OPPOSITION No B 3 068 625

Danish Genetics A/S, Voddervej 1, 6780 Frifelt, Skærbæk, Denmark (opponent), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen S, Denmark (professional representative)

a g a i n s t

Breeders of Denmark A/S, Søndergård Alle 22, 6500 Vojens, Denmark (applicant), represented by Berg Advokater Advokatanpartsselskab, Rådhuscentret 21, 6500 Vojens, Denmark (professional representative).

On 05/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 625 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 of European Union trade mark application No 17 939 015 (figurative mark), namely against all the goods and services in Classes 31 and 44. The opposition is based on European Union and Danish non-registered trade marks ‘Danish Genetics’ and company names ‘Danish Genetics A/S’ in relation to goods and services in Classes 31 and 44. In its observations filed together with the notice of opposition, the opponent also refers to trade marks used in (inter alia) other countries of the European Union, in particular in the Netherlands and Germany. The opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARKS

1. REPUTATION

In its observations filed together with the notice of opposition and, therefore, within the opposition period, the opponent refers to its reputation and to the deliberate attempt of the applicant to benefit from this reputation by means of parasitism and free-riding.

In this regard, although Article 8(5) EUTMR was not explicitly claimed by the opponent, for the sake of completeness the Opposition Division will consider the opponent’s allegation as an implicit claim of the mentioned ground.

However, according to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR (emphasis added), the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the opposition is based on a trade mark that is not registered. However, the grounds of Article 8(5) EUTMR are applicable only when the earlier right is a registered trade mark.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as it is based on the abovementioned non-registered trade mark.

2. EU NON-REGISTERED TRADE MARK AND COMPANY NAME

Furthermore, in the notice of opposition the opponent claims to be the owner of a non-registered trade mark and a company name in the European Union (EUIPO).

Non-registered use-based trade marks exist in a number of the Member States and are signs that indicate the commercial origin of a product or service. A corporate name or company name is the official designation of an undertaking, in most cases registered in the respective national commercial register.

As regards these rights, the Opposition Division notes that non-registered trade marks and company names are not protected at European Union level but only under the national legislation of the Member States. Hence, it follows that a European Union non-registered trade mark and company name are not eligible bases for opposition under Article 8(4) EUTMR. It follows from the above that the opposition should be considered as not well founded under Article 8(4) EUTMR as far as it is based on these rights.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent claims to be owner of a Danish non-registered trade mark ‘Danish Genetics’ and a Danish company name ‘Danish Genetics A/S’ in relation to goods and services in Classes 31 and 44 since 30/10/1991 (date of foundation of the company and registration thereof in the Danish Company Registry - CVR). In its observations filed together with the notice of opposition, the opponent also refers to trade marks used in (inter alia) other countries of the European Union, in particular in the Netherlands and Germany.

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.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the second requirement.

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 (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, as regards any purported non-registered trade mark rights in the Netherlands and Germany, the opponent did not submit any information on the legal protection granted to the type of trade signs invoked. 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.

In relation to the Danish non-registered trade mark ‘Danish Genetics’ and the Danish company name ‘Danish Genetics A/S’, even if the opponent identified the relevant legal provisions by reference to the (Danish) Consolidated Trade Marks Act No 223 of 26 February 2017 (Section 3, Subsection 1, No 2 and Section 4, Subsection 1, No 1 & 2) and the opponent vaguely refers in its observations to the establishment of rights by commencement of use and the entitlement to prevent the use and registration of contravening/infringing trade marks, there is no identification of the content (text) of the legal provisions invoked by adducing publications of the relevant provisions or jurisprudence. Therefore, the opponent did not submit sufficient information on the legal protection granted by the type of trade sign invoked because it did not submit appropriate evidence of the conditions of acquisition and of the scope of protection of the rights 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, 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

Mads Bjørn Georg JENSEN

Eva Inés PÉREZ SANTONJA

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.