OPPOSITION Nо B 3 107 646

 

Vobro Spółka z ograniczoną odpowiedzialnością Spółka komandytowa, ul. Podgórna nr 78, 87-300 Brodnica, Poland (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative) 

 

a g a i n s t

 

Mieszko S.A., Aleje Jerozolimskie 181, 02-222 Warsaw, Poland (applicant), represented by Kancelaria Prawnopatentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative).

On 31/05/2021, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 107 646 is rejected in its entirety.

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

 

REASONS

 

On 02/01/2020, the opponent filed an opposition against all the goods in Class 30 of European Union trade mark application No 18 125 214 (figurative mark). The opposition is based on a figurative mark in the form of packaging , purportedly used in the course of trade in Poland, in relation to which the opponent invoked Article 8(4) 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.

 

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.

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).

Therefore, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered, and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

 

In the present case, the contested trade mark was filed on 16/09/2019. 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 in the form of packaging in connection with the goods/business activities on which the opposition is based, namely confectionery industry; sweets, chocolates, pralines, boxes of chocolates.

On 17/09/2020, the opponent filed the following evidence:

 

Enclosure 1: an extract from eSearch database regarding the European Union trade mark application No 18 125 212.

Enclosure 2: a table of unknown origin indicating, according to the opponent, the dates on which the opponent started to sell its ‘Cherry Paradise 105g’. All dates are in the second half of 2005. No depiction of the product/packaging is provided.

Enclosure 3: the article ‘Czekoladki Vobro – opinie, które Cię zaskoczą! (Vobro chocolates - opinions that will surprise you!)’ from the website www.nadmorski24.pl, published on 05/12/2017, partly translated into the language of the proceedings. The article mentions, inter alia, that ‘Cherry Paradise’ chocolate box contains chocolates filled with a cherry in alcohol. The earlier sign is not depicted. The following depiction is presented:

 

.

Enclosure 4: a document called ‘Brief STANDARD PACKAGING DESIGN LIFT’ relating to the change of the layout (packaging) of the opponent’s products, ‘CHERRY PARADISE 105g box’ and ‘CLASSIC 120g box’. The document is partly translated into the language of the proceedings and, according to the opponent, it is from 27/03/2013. No depiction of the product/packaging was provided.

Enclosures 5 and 6: pictures of, according to the opponent, ‘Pre-selected projects’ and ‘New graphics for Cherry Paradise’, used (as stated by the opponent) from 20/05/2013. The following packaging is, inter alia, depicted in these items of evidence:

 

, .

Enclosure 7: a printout from the Wayback Machine indicating that the opponent’s website (http://www.czekoland.pl/produkty-vobro.html) was saved 5 times between 17/06/2016 to 08/01/2020. However, the actual content of the website available on the selected dates was not submitted by the opponent.

Enclosures 8 and 9: two extracts from the promotional newsletter published on the website www.activ-slodycze.pl with the wholesale offers valid from 19/02/2018 to 28/03/2018 and from 03/10/2016 to 21/10/2016, respectively. The documents are partly translated into the language of the proceedings and they display, inter alia, the following goods:

 

, .

However, these products appear without their price.

Enclosure 10: excerpts from the ‘Salesman’s guide’, dated February 2014, partly translated into the language of the proceedings. The documents mention and display the new packaging graphics of the opponent’s goods:

 

.

Enclosures 11 and 12: excerpts from the documentation of the follow-up visits to region 2, taking place on 26/04/2016, and to region 1, taking place from 20/06/2016 to 21/06/2016, partly translated into the language of the proceedings. The opponent’s goods ‘Cherry Paradise’ are, inter alia, listed in the documents without, however, indicating the amount of the goods. The documents display various goods of the opponent such as:

 

, ,

.

Enclosure 13: an extract from a promotional newsletter used in Hungary with the offer valid from 01/02/2017 to 28/02/2017. The document is partly translated into the language of the proceedings and it displays, inter alia, the following goods:

 

.

Enclosure 14: a copy of the Polish Act on Unfair Competition of 16/04/1993, with the translation of its Articles 3, 10, 18 into the language of the proceedings.

Enclosure 15: several extracts from the EUIPO eSearch database concerning European Union trade mark registration No 6 936 405 (figurative mark), No 10 569 796 (figurative mark), No 11 168 002 (figurative mark) and No 11 168 093 (figurative mark) and several extracts from TMView database concerning Polish trade mark registrations No 201 736 (figurative mark), No 191 169 (figurative mark) and No 222 397 (figurative mark). These extracts illustrate, according to the opponent, ‘the concept of packaging and labelling cherries in chocolate containing characteristic elements constituting the basis on which other existing products of my Client's company - VOBRO SPÓŁKA Z OGRANICZONĄ ODPOWIEDZIALNOŚCIĄ SPÓŁKA KOMANDYTOWA - have been marked many times before’.

In its subsequent observations of 11/03/2021, the opponent additionally submitted a printout dated 22/02/2021 from the website http://www.czekoland.pl/produkty-vobro.html of a sweet wholesaler in Warsaw with the translation of its relevant parts into the language of the proceedings. According to the opponent, this printout demonstrates that the opponent’s goods displaying the earlier sign are still present and available on the market.

According to Article 8(5) EUTMDR, where the opponent submits, after the expiry of the time limit set by the Office, facts or evidence that supplement prior relevant facts or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relates to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant to the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

The Opposition Division points out that the evidence submitted in reply to the applicant’s observations may be considered to be late supplementary evidence intended to prove the use of the earlier sign. However, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 11/03/2021 can remain open. The Opposition Division deems it appropriate to proceed with the examination of the present case by also taking into account the belated evidence submitted by the opponent. This approach will not be to the applicant’s detriment, as will be seen below.

Preliminary comment concerning links to websites

 

In its submissions, the opponent referred to links to various website addresses available online. However, the provision of links to online content or website addresses is not a valid form of evidence in inter partes proceedings.

In accordance with Article 95(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates to, inter alia, the factual basis of decisions by the Office, that is, the facts and evidence on which those decisions may be validly based. It is not for the Office’s decision-making bodies to search the opponent’s or the applicant’s website for the relevant data (04/10/2018, T‑820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63).

The Opposition Division can only rely on the evidence submitted by the parties, a mere indication of a website through a hyperlink does not constitute evidence. A hyperlink to a website does not allow the content and data to which it is meant to refer to be copied and transmitted as a document so that the other party can access that information. In addition, websites are easily updated, and most do not provide any archive of previously displayed material or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited using only a hyperlink to a website cannot, therefore, be verified.

Online evidence is admissible only in a limited number of events, as provided in Article 7(3) EUTMDR, and, in particular, in relation to the substantiation of earlier national rights and proving the content of the national law. In all other cases, such as in the present case, the materials, even if available online, should be provided to the Office in a physical form (as printouts, screenshots or recorded on a digital carrier or in another appropriate form). Accordingly, for the purposes of the present analysis, the information available via the links will not be taken into account.

Assessment of the evidence

 

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T‑318/06 – T‑321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T‑534/08, Granuflex, EU:T:2010:417, § 19).

The Court of Justice clarified that the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a European Union trade mark, even though the sign might be used only to a very limited extent in the course of trade. The sign must 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 (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 158-159).

However, it is not possible to establish a priori, in an abstract manner, which part of a territory must be used to prove that the use of a sign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be made in concreto, according to the circumstances of each case.

Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements:

1. the intensity of use (sales made under the sign);

2. the length of use;

3. the spread of the goods (location of the customers);

4. the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

After careful consideration of the submitted evidence, the Opposition Division considers that, while the evidence may suggest that some use of the sign has been made, it does not, contrary to the opponent’s opinion, meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR, for the following reasons.

The Opposition Division finds that the evidence is insufficient as regards demonstrating the geographic and economic dimension of use. There is no evidence for the actual sales generated by the earlier sign in the relevant territory. There are no invoices demonstrating sales that took place prior to the filing date of the contested application. There is no information about the customers who purchased the goods produced by the opponent or where exactly these customers were located. Although there is some online advertising and promotion of the opponent’s goods bearing the earlier sign (enclosure 3 and enclosures 8 and 9), there is no real information about how many potential customers encountered the advertising. Even though, in the excerpts from the ‘Salesman’s guide’ (enclosure 10), it refers to ‘controlled copies edition: 70 000 copies’, it is not clear (and the opponent did not explain) what ‘controlled edition’ means. The evidence only demonstrates that the opponent is a producer of, inter alia, chocolate boxes named ‘Cherry Paradise’, which as of May 2013 were placed on the market in Poland using, inter alia, the following packaging: (enclosures 2-12), and that these opponent’s goods were promoted in October 2016, December 2017 and February and March 2018 through the websites www.nadmorski24.pl (enclosure 3) and, for wholesale purposes, on www.activ-slodycze.pl (enclosures 8 and 9 – even though the prices of these goods were not indicated) as well as offered for retail in some Polish shops/supermarkets in April and June 2016 (enclosures 11 and 12).

The opponent has failed, however, to prove to what extent the sign was used in the course of trade of more than mere local significance. The evidence is also unclear as the opponent used different designations of the same product over the time, and even in the same time period, while the current opposition is based on one particular designation.

As correctly noted by the applicant, the fact that the opponent also offers abovementioned chocolate boxes for sale in Hungary (enclosure 13) is irrelevant for the purposes of establishing use of the opponent’s sign in Poland.

The onus is on the opponent to submit evidence that demonstrates that there has been use, in a more than mere local context, for the activities and goods invoked. While the opponent is not obliged to reveal sensitive business information, it should nevertheless be able to provide those items that show beyond doubt use of the earlier sign in the relevant territory. This could have been proved by showing sales volumes by means of invoices, annual reports or accounts books indicating information or transactions carried out using the opponent’s sign. However, in the present case, no invoices, other reliable objective items or conclusive indirect evidence have been submitted in order to prove the commercial volume or quantity of goods actually sold under the sign before (and also after) the filing date of the contested application (16/09/2019) in Poland.

Consequently, the evidence does not provide the Opposition Division with sufficient information concerning the geographical and economic dimension of the earlier sign’s significance. The Opposition Division cannot verify, without resorting to presumptions or suppositions, whether or not the relevant sign has been used within the course of trade of more than mere local significance for the claimed business activities and goods in Poland, and as a whole, it does not meet the minimum threshold of ‘more than local significance’.

For the sake of completeness, it is to be noted that the evidence fails also insofar as the fulfilment of the condition of the time of use is concerned. In this regard, an opponent must prove that use took place before the filing of the EUTM application or the priority date if relevant (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 166-168). Moreover, it must be clear from the evidence that the use continued on the date of the filing of the opposition. In this context, Article 7(2)(d) EUTMDR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent must provide evidence of its acquisition, continued existence (emphasis added) and scope of protection of that right.

The use of the opposing sign was questioned by the applicant. Indeed, the evidence only indicates, at best, some use of the earlier sign in 2005, 2013-2014 and 2016-2018. However, such use seems to be rather sporadic and infrequent and cannot, in any event, be considered as demonstrating continued existence of the opponent’s earlier right.

In its observations dated 11/03/2021, the opponent claims that the earlier sign was used also after the filing of the current opposition. However, the evidence is insufficient to prove this claim. The printouts from the Wayback Machine (enclosure 7), indicating the period between 17/06/2016 to 08/01/2020, do not show the content of the website and, therefore, they cannot prove any use of the earlier sign. Although the belated evidence is dated 22/02/2021 and shows the following product designations:

, there is no information about how to buy these products via the website, nor on points or means of sale. This evidence is insufficient to prove use (27/07/2018, R 351/2018‑5, promax (fig.) / Pro Max, § 40).

As a final remark, the Opposition Division reminds that 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). Apart from the reference to the relevant legal provision (Article number and the number and title of the law), the opponent must provide 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).

In the case at hand, the opponent’s evidence lacks information on the content of the applicable law. Although the opponent provided the original text of the relevant law and its English translation, it has not indicated any case-law / legal doctrine on how to apply the principles reflected in the cited law provisions.

In contrast, the applicant has provided a printout from Polish doctrine on Article 10 of the Polish Unfair Competition Act, partly translated into English (enclosure 1 to the applicant observations of 17/12/2020), according to which cessation of the use of the sign for marking goods or services causes a termination of protection under the Polish Unfair Competition Act: ‘(…) it is not contrary to the good practice to mark somebody’s own goods or services with a sign that has already ceased to be used by another entrepreneur. An entrepreneur who consciously decides to abandon the use of a given sign must take into account that the sign passes into a specific public domain and may be used by other entrepreneurs’ (Michalak Arkadiusz [in:] Sieradzka Małgorzata (ed.), Zdyb Marian (ed.), Ustawa o zwalczaniu nieuczciwej konkurencji. Komentarz, ed. II, LEX 2016, Art. 10, paragraph 52). This confirms that, in order to succeed, the opponent was required to prove continuous and current use of its earlier sign also in accordance with the provisions of the Polish substantive law.

Conclusion

 

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods/business activities on which the opposition was based, namely confectionery industry; sweets, chocolates, pralines, boxes of chocolates, before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

Therefore, it is unnecessary to address the remaining arguments of the opponent, as they will have no impact on the finding that the opponent has not provided sufficient indications concerning use in the course of trade of more than mere local significance of the earlier sign.

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

 

 

Solveiga BIEZA

Martin MITURA

Jakub MROZOWSKI

 

 

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.