OPPOSITION No B 3 068 885

Innosilicon Technology Co., Ltd., D605-610, 99# RenAi Road, SuZhou Industrial Park, 215123, Suzhou, China (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008, Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen Tengyao Dianzi Shangwu Co.,Ltd. limited company, Nanshan Yuehai Jiedao Yuehai Dasha Zhongbu 1319, 518000 Shenzhen, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 11/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 885 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 in Class 9 of European Union trade mark application No 17 929 501  (figurative mark). The opposition is based on the company name ‘Innosilicon Technology Co., Ltd.’ and on the trade name , both used in the course of trade in the following territories: Germany, Belgium, Denmark, Spain, Finland, Hungary, Latvia, Malta, Portugal, Romania, Sweden, United Kingdom, Netherlands, Lithuania, Ireland, France, Estonia, Slovakia, Cyprus, Austria, Bulgaria, Croatia, Slovenia, EUIPO, Greece, Italy, Luxembourg, Poland and the Czech Republic. 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.

1) The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s company name ‘Innosilicon Technology Co., Ltd.’ and trade name , used in the course of trade in the following territories: Belgium, Denmark, Finland, Hungary, Latvia, Malta, Portugal, Romania, Sweden, United Kingdom, Netherlands, Lithuania, Ireland, Estonia, Slovakia, Cyprus, Austria, Bulgaria, Croatia, Slovenia, EUIPO, Greece, Luxembourg, Poland and the Czech Republic.

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 information on the legal protection granted to the type of trade signs invoked, namely a company name and a trade name in Belgium, Denmark, Finland, Hungary, Latvia, Malta, Portugal, Romania, Sweden, United Kingdom, Netherlands, Lithuania, Ireland, Estonia, Slovakia, Cyprus, Austria, Bulgaria, Croatia, Slovenia, EUIPO, Greece, Luxembourg, Poland and the Czech Republic. 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 Member States mentioned by the opponent. The opponent did not submit any information, argumentation, jurisprudence and/or evidence of fulfilment of the conditions of acquisition and of the scope of protection of the rights invoked. It did not submit reference and the content (text) of any the applicable provisions, including in the respective original languages.

Pursuant to Article 8(4) EUTMR, the applicable law may be the law of a Member State or European Union law. As regards the territory identified by the opponent as ‘EUIPO’, even if it assumed that the opponent’s intention was to indicate the European Union, the opponent failed to provide the necessary information. Although in cases where EU law is relied upon, the opponent is not obliged to provide the content (text) of the law invoked, the opponent has to provide particulars proving the fulfilment of the conditions under the relevant provisions of European Union law. The opponent failed to submit such information.

Therefore, it is considered that the opponent failed to submit the necessary 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 Union legislation and/or the laws in each of the Member States mentioned by the opponent.

Given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition is not well founded under Article 8(4) EUTMR insofar as based on the company name ‘Innosilicon Technology Co., Ltd.’ and the trade name , used in the course of trade in Belgium, Denmark, Finland, Hungary, Latvia, Malta, Portugal, Romania, Sweden, United Kingdom, Netherlands, Lithuania, Ireland, Estonia, Slovakia, Cyprus, Austria, Bulgaria, Croatia, Slovenia, EUIPO, Greece, Luxembourg, Poland and the Czech Republic.

2) The Opposition Division will now proceed to examine the opposition in relation to the opponent’s company name ‘Innosilicon Technology Co., Ltd.’ and trade name , used in the course of trade in the remaining territories, namely: Germany, France, Spain and Italy.

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).

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 12/07/2018. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in Germany, France, Spain and Italy prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for Research and development, design and sales of High-end integrated circuits and related applications, and provide supporting technical services; import and export of the electronic equipment and high-end integrated circuits; computer servers; power supply.

On 16/04/2019 the opponent filed the following evidence:

General evidence

• Annex 1: Information on the company name Innosilicon Technology Co.Ltd. from the Chinese authorities and translation into English (pages 21 to 26).

Specific country evidence

France

• Annex 2: One invoice and a respective delivery note showing the shipment of goods to France (pages 27 to 30). The invoice is dated 25/07/2018 (after the relevant date).

• Annex 3: Extract showing provisions of the French IP law and translation into English (pages 31 to 35).

Spain

• Annex 4: Two invoices and respective delivery notes showing the shipment of goods to Spain (dated 22/08/2018 and 10/09/2018, after the relevant date) and printouts of 16/04/2019 of several websites (amazon.es, innosilicon.com and ebay.es) (pages 36 to 52).

• Annex 5: Extract showing provisions of the Spanish national law (pages 53 to 56).

Germany

• Annex 6: Two invoices and delivery notes showing the shipment of goods to Germany (pages 57 to 61). One of invoices is dated 26/04/2018 (in the relevant period) and the other is dated 07/08/2018 (after the relevant date).

• Annex 7: Extract showing provisions of the German national law and translation into English (pages 62 to 70).

Italy

• Annex 8: Three invoices and delivery notes referring to Italy (pages 71 to 81). Two of the invoices are dated 14/06/2018 (in the relevant period) and one is dated 28/08/2018 (after the relevant date).

• Annex 9: Extract showing provisions of the Italian IP Code and translation into English (pages 82 to 92).

• Annex 10: Invoices and delivery notes referring to Romania, Slovakia, Slovenia, United Kingdom, Bulgaria, Estonia, Greece, Hungary, Latvia, Poland and Portugal (pages 93 to 149).

Assessment of the evidence

Having examined the evidence, the Opposition Division considers that the opponent failed to prove that the company name ‘Innosilicon Technology Co., Ltd.’ and the trade name were used in the course of trade of more than mere local significance in the mentioned territories prior to the date of filing of the contested EUTMA, namely prior to 12/07/2018.

Annex 1 is a company registration certificate and does not show any actual use on the marketplace. Annex 10 refers to territories other than the examined ones and is not relevant. Likewise, Annexes 3, 5, 7 and 9 are not relevant in relation to the assessment of use in the course of trade, as they only refer to legal provisions. The invoices, delivery notes and website printouts are indeed relevant evidence. However, most of them are dated after the relevant date.

As regards France, the opponent filed only one invoice and the accompanying delivery note and these are dated after the relevant date. Similarly, as regards Spain, all the evidence filed is dated after the relevant date. Therefore, the opponent failed to show any use of its signs in Spain and France prior to filing date of the contested trade mark. Consequently, use of more than mere local significance has not been proven in Spain and in France.

In relation to the territory of Germany, there is only one invoice and respective delivery note referring to use before the relevant date. As regards Italy, there are only two relevant invoices/delivery notes, which are addressed to the same customer and are of the same date. Although the amounts billed are not small, the Opposition Division considers that the existence of one customer in territories with the size of Italy and Germany, does not provide a convincing picture of use in the course of trade of more than mere local significance of the opponents’ signs before and at the time of the filing of the contested trade mark. As mentioned above, 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 in a substantial part of the relevant territory.

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Therefore, bearing in mind the limited length, spread and frequency of use, the lack of information on advertising under the signs and the media used for that advertising, including the distribution of the advertising, it is concluded that the evidence of use in relation to Italy and Germany is insufficient to show that the signs were used in the course of trade of more than mere local significance.

Considering all the above, it is concluded that the evidence submitted by the opponent is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the goods and services on which the opposition was based before the relevant date and in the relevant territories, namely Germany, France, Spain and Italy.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must also be rejected as unfounded insofar as based on the company name ‘Innosilicon Technology Co., Ltd.’ and trade name , used in the course of trade in the remaining territories, namely: Germany, France, Spain and Italy.

4. Conclusion

Considering all the above, the opposition is 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, 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

Jakub MROZOWSKI

Liliya YORDANOVA

Gueorgui IVANOV

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.