OPPOSITION Nо B 3 105 147

Alliance Wine Company Limited, 7 Beechfield Road, Willowyard Industrial Estate, Beith, Ayshire KA15 1LN, United Kingdom (opponent), represented by Murgitroyd & Company, Murgitroyd House 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative) 

 

a g a i n s t

 

SDLF SAS, 13 Place Massena, 06000 Nice, France (applicant).

On 07/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 105 147 is rejected in its entirety.

 

2.	The opponent bears the costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 110 023 (figurative mark), namely against all the goods in Class 33. The opposition is based on the following earlier rights:

- United Kingdom trade mark registration No 2 458 424, LA VIE EN ROSE (word mark);

- Non-registered word mark LA VIE EN ROSE claimed in Austria, Belgium, Bulgaria, the Czech Republic, Cyprus, Croatia, Denmark, the European Union, Estonia, Germany, France, Finland, Greece, Hungary, Ireland, Lithuania, Latvia, Italy, Luxembourg, Malta, the Netherlands, Romania, Portugal, Poland, Slovakia, Slovenia, Spain, the United Kingdom and Sweden.

The opponent invoked Article 8(1)(a) and (b) EUTMR and Article 8(5) EUTMR in relation to the UK registered trade mark and Article 8(4) EUTMR in relation to the non-registered trade marks.

EARLIER UK RIGHTS

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registration No 2 458 424 and the United Kingdom non-registered trade mark LA VIE EN ROSE no longer constitute a valid basis of the opposition.

 

The opposition must therefore be rejected as far as it is based on these earlier rights.

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

The opponent invoked under the grounds of Article 8(4) EUTMR an EU non-registered trade mark ‘LA VIE EN ROSE’ (in addition to non-registered trade marks claimed in Austria, Belgium, Bulgaria, the Czech Republic, Cyprus, Croatia, Denmark, Estonia, Germany, France, Finland, Greece, Hungary, Ireland, Lithuania, Latvia, Italy, Luxembourg, Malta, the Netherlands, Romania, Portugal, Poland, Slovakia, Slovenia, Spain and Sweden).

The Opposition Division notes that non-registered trade marks are not harmonised at EU level and these rights are completely governed by national laws. Consequently, an EU non-registered trade mark as such does not exist and it is only at Member State level that such rights can form a valid basis for opposition under these grounds. Consequently, such a right is not an eligible basis for opposition under Article 8(4) EUTMR.

Furthermore, the opposition cannot succeed also on the basis of the non-registered trade mark ‘LA VIE EN ROSE’ claimed in Austria, Belgium, Bulgaria, the Czech Republic, Cyprus, Croatia, Denmark, Estonia, Germany, France, Finland, Greece, Hungary, Ireland, Lithuania, Latvia, Italy, Luxembourg, Malta, the Netherlands, Romania, Portugal, Poland, Slovakia, Slovenia, Spain and Sweden, for the reasons set out below:

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.

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.

 

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.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier signs in the course of trade.

On 23/12/2019, 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 further to 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 expired on 18/05/2020.

The opponent did not submit any evidence of use in the course of trade of any of the earlier non-registered trade marks on which the opposition is based.

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

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

 

 

 

The Opposition Division

 

 

Claudia MARTINI

Helena GRANADO CARPENTER

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.