the opponent has earned a sizeable reputation in the market of selling motor vehicles, parts, fittings and accessories and its goodwill is a valuable asset to it. It is established law that small businesses under the law of passing off (unfair competition), see Stacey v 2020 Communications [1991] FSR 49.

13. Whilst Jaguar may have acquired significant goodwill and value in its “Jaguar Land Rover” and “Land Rover” brands the use of “Jaguar Land Rover” and “Land Rover” does not mean that any goodwill vests in the acronym “LR”.

14. In the recent decision of Apple Inc v Arcadia Trading Ltd [2017] EWCH 440 (Ch) it was held that use by Apple of “iPhone”, “iPad” and “iPod” trade marks was not enough to demonstrate that the “I” prefix had acquired distinctiveness in an application for “IWATCH”. At paragraph 28 of the Judgment, Mr Justice Arnold accepted the Hearing Officer’s literal interpretation of section 3(1) of the 1994 Trade Marks Act which led to “the conclusion that one trade mark cannot acquire distinctive character as a result of use of different trade marks because it refers to the distinctive character acquired “as a result of the use made of it”. Mr Justice Arnold also stated “…Nor does it follow that a trade mark can acquire distinctive character as a result of different trade marks with a shared feature”. Whilst the Apple case is with reference to whether the use of a mark with shared features can lead to acquired distinctiveness in the shared feature, it follows that the same principle equally applies to goodwill.

23. As a result of the misrepresentation, which is likely to occur if the application is registered, there is an obvious risk of damage being caused to the opponent for a number of reasons. The requirements for damage in passing off are set out in Harrods Limited v Harrodian School Limited [1996] RPC 697 by Millet L.J. In particular, in the current circumstances, damage is likely to be caused by the following:

a. Customers/potential customers may be put off dealing with the opponent by virtue of a perceived connection to Jaguar which could manifest in the following ways:

(i) […]. In the event that Jaguar’s application is registered the opponent will have no control over the quality of goods or services Jaguar supplied under the “LR” which could result in a depreciation of and dilution in the goodwill in the opponent’s brand as outlined in Maslyukov v Diaego Distilling Ltd or restrict the opponent’s ability to develop the reputation as it pleases […].

The applicant correctly states that these references are not sufficient to substantiate the right as ‘even if the EUIPO is already familiar with the applicable national law in the United Kingdom, it cannot be expected to understand or apply the content of that law, the conditions for obtaining protection or the scope of protection in connection with the non-registered rights claimed by the Opponent, without being provided by the Opponent, full details and explanation of such’.

Yet, in the present case, the opponent did not submit any of the decisions it refers to within the time limit to submit further facts, evidence and arguments in support of its opposition.

Neither did the opponent provide all the particulars necessary for establishing the content of the case law, in particular as to the conditions to be met in order for such an action to be successful. Therefore, it is concluded that the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked as provided for in Article 7(2)(d) EUTMDR. Nor did it make any reference to a source recognised by the Office, where the evidence concerning the content of the relevant national law or case-law is accessible online as foreseen by Article 7(3) EUTMDR.

Besides, although on 26/10/2018 the opponent made an attempt to further clarify the conditions set out under the tort of passing off, for example by stating that the ‘famous “Jif Lemon” case (Reckitt & Colam Products Ltd v Borden Inc […] RCP 341) sets out the three essential elements of a passing off case: […]’, these statements were made only after the expiry of the abovementioned time limit to submit further facts, evidence and arguments in support of its opposition. Therefore, as this evidence was submitted after the date provided to the opponent to substantiate its opposition they cannot remedy the deficiencies of the opponent’s first statements (which were made within the time limit set for doing so).

Indeed, according to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in, or that have not been translated into, the language of the proceedings, within the time limit set by the Office.

It follows that the further references to the national applicable law / case law filed by the opponent after expiration of the time limit set for submitting further facts, evidence and arguments in support of the opposition cannot be taken into account.

As to the judgment of 20/12/2018 by the High Court in London between the same parties and for the same signs as in the present case that the opponent submitted on 04/01/2019, it is noted that although the right of the opponent is recognised in the decision, the fact remains that the substantiation requirements needed under article 8(4) have not been met before the expiry of the time limit for providing further facts, evidence and arguments.

b) Conclusion

As the opponent has not provided sufficient references to the content of the case-law it refers to in order to allow the applicant to exercise the right of defence and/or for its sound application by the Office within the time limit set by the Office for submitting further facts, evidence and arguments in support of its opposition, 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

Loreto URRACA LUCQUE

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.