CANCELLATION No 18 803 C (INVALIDITY)

Craftware sp. z o.o., Karwińska 21, 02 639 Warszawa, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative)

a g a i n s t

Tobias von Kéler, Ringstr. 38, 37431 Bad Lauterberg, Germany (EUTM proprietor).

On 31/01/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 17 063 215, ‘craftware’ (word mark), namely against all the registered services in Class 42. The application is based on: the Polish company name ‘Craftware’ used in the course of trade of more than mere local significance in Poland, on the trade name and respectively non-registered trade mark, both for the name ‘Craftware’, used in the course of trade of more than mere local significance in Poland, Germany, France and United Kingdom and on the right to the name ‘Craftware sp.z.o.o.’ in Poland. The applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR as well as Article 60(2)(a) EUTMR

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claimed previous rights in the trade name, company name and non-registered mark all for the name Craftware and the corporate name Craftware sp. z o.o. and filed evidence to support its allegations (including invoices, judgments of the Polish courts and extract from the invoked Polish legislation) which will be mentioned and assessed further in the decision when and if necessary.

The EUTM proprietor did not reply.

A. NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 60(1)(c) IN CONNECTION WITH ARTICLE 8(4) EUTMR

According to Article 60(1)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

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 applicant acquired rights to the sign on which the application for a declaration of invalidity 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 application for a declaration of invalidity 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.

The right under the applicable law

According to Article 7(2)(d) EUTMDR, if the opposition is based on earlier rights, namely the company/trade name and non-registered trade mark “Craftware”, within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection. The article is equally applicable to invalidity proceedings.

Therefore, the onus is on the applicant 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 applicant to provide EUIPO ‘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 Cancellation 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 applicant 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 applicant 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 applicant 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 applicant must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the applicant 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 applicant 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.

It must be mentioned from the outset that the applicant failed to provide any proof of the applicable law governing the trade name and respectively non-registered trade mark both for the name ‘Craftware’, used in the course of trade of more than mere local significance in Germany, France and United Kingdom on which the application is inter alia based. The applicant did not furnish any information or provide any evidence about the possible content of the invoked rights and what conditions are to be fulfilled in the present case in order for the applicant to be able to prohibit the use of the contested trade mark (emphasis added) under such laws in the Member States concerned.

In the present case, the applicant invokes in its observations only provisions of the Polish laws as follows:

• Article 132¹.1.1 of Polish Industrial Property Rights Acts of 30 June 2000, which states that:

“1. Having considered the opposition, described in art. 152^6a sec. 1 or art. 152¹⁷ sec. 1, considered as justified, no protection right is granted for a trademark: 1) the use of which infringes the personal or property rights of third parties”.

As it can be seen the abovementioned provisions are based on articles 152^6a sec. 1 or 152¹⁷ sec. 1 and the applicant failed to quote the content of the respective articles in the present proceedings. The Cancellation Division considers that the quoted article does not offer clear and sufficient information regarding the extent of protection of companies’ names under the Polish Law. The above provisions mention ‘personal or property rights of third parties’ and it is not clear if the companies’ names, trade names or non-registered marks are amongst such rights and not even that they enjoy protection.

This information is neither furnished by the invoked Articles 23 and 24 of the Polish Civil Code of 23 April 1964 (hereinafter PCC) which state that:

23 “Moral rights, in particular health, freedom, honor, freedom of conscience, name or pseudonym, image, the secret of correspondence, immunity of a flat, scientific, artistic, inventive and rationalizing creativity, remain protected under civil law regardless of the protection provided for in other regulations”.

24 “The one whose moral right is threatened by someone else's actions may demand that this action be stopped, unless it is not unlawful. In the event of a breach, one may also request that the person who committed the violation has completed the actions necessary to remove its consequences, in particular to submit a declaration of appropriate content and in an appropriate form. Under the rules provided for in the Code, one may also demand monetary compensation or payment of an appropriate sum of money for the indicated social purpose”.

Article 23 PCC regulates the protection of personal interests of natural persons, such as the protection of a name. From the above mentioned provisions it is clear that the rights under Article 23 of the Polish Civil Code are personality rights and not commercial rights. The commercial dimension is relevant only to the extent that the personality rights are exploited so as to gain profit in commerce.

The case law on which the applicant relies does not contain additional elements which would help defining the scope of protection of the earlier rights invoked by the applicant. The Judgement of 10 January 2002 of the High Administrative Court in case II SA 3390/01 states that “The registration of the word trademark, corresponding with the designation of another enterprise used by them before the trademark was registered, infringes the personal interests of that company” and in its Judgement of 23 August 2006 the Provincial Administrative Court in Warsaw, VI SA/Wa 1158/06 ruled that: “The premise for the invalidation of the right arising from registration of a trademark (…) is the infringement of personal and property rights of third parties, including the right to the company name”.

However, there is no further information about what is understood by personal interests of a company and whether or not a trade name or company name are part of the personal interest of a company and neither what is the extent of protection of such rights against trade marks that “correspond to designations of other enterprise”. Furthermore, there is no explanation of or other information regarding legal grounds that might be useful for the Cancellation Division to comprehend what was meant in the Polish legislature by the expression the right to a company name and whether or not this includes or refers to the protection of a name under which an owner conducts an economic activity.

Article 8(4) EUTMR is aimed at protecting signs used in the course of trade other than registered trade marks. Therefore, it refers to business identifiers, namely ‘non-registered trade marks’ and ‘other signs used in the course of trade’ such as trade names, company names, establishment names, titles of publications or similar works and domain names that are protected by law by means of exclusive rights.

‘Other signs used in the course of trade’ is a broad category that is not enumerated in Article 8(4) EUTMR. Although the signs covered by Article 8(4) EUTMR fall within the broad category of ‘intellectual property rights’, not all intellectual property rights are ‘signs’ for the purposes of Article 8(4) EUTMR. When assessing which kind of intellectual property rights can be invoked under Article 8(4) EUTMR and which cannot, a European standard applies. The distinction follows from the scheme of the EUTMR and, in particular, from the differentiation made between the kinds of earlier signs upon which an application for a declaration of invalidity under Article 60(1)(c) may be based under Article 8(4) EUTMR and the types of further rights that may be the basis for invalidity under Article 60(2) EUTMR. While Article 8(4) EUTMR refers to signs (‘non-registered trade mark or another signs used in the course of trade’), Article 60(2) EUTMR refers to a broader set of rights: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; and (d) an industrial property right. Since this distinction is contained in the EUTMR, the classification of a right under the respective national law is not decisive, and it is immaterial whether the national law governing the respective sign or industrial property right treats both types of rights in one and the same law.

Furthermore, it is not clear from the above-mentioned judgements whether the distinction to which a European standard applies is reflected under the Polish legislation since the applicant submitted only the translation of one paragraph from each judgement from which the Cancelation Division cannot grasp which particular rights were invoked before the courts and which was the assessment of the courts regarding those rights.

The applicant further claimed the applicability of Article 10 of the Act on Unfair Competition on 16 April 1993 which states that:

1. An act of unfair competition is the designation of goods or services or a lack thereof which may mislead customers as to the origin, quantity, quality, ingredients, manner of performance, suitability, applicability, repair, maintenance or other essential characteristics of goods or services, and the concealment of the risks associated with using them.

2. The act of unfair competition is also the placing on the market of goods in packaging that can cause the effects specified in paragraph 1, unless the use of such packaging is justified by technical reasons.

The applicant explains that this law ‘protects the market participants from misleading as to origin and other essential characteristics (properties) of goods or services. The misleading designation includes all markings individualizing the goods, in particular trademarks and company names as well as any other characteristic elements individualizing the producer or distributor.’

However the abovementioned article does not contain clear provisions that would give the applicant the right to prohibit the use of a subsequent trade mark and the applicant did not submit further case-law that could serve to shed a light in this matter.

Consequently, the provisions submitted by the applicant and its line of arguments refer on one hand to the protection of personal rights that do not qualify as signs used in the course of trade within the meaning of Article 8(4) EUTMR, on the other hand they fail to shed light on the extent of protection of companies’ name or trade names. Furthermore, the single paragraphs translated from the quoted case law are unable to add any clarity to the invoked legal articles. Finally, as regards the claimed non-registered trade mark, the quoted article does not give any clear information about the conditions to be fulfilled for the applicant to have the right to prohibit the use of the contested trade mark.

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 EUTM proprietor to exercise the right of defence. In some cases it is particularly useful to submit evidence of relevant case-law and/or jurisprudence interpreting the law invoked. Although this was done in the present case the translated paragraphs are insufficient to compensate the lack of clarity of the invoked legal provisions.

The Office must effectively assess the applicability of the ground for refusal invoked. In order to ensure the correct application of the law invoked, the Office has the power to verify, by whatever means it deems appropriate, the content, the conditions governing the application and the scope of the provisions of the applicable law relied upon by the applicant (27/03/2014, C 530/12 P, Mano, EU:C:2014:186, § 44-46), while respecting the parties’ right to be heard. If, after verifying the evidence submitted, the Office is of the opinion that the parties’ proposed interpretation or application of the law invoked was inaccurate, it can introduce new and/or additional elements. In order to respect the parties’ rights to be heard, the Office will invite the parties to comment on these elements, where appropriate.

This power of verification is however limited to ensuring the accurate application of the law relied upon by the applicant. It does not therefore discharge the applicant from the burden of proof and it cannot serve to substitute the applicant in adducing the appropriate law for the purposes of its case (decision of 02/06/2014, R 1587/2013-4, GROUP, § 26, and decision of 30/06/2014, R 2256/2013-2, (+) ENERGY / ENERGETIX, § 26).

The Cancellation Division considers that the principles settled by the Court in the judgment of case C-530/12P cannot be applied in the present case. It is clear from the cited case-law, that the power of verification of the Office becomes incident only where the applicant points out, explains and demonstrates the provisions of the national law and the legal context relied upon in that regard, as a condition for the substantiation of the earlier rights relied upon, which the applicant ab initio failed to do. As explained in detail above, the applicant did not submit sufficient information on the legal protection granted to the types of earlier rights invoked, namely company name, trade name and non-registered trade mark in Poland. Furthermore, it provided absolutely no information on the applicable national law governing the earlier rights claimed to have been used in the other territories, namely France, Germany and the United Kingdom.

As at least one of the necessary requirements of Article 8(4) EUTMR is not met, the application for a declaration of invalidity is not well founded under Article 60(1)(c) in connection with Article 8(4) EUTMR.

B. RIGHT TO A NAME - ARTICLE 60(2)(a) EUTMR

Pursuant Article 60(2) EUTMR, a European Union trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the European Union legislation or national law governing its protection, and in particular:

(a) a right to a name;

(b) a right of personal portrayal;

(c) a copyright;

(d) an industrial property right.

An EUTM is liable to be declared invalid on the basis of the rights mentioned above where the use of the trade mark could be prohibited under the European Union or national law governing their protection. This is not an exhaustive list of such earlier rights.

The applicant ticked the box in the invalidity application form to indicate that it based its application on the ground of Article 60(2) EUTMR, and invoked a right in the name Craftware sp. Zo.o which is in fact its corporate/business/company name (the official designation) registered in the Polish commercial register in 2009 under No 328647. However, this name is not an earlier right that can be invoked under Article 60(2) EUTMR. As it was already assessed in detail above in Section A, the use of a company/business name may give rise to rights that can be the basis for a request for invalidity under Article 60(1) EUTMR in connection with Article 8(4) EUTMR and, in fact, the applicant claimed the denomination Craftware as a trade and company name under this article. Reference is made to the above findings which apply mutatis mutandis for the sign Craftware sp. Zo.o. In fact the applicant itself referred to the corporate name Craftware under the Article 8(4) EUTMR specifying that “a corporate name or company name is the official designation of an undertaking, in most cases registered in the respective national commercial register. Article 8 (4) of regulation 2017/1001 requires that actual use be shown, even if national law vests in the holder of such a name the right to prohibit the use of a subsequent trade mark on the basis of registration alone.” and the corporate name is the official designation of an undertaking, which is registered in the respective national commercial register since 29 April 2009. This proves that the first use of designation Craftware in Poland was in 2009.”

Article 60(2) EUTMR applies only where the invoked rights are of such a nature that they are not considered typical rights to be invoked in cancellation proceedings under Article 60(1) EUTMR.

Therefore, the claim under Article 60(2) EUTMR as based on a right to a name is rejected.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected in its entirety.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case, the EUTM proprietor did not appoint a professional representative within the meaning of Article 120 EUTMR and, therefore, it did not incur representation costs.

The Cancellation Division

Oana-Alina STURZA

Ioana MOISESCU

Birgit FILTENBORG

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 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.