OPPOSITION Nо B 3 093 139

 

Kilargo Sp. Z O.O., ul. Torowa 13, 95-082 Chechło 1, Dobroń, Poland (opponent), represented by Sobajda & Orlińska Kancelaria Patentowa Sp. J., ul. Dworkowa 2/67, 00-784 Warsaw, Poland (professional representative) 

 

a g a i n s t

 

Natural Ice Fruits, Inc., 524 Mid Florida Drive, 32824 Orlando, United States of America (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º Dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 15/09/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 093 139 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 035 216  (figurative mark), namely against some of the goods and services in Classes 30 and 35. The opposition is based on well-known trade mark (Poland) (figurative mark) and non-registered trade mark (Czech Republic, Poland) (figurative mark). The opponent invoked Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) and Article 8(4) EUTMR.

 

SUBSTANTIATION OF THE WELL-KNOWN 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 is restricted in this examination to the facts, evidence and arguments submitted 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 submit 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) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

In particular, if the opposition is based on a well-known trade mark within the meaning of Article 8(2)(c) EUTMR, the opposing party must submit evidence showing that this mark is well known in the relevant territory for the goods and services on which the opposition is based — Article 7(2)(b) EUTMDR.

 

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based, namely well-known mark (Poland) (figurative mark).

 

On 16/09/2019, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended first on the opponent’s request, further with the Decision No EX-20-3 of the Executive Director of the Office of 16 March 2020 concerning the extension of time limits and the subsequent Decision No EX-20-4 of 29 April 2020 and finally on the opponents request and expired on 21/06/2020.

 

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark. Moreover, the opponent did not make reference to evidence accessible online from a source recognized by the Office.

 

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

 

The opposition must therefore be rejected as unfounded, as far as it is based on the earlier well known mark in Poland in relation to Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) 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.

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 submitted 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) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

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.

Moreover, 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).

As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation (Article 7(4) EUTMDR, first sentence). However, a mere translation of the applicable law does not itself constitute proof and cannot substitute the original; therefore, the translation alone is not considered sufficient to prove the law invoked.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade, namely non-registered trade mark (Czech Republic, Poland) (figurative mark).

 

On 16/09/2019, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended first on the opponent’s request, further with the Decision No EX-20-3 of the Executive Director of the Office of 16 March 2020 concerning the extension of time limits and the subsequent Decision No EX-20-4 of 29 April 2020 and finally on the opponents request and expired on 21/06/2020. The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

The mere fact that the sign is registered in accordance with the requirements of the respective national law is not in itself sufficient for the application of Article 8(4) EUTMR. As mentioned above, the use requirement in Article 8(4) EUTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a business identifier alone, that is, without any requirement relating to use.

 

The links available in the opposition notice lead to the relevant content of the Polish law in English only. As mentioned above, the translation alone is not sufficient to prove the law invoked.

Given that the necessary requirements of Article 8(4) EUTMR are not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

 

Consequently, the opposition must be rejected as unfounded 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

  

Monika CISZEWSKA

Reet ESCRIBANO

Maria José LOPEZ BASSETS

 

 

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.