OPPOSITION No B 3 002 279

Prinz Sportswear Dawid Wawrzyniak, woj. wielkopolskie, pow. obornicki, gm. Oborniki, miejsc. Bogdanowo, nr 12A, 64600 Bogdanowo, Poland (opponent), represented by Rafał Tomasz Malujda, ul. Cyfrowa 6, 71-441, Szczecin, Poland (professional representative)

a g a i n s t

Uniq GmbH, Rhenus Platz 2, 59439 Holzwickede, Germany (applicant), represented by Meinke Dabringhaus & Partner, Rosa-Luxemburg-Str. 18, 44141 Dortmund, Germany (professional representative).

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 002 279 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services in Classes 25, 35 and 41 of European Union trade mark application No 17 145 616 ‘Prinz Sportlich’ (word mark). The opposition is based on the non-registered trade mark ‘PRINZ SPORTSWEAR’ (word mark) in the European Union, Germany, Poland and the United Kingdom. The opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARK

In the notice of opposition, the opponent indicated ‘EUIPO; Germany; Poland; United Kingdom’ in the box ‘Territory(ies)’ which indicates the territories where the earlier non-registered trade mark is invoked. The Opposition Division interprets this that the opponent claims rights to the earlier non-registered trade mark, first, in the European Union under the EU law, and second, in Germany, Poland and the United Kingdom under the respective national laws of these countries.

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.

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 (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. 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).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

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 document with the text of the laws invoked in the relevant territories. It only briefly referred in its observations to the provisions of the Polish and German Unfair Competition Acts without however submitting the original text of the laws and the necessary translations into the language of the present proceedings.

Moreover, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark ‘PRINZ SPORTSWEAR’. 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 territories mentioned by the opponent.

The opponent argues that the EUIPO knows the law and therefore it is not necessary to submit the text of the law. This argument must be rejected by reference to the provisions of EUTMDR and the case-law mentioned above which make clear that it is up to the opponent to establish the content (text) of the law invoked.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Victoria DAFAUCE MENENDEZ

Vít MAHELKA

Cindy BAREL

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.