OPPOSITION No B 3 081 233

Bartłomiej Krysiuk, Ul.Ks.Jana Twardowskiego 78, 15-170 Białystok, Poland (opponent), represented by Marcin Barański, ul. Śniadeckich 15/10, 60-773, Poznań, Poland (professional representative)

a g a i n s t

Krzysztof Drabikowski, Szosa baranowicka 106, 15-509 Sobolewo, Poland (applicant), represented by Ewa Winarska, M.C. Skłodowskiej 3 lok. 16c, 15-095 Białystok, Poland (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 233 is partially upheld, namely for the following contested goods and services:

Class 9: All goods in this class.

Class 35: Retail services in relation to jewellery; Mail order retail services for clothing; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to audio-visual equipment; Retail services via global computer networks related to foodstuffs; Retail services in relation to foodstuffs.

2. European Union trade mark application No 18 008 505 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 18 008 505 for the word mark ‘БАТЮШКА’. The opposition is based on, inter alia,

European Union trade mark registration No 17 959 555 for the figurative mark ;

non-registered mark and trade name for the sign BATUSHKA used in the course of trade in Poland for Magnetic tapes; Compact discs featuring music; Recorded tape cassettes; Pre-recorded DVDs featuring music; Phonograph records; Musical video recordings; Prerecorded videodiscs; Audio books; Downloadable digital music; Printed t-shirts; Track jackets; Hooded tops; Tops [clothing]; Providing multi-media entertainment via a website; Song publishing; Publication of posters; Publication of lyrics of songs in book form; Organising of festivals; Live band performances

and non-registered mark and trade name for the sign БАТЮЩКА used in the course of trade in Poland for Magnetic tapes; Compact discs featuring music; Recorded tape cassettes; Pre-recorded DVDs featuring music; Phonograph records; Musical video recordings; Prerecorded videodiscs; Audio books; Downloadable digital music; Printed t-shirts; Track jackets; Hooded tops; Tops [clothing]; Providing multi-media entertainment via a website; Song publishing; Publication of posters; Publication of lyrics of songs in book form; Organising of festivals; Live band performances. The opponent invoked Article 8(1) (b) and Article 8(4) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 959 555.

1. The goods and services

The services on which the opposition is based are the following:

Class 35: Retail services in relation to jewellery; Retail services in relation to foodstuffs; Retail services via global computer networks related to foodstuffs; Mail order retail services for clothing; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to audio-visual equipment; Retailing of audiovisual media.

The contested goods and services are the following:

Class 9: Tape cassettes; Musical cassettes; Audio cassettes; Recorded tape cassettes; Compact discs featuring music; Downloadable digital music; Prerecorded music videos; Prerecorded music compact discs; Downloadable video recordings featuring music; Digital music downloadable provided from the internet; Downloadable digital music provided from MP3 Internet web sites; Analogue convertors; Downloadable image files; Recorded data files; Media content; Downloadable ring tones for mobile phones; Telephone ring tones [downloadable]; Downloadable movies; Musical sound recordings; Downloadable musical sound recordings; Pre-recorded video compact discs; Pre-recorded DVDs featuring music; Pre-recorded DVDs; Prerecorded CD-Is; Prerecorded video cassettes featuring music; Prerecorded CD-ROMs; Records [sound recordings]; Recorded discs bearing sound; Musical recordings in the form of discs; Tape recordings of music; Video recordings; Audio recordings; Audio visual recordings; Pre-recorded audio tapes; Pre-recorded videos; Electronic publications, downloadable; Downloadable sound recordings.

Class 16: Posters; Placards of paper or cardboard; Photographic albums; Pamphlets; Printed brochures; Music magazines; Fanzines.

Class 35: Distribution of promotional matter; Distribution of advertising material; Negotiation of advertising contracts; Negotiation of commercial transactions for performing artists; Distribution of advertising, marketing and promotional material; Retail services in relation to jewellery; Mail order retail services for clothing; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to audio-visual equipment; Promotion [advertising] of concerts; Promotion of musical concerts; Production of advertising material; Production of advertising matter and commercials; Producing promotional videotapes, video discs, and audio visual recordings; Production of sound recordings for marketing purposes; Production of sound recordings for advertising purposes; Online advertisements; Retail services via global computer networks related to foodstuffs; Retail services in relation to foodstuffs.

Class 41: Arranging and conducting of concerts; Production of music concerts; Presentation of musical concerts; Entertainment by means of concerts; Fan clubs; Musical concerts by television; Arranging and conducting of music concerts; Fan club organisation; Presentation of live entertainment performances; Organisation of shows; Organisation of live musical performances; Arranging, conducting and organisation of concerts; Music performances; Musical entertainment; Entertainer services; Live entertainment; Rendering of musical entertainment by vocal groups; Rendering of musical entertainment by instrumental groups; Audio entertainment services; Entertainment services provided by vocalists; Entertainment services performed by a musical group; Entertainment services provided by performing artists; Entertainment services in the form of concert performances; Organisation of entertainment services; Live band performances; Performing of music and singing; Presentation of live performances by rock groups; Presentation of live performances by musical bands; Live music performances.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 9

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale).

However, it should be noted that the sale of goods is not a service within the meaning of the Nice Classification. Therefore, the activity of retail in goods as a service for which protection of an EUTM can be obtained does not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’.

Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

Retail services allow consumers to satisfy different shopping needs in one place and are usually directed at the general consumer. They can take place in a fixed location, such as a department store, supermarket, boutique or kiosk, or in the form of non-shop retailing, such as through the internet, by catalogue or mail order.

There is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

A low degree of similarity between the goods sold at retail and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer.

Therefore, it is considered that the contested tape cassettes; musical cassettes; audio cassettes; recorded tape cassettes; compact discs featuring music; downloadable digital music; prerecorded music videos; prerecorded music compact discs; downloadable video recordings featuring music; digital music downloadable provided from the internet; downloadable digital music provided from mp3 internet web sites; analogue convertors; downloadable image files; recorded data files; media content; downloadable ring tones for mobile phones; telephone ring tones [downloadable]; downloadable movies; musical sound recordings; downloadable musical sound recordings; pre-recorded video compact discs; pre-recorded dvds featuring music; pre-recorded dvds; prerecorded cd-is; prerecorded video cassettes featuring music; prerecorded cd-roms; records [sound recordings]; recorded discs bearing sound; musical recordings in the form of discs; tape recordings of music; video recordings; audio recordings; audio visual recordings; pre-recorded audio tapes; pre-recorded videos; electronic publications, downloadable; downloadable sound recordings are similar to a low degree with the opponent’s retail services in relation to audio-visual equipment; retailing of audiovisual media in Class 35 as they belong to the same market sector and are offered in the same department stores. Furthermore, they can be targeted at the same relevant public and have the same providers.

Contested goods in Class 16

The contested posters; placards of paper or cardboard; photographic albums; pamphlets; printed brochures; music magazines; fanzines are not similar to the opponent’s services. They belong on different market sectors, have different nature, purpose, distribution channels and commercial origin. Furthermore, neither they are complementary nor in competition.

Contested services in Class 35

The contested retail services in relation to jewellery; mail order retail services for clothing; retail services connected with the sale of clothing and clothing accessories; retail services in relation to audio-visual equipment; retail services via global computer networks related to foodstuffs; retail services in relation to foodstuffs are identical to the opponent’s services, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or overlap with, the contested services.

The remaining contested services are advertising services which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.. They are not similar to the opponent’s services as they have different purpose, normally have different distribution channels and are targeted at different relevant publics. Furthermore, they are usually provided by different undertakings and neither are complementary nor in competition.

Contested services in Class 41

The contested services arranging and conducting of concerts; production of music concerts; presentation of musical concerts; entertainment by means of concerts; fan clubs; musical concerts by television; arranging and conducting of music concerts; fan club organisation; presentation of live entertainment performances; organisation of shows; organisation of live musical performances; arranging, conducting and organisation of concerts; music performances; musical entertainment; entertainer services; live entertainment; rendering of musical entertainment by vocal groups; rendering of musical entertainment by instrumental groups; audio entertainment services; entertainment services provided by vocalists; entertainment services performed by a musical group; entertainment services provided by performing artists; entertainment services in the form of concert performances; organisation of entertainment services; live band performances; performing of music and singing; presentation of live performances by rock groups; presentation of live performances by musical bands; live music performances are entertainment services. They are not similar to the opponent’s retail services as they differ purpose normally have different distribution channels and are targeted at different relevant publics. Furthermore, they are usually provided by different undertakings and neither are complementary nor in competition.

2. The signs

	БАТЮШКА
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The marks under comparison only differ in the stylisation of the earlier mark. This feature of the earlier mark has barely impact on the visual, aural and conceptual comparison of the signs. Therefore, the marks are highly similar, if not even identical.

3. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and/or services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

As illustrated in the comparison of signs, their near identity implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding element and the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

As the degree of similarity between the signs clearly offsets the low degree of similarity between the contested goods and the opponent’s services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 959 555.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the European trade mark registration No 17 918 713 for the word mark BATUSHKA (currently under cancellation proceedings).

The other earlier right invoked by the opponent covers the same of the services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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

The opponent also based the opposition on non-registered mark and trade name for the sign ‘BATUSHKA’ used in the course of trade in Poland for magnetic tapes; compact discs featuring music; recorded tape cassettes; pre-recorded dvds featuring music; phonograph records; musical video recordings; prerecorded videodiscs; audio books; downloadable digital music; printed t-shirts; track jackets; hooded tops; tops [clothing]; providing multi-media entertainment via a website; song publishing; publication of posters; publication of lyrics of songs in book form; organising of festivals; live band performances; non-registered mark and trade name for the sign ‘БАТЮЩКА’ used in the course of trade in Poland for magnetic tapes; compact discs featuring music; recorded tape cassettes; pre-recorded dvds featuring music; phonograph records; musical video recordings; prerecorded videodiscs; audio books; downloadable digital music; printed t-shirts; track jackets; hooded tops; tops [clothing]; providing multi-media entertainment via a website; song publishing; publication of posters; publication of lyrics of songs in book form; organising of festivals; live band performances.

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).

In the present case, the contested trade mark was filed on 11/01/2019. 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 Poland prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the above mentioned goods and services.

On 11/10/2019 the opponent filed the following evidence:

• Copies of contracts for concert performance and artist dated 2017 and 2018 where Batushka appears as the name of musical band (referred as the Artist) represented by the company BADMUSIC.PL MATEUSZ KRYSIUK. Copies of compact disc licensing agreements dated 2016 between the company Witching Hours productions and a licensee for manufacturing and marketing facilities for compact discs of the recording of the artist Batushka together with some invoices dated 2016 issued by the licensee to the company Witching Hours productions for the production of metalwork, vinyl pressing, paper inner sleeves.

• Invoices dated between 2016 and 2018 issued by the company BADMUSIC.PL MATEUSZ KRYSIUK and Witching Hours productions concerning artist fee and product costs for performance of the band Batushka. Invoices dated between 2017 and 2018 issued from Brasil to the company Witching Hours productions concerning merchandising goods such as hoodies, tops, T-shirt. Invoices dated between 2016 and 2018 issued to the company Witching Hours productions and BADMUSIC.PL MATEUSZ KRYSIUK for different musical equipment, car landing, adverts, video material and printing with no mention of the earlier signs. Invoices dated between 2015 and 2018 issued to BADMUSIC.PL MATEUSZ KRYSIUK and Witching Hours productions for ‘Batushka Litourgiya CD’, ‘batuszka packages print’ and services related to the batushkaofficial.com website.

• Printouts regarding web domains batushkaofficial.com and batushkastore.com.pl, batushka.pl, batushkastore.com in the name of the opponent.

• Copies of contracts dated 2019 between members of the band ‘Batushka’ for the participation in the activities of the band. According to these contracts the opponent is the band leader.

• Screenshot from the official list of sales by ZPAV for the period 12/07/2019 and 18/07/2019 of album where appears the album Batushka – Hospodi.

• Pictures of covers of albums ‘Litourgiya’ and ‘Hospodi’:

• Screenshot of Batushka band profile on Facebook.

• Screenshot of the concert tour between 2016 and 2018 of the band announced on the website and on Facebook.

• Screenshot of the online articles and advertisements dated between 2017 and 2019 bearing a reference to “BATUSHKA” and “БАТЮШКА” as a band.

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. Therefore, they are signs that function as a trade mark. The rules and conditions governing acquisition of rights under the relevant national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the EUTMR concerning registered trade marks.

Article 8(4) EUTMR reflects the existence of such rights in Member States and grants the proprietors of non-registered marks the possibility of preventing the registration of an EUTM application where they would succeed in preventing use of that EUTM application under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later EUTM are satisfied and the other conditions of Article 8(4) EUTMR are met. As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition.

Trade names are the names used to identify businesses, as distinguished from trade marks that identify goods or services as produced or marketed by a particular undertaking.

A trade name is not necessarily identical with the corporate name or commercial name entered in a commercial or similar register as trade names can cover other non-registered names such as a sign that identifies and distinguishes a certain establishment. Trade names are protected as exclusive rights in all Member States.

Pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. If national legislation requires registration for national trade names, the respective provision is not applicable by virtue of Article 8 of the Paris Convention with respect to trade names held by a national of another contracting party to the Paris Convention. This applies as well in respect of nationals of a member of the WTO Agreement.

As regards the application of Article 8(4) EUTMR to trade names, where the trade name is invoked on the basis of the law of one of the Member States where a registration is a condition for the enforcement of rights in a trade name, the Office will apply this requirement where the Member State and the nationality of the opponent are the same, but will not apply this requirement in all other cases, since this would violate the provisions of Article 8 of the Paris Convention.

In the present case the evidence shows that ‘Batushka’ and its Cyrillic version ‘БАТЮШКА’ is used as the name of a musical band. The evidence does not show use of the earlier signs as a non-registered trade mark or trade name. The print outs regarding the web domains do not provide any information about the use of the earlier signs. The screenshot from the official list of sales is dated out of the relevant period and the pictures of covers of albums are undated. The copies of contracts between members of the band do not provide any information about the earlier sign although it is mentioned that the name of the band is also registered as a trade mark. The screenshot from Facebook, the concert tour and online articles also do not provide any information about the use of the earlier signs but only refers to Batushka as a band. The contracts for concert performance also refer to Batushka as the name of a band (The Artist) and do not provide any information about the use of the earlier signs. In the same way the invoices referred to the performances of the band that refer to the costs for the productions of the concerts of the band. The compact disc licensing agreements and relative invoices issued to the companies representing the band which refer to the manufacturing and marketing facilities for compact discs of the recording of the artist Batushka of general ‘printing’. These documents do not provide information about the fact that the earlier signs invoked by the opponent have been used of more than mere local significance. Moreover, they do not demonstrate the volume of sales by the opponent or any turnover in respect of such sales; they only fact proven by those invoices is that such goods were produced by a third party and sold to the companies representing the band, but they do not prove the opponent’s own sales of the same under the earlier non-registered marks invoked and it cannot be assumed by mere supposition that those goods were actually re-sold by the opponent in the relevant period. Therefore, these materials prove the existence on the market of this third party’s commercial activity. Furthermore, as regards the invoices of merchandising goods these items are not for sale purposes.

Genuine use cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T 382/08, Vogue, EU:T:2011:9, § 22). Genuine use implies real use on the market concerned for the purpose of identifying goods or services. Genuine use is therefore to be regarded as excluding minimal or insufficient use for the purpose of determining that a mark is being put to real, effective use on a given market.

In that respect, it must be noted that the he first requirement under Article 8(4) EUTMR is that the sign must be used in the course of trade.

The notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 47(2) and (3) EUTMR (30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 24-27). The aims and conditions connected with proof of genuine use of registered European Union or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) EUTMR (09/07/2010, T-430/08, Grain Millers, EU:T:2010:304, § 26; 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 143). Therefore, use must be interpreted according to the particular type of right at issue.

The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) EUTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (12/11/2002, C-206/01, Arsenal, EU:C:2002:651, § 40; 25/01/2007, C-48/05, Opel, EU:C:2007:55, § 18; 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 17).

Use of a sign relied on under Article 8(4) EUTMR must be made in accordance with the essential function of such a sign. This means that if an opponent relies on a non-registered trade mark or a trade name, proof of use of the sign as a band name would not be sufficient to substantiate the earlier rights. They are very different legal concepts. The proof furnished does not relate to these legal concepts and does not identify a specific commercial activity or a particular commercial origin, but instead the activities relating to a musical band.

Therefore, the opposition should be rejected as unfounded insofar 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Maria SLAVOVA

Francesca CANGERI

Aurelia PEREZ BARBER

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.