OPPOSITION No B 3 011 445

El Pastor Trademark LTD, Highfield Lodge, 6 Wing Lanes, Pilton, Oakham, LE15 9NR, Rutland, United Kingdom (opponent), represented by Simons Muirhead & Burton LLP, 87‑91 Newman Street, W1T 3EY, London, United Kingdom (professional representative)

a g a i n s t

Ivo Ruczinski, Bismarckstr. 60, 202529 Hamburg, Germany (applicant), represented by Frederic Hannesen, Knesebeckstr. 61A, 10719 Berlin, Germany (professional representative).

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

DECISION:

1. Opposition No B 3 011 445 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 156 001, namely against all the services in Class 43. The opposition is based on a non-registered trade mark ‘EL PASTOR’ used in the course of trade in the United Kingdom. The opponent invoked Article 8(4) EUTMR.

EL PASTOR	Al Pastor
Earlier non-registered United Kingdom trade mark	Contested sign

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. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

Therefore, contrary to what the opponent submits, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered, and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the contested trade mark was filed on 28/08/2017. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for restaurant services; take-out restaurant services; providing food and drink for guests in restaurants; bar services.

On 06/07/2018 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Exhibit A: Table titled ‘El Pastor, profit and loss account for February 2017 – January 2018’ showing monthly income, net profits and lunch and dinner covers. According to the table, from February 2017 until the end of August 2017 the restaurant ‘El Pastor’ served on average several thousand covers per month.

• Exhibit B: ‘The List - National Restaurants Awards 2018’ of Estrella Damm, where ‘El Pastor’ is listed on place number 24.

• Exhibit C: Pictures of ‘EL PASTOR’ Mezcal bottle, not dated.

• Exhibit D: Press article from ‘The Caterer’, titled ‘El Pastor to open second London site’, dated 12/02/2018.

• Exhibit E: Press article from ‘Esquire Magazine’, titled ‘Meet The Brothers Redefining The London Eating Scene’, dated 26/09/2016 and describing the story behind various restaurants of the opponent, such as ‘Barrafina’ restaurant, opened in 2007, and ‘El Pastor’ soon to be open.

• Exhibit F:

  • A brochure ‘Harts Group 2017/18’ describing the portfolio of restaurants (Barrafina, Quo Vadis, El Pastor, Hambleton Hall, Harts Nottingham and Hambleton Bakery), rewards, activities and new projects of the group. According to the brochure ‘El Pastor Delivery Service’ was planned to be launched in September/October 2017; new restaurants ‘El Pastor Plaza’ and ‘Tacos El Pastor’ were planned to be opened at a new venue, Coal Drops Yard.

  • Review of the ‘El Pastor’ restaurant in ‘London Evening Standard’ dated 16/12/2016.

  • Review of ‘El Pastor’ restaurant in ‘Mail Online’, dated 07/01/2017;

  • Review of ‘El Pastor’ restaurant in ‘The Times’, dated 07/01/2017;

  • Review of ‘El Pastor’ restaurant in ‘Financial Time Magazine’, dated 27/01/2017.

• Exhibit G: Judgment of the Court of Appeal (Civil Division) in case No A3/2015/4394 of 23/11/2017.

• In its observations, the opponent claimed that it was part of the Hart Group, a 40‑year‑old restaurant business that had won prestigious restaurant awards in the UK for its restaurants ‘Barrafina’, ‘Quo Vadis’ and ‘Hambleton Bakery’, and that the owners of the Group won the ‘GQ Restaurateurs of the Year 2017’.

As previously mentioned, use in the course of trade of more than local significance must be established prior to the filing date of the contested trade mark, namely 28/08/2017. The evidence concerning use is limited to some data from the table ‘El Pastor, profit and loss account for February 2017 – January 2018’ originating from the opponent, four press reviews of a newly opened restaurant, ‘El Pastor’, and the press article about the opponent’s restaurant businesses, including those under names other than ‘El Pastor’. Other documents submitted refer to the period after the filing of the contested trade mark, are not dated (Mezcal bottle), or do not concern the mark ‘El Pastor’ but other restaurants of the opponent.

According to the Office Guidelines, as far as the use of the sign is concerned, in general, neither the territory of a city alone, even a large one, nor a regional district or province is of more than mere local significance. Although the Court and the Boards of Appeal have recognised that notable duration together with the economic dimension of use of a sign in the London area would be sufficient to recognise use in the course of trade of more than mere local significance (15/05/2017, T‑223/15, MORTON’S (fig.), EU:T:2017:333; 01/04/2011, R 354/2009‑2, FORTRESS (FIG. MARK)/FORTRESS et al.) these conditions have not been proven in the present case.

The evidence submitted, taken as a whole, shows that, prior to the filing of the contested mark, the opponent had recently opened a well-reviewed restaurant ‘El Pastor’ and had some presence in London in respect of ‘El Pastor’-branded restaurant services. The use of the sign is limited to a period of a few months and concerns only several thousand covers per month. The evidence concerning the success of the Harts Group as such is not indicative of the extent of use of the non-registered sign ‘El Pastor’.

Therefore, the evidence submitted does not prove use of an earlier sign ‘El Pastor’ in a substantial part of the United Kingdom market or that this sign has been used by the opponent in a sufficiently significant manner in the course of trade in the relevant territory in relation to the services concerned.

As outlined above, it is a requirement for the opposition to be successful under Article 8(4) EUTMR that the earlier sign must have been used in the course of trade of more than mere local significance prior to the filing of the contested trade mark. Since this has not been established, one of the necessary conditions contained in Article 8(4) EUTMR is not fulfilled, and the opposition is therefore not well founded under this Article and must be rejected.

Consequently, since it cannot change the outcome reached above, there is no need to further assess whether or not the evidence submitted is appropriate to prove the other necessary conditions contained in Article 8(4), namely the fulfilment of the conditions of acquisition of a United Kingdom non-registered trade mark and of the scope of protection of such right under the applicable national law of passing off, or whether the conditions of protection of the earlier right invoked vis-à-vis the contested mark have actually been met on the basis of the same.

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

Catherine MEDINA

Anna ZIÓŁKOWSKA

Begoña URIARTE VALIENTE

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.