OPPOSITION No B 3 080 604

Tivoli A/S, Vesterbrogade 3, 1630 København V, Denmark (opponent), represented by Sofie Møller Nielsen, Vesterbrogade 3, 1630 Copenhagne, Denmark (employee representative)

a g a i n s t

Meger (Dalian) Health Technology Co., Ltd., No. 1, Building 29, Hongyi Community, Youyi Subdistrict, Jinzhou District, 116000 Dalian, China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 604 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 of European Union trade mark application No 18 013 704 for the figurative mark , namely against all the goods in Class 10 The opposition is based on Danish trade mark registration No 200 304 186 for the word mark TIVOLI for amusement park services in Class 41. The opponent invoked Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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, 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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

Together with the notice of opposition the opponent submitted the following information:

• Two judgments issued by the Danish Supreme Court, matter U.2005.1438H of
  1 February 2005 and matter U.2010.3203 of 16 September 2010, in Danish language;

• Screenshot of the website Tivoli.dk, showing the picture of a bird and the words ‘Påske i Tivoli’ written across it.

According to Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR, the evidence submitted to substantiate the opposition referred to in Article 7(2)(f) EUTMDR (such as the evidence of reputation) may be submitted in any official language of the Union. Furthermore, pursuant to Article 24 EUTMIR, where the language of such documents is not the language of the proceedings as determined in accordance with Article 146 EUTMR, the Office may, of its own motion or upon reasoned request by the other party, require that a translation be submitted in that language within a specified period.

In the present case the two judgments issued by the Danish Supreme Court are not in the language of the proceedings.

On 10/03/2020 the opponent was given two months to submit the respective translations of the said judgments. This time limit expired on 20/05/2020.

The opponent submitted the necessary translations on 09/06/2020, that is, after the expiry of the abovementioned time limit.

According to Article 7(4) EUTMDR, translations submitted after the expiry of the relevant time limits must not be taken into account.

For the sake of completeness, it is noted that the translations would have not sufficed to meet the requirements laid down in Article 7(2) EUTMDR. As a matter of principle, although previous national decisions are not binding per se, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings, which is the case here. There might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex officio facts known to them directly, whereas, under Article 95 EUTMR, the Office may not.

Therefore, in order to address and examine the decisions’ relevance, the Office must be able to assess the decisions’ content with a reasonable degree of certainty. This is only possible if the conditions of law and facts on the basis of which they were taken are made clear. However, the opponent has only submitted a translation of the ‘summary’ of the Danish Supreme Court’s decisions. It is not clear whether this summary was made for the sake of the translation or whether a part of the decisions summarising the case was translated. Moreover, the summary summarizes the facts and procedural history of each of the two cases but does not reflect what the Court said about the earlier mark’s reputation as it merely refers to the mark as being ‘well known’ but does not contain any information about how the requirement of reputation is defined or interpreted. There is no information about the evidence submitted that could lead to a finding that the earlier mark is reputed. In addition, according to the dates indicated above, both judgments are quite old and cannot, on their own, serve to corroborate the reputation claim at the relevant date (which is the filing of the contested mark on 24/01/2019). Consequently, even had these materials been submitted in the prescribed deadline they would not suffice to prove that the earlier mark had acquired a reputation.

As regards the second piece of evidence, it is a mere screenshot of the website Tivoli.dk and does not include any information whatsoever on the question of recognition. Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The Court has held that this knowledge threshold requirement must be principally assessed on the basis of quantitative criteria. One single screenshot from a website (considering the above analysis in relation to the submitted judgments) is manifestly insufficient to fulfil this requirement. If, as the opponent alleges, the website is for Tivoli amusement park, the opponent did not provide any information that would indicate any degree of recognition. The opponent could have provided an array of documentation to support its claims on the reputation of its mark, such as verifiable information concerning the numbers of visitors, information on advertising exposure and expenses, press articles or indeed any number of documents that may have supported the opponent’s claims that the park is visited by 4.6 million people annually and is reputed.

Given that the abovementioned judgments issued by the Danish Supreme Court cannot be taken into account and that the screenshot is manifestly insufficient to meet the requirements laid down in Article 7(2) EUTMDR, the opponent failed to establish that the trade mark on which the opposition is based has a reputation.

The Opposition Division notes that in its submissions attached to the opposition notice the opponent indicated that it is the proprietor of four trade marks. However, the additional trade marks were not invoked as basis of the opposition. Even if this had been the case, it would have not made any difference as the only ground invoked is 8(5) EUTMR. Due to the insufficient evidence proving reputation the opposition would have not been successful in any case.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met and that this ground is the only ground on which the opponent based its opposition, the opposition must be rejected as unfounded.

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

Vanessa PAGE

Christian STEUDTNER

Denitza STOYANOVA-VALCHANOVA

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.