OPPOSITION Nо B 3 112 394

 

FryxGames AB, Prästgårdsgatan 6, 23535 Vellinge, Sweden (opponent), represented by D Young & Co LLP, Rosental 4, 80331 Munich, Germany (professional representative) 

 

a g a i n s t

 

Fuzhou Da Guang Trading Co., Ltd, No. 55, Xiadangtou, Yujing Village, Mabi Town, Lianjiang County, Fuzhou, Fujian, People´s Republic of China (applicant), represented by Stefano Merico, Via Eschilo, 190 int. 7, 00125 Roma, Italy (professional representative).

On 23/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 394 is rejected in its entirety.

 

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

 

REASONS

 

On 25/02/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 154 919 TERRAFORMING MARS (word mark), namely against all the goods in Class 28. The opposition is based on:

- the EU non - registered trade mark ‘TERRAFORMING MARS’

- other sign used in the course of trade in the EU - ‘title’ ‘TERRAFORMING MARS’

- the sign ‘TERRAFORMING MARS’ protected under the law of passing off in the United Kingdom and Ireland.

The opponent invoked Article 8(4) EUTMR in relation to all these signs.

 

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(4) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the sign ‘TERRAFORMING MARS’ protected under the law of passing off in the United Kingdom no longer constitutes a valid basis of the opposition.

 

The opposition must therefore be rejected as far as it is based on this earlier right.

EU NON-REGISTERED TRADE MARK AND EU TITLE ‘TERRAFORMING MARS’

The opponent invoked under the grounds of Article 8(4) EUTMR an EU non-registered trade mark TERRAFORMING MARS as well as an EU title.

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.

Along a similar line of reasoning, while it is true, that several jurisdictions have special protection for e.g. title of books or works, also in this case the protection is particular to these jurisdictions and national laws and does not exist at EU level.

Consequently, such rights are not an eligible basis for an opposition under Article 8(4) EUTMR.

The Opposition Division deems it necessary to point out that in case the opponent´s intention was to invoke the non-registered trade mark or the title ‘TERRAFORMING MARS’ in one or more of the EU Member States, it should have specified the Member States in which the earlier mark or sign exists (an absolute admissibility requirement provided for in Article 2(2)(b)(iv) EUTMDR under Article 8(4) EUTMR). According to Article 5(3) EUTMDR, where the notice of opposition does not comply with Article 2(2)(b) EUTMDR and the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

In the present case, the opponent does not indicate in the opposition form nor in any other observation attached to the opposition form within the deadline for the opposition (which expired on 26/02/2020) any Member State of the European Union with respect to these rights. 

It should be noted, that the opponent did explain in its observations of 30/11/2020 (within the prolonged deadline to substantiate the invoked rights) that it specifies the relevant countries, namely Denmark, Bulgaria, Sweden, Germany, Austria, Hungary, Italy, Finland, Poland, Czech Republic and Slovakia. However, these indications, as explained above, are absolute admissibility requirements, the correct indication has to be given by the time set to file the opposition being 3 months after the publication, so by 26/02/2020. Since the opponent cannot extend the basis or the grounds of the opposition after the expiration of the three-months opposition period, the above specifications cannot be accepted.

Consequently, the opposition based on the non-registered EU trade mark and the EU title is to be rejected.

The examination of the present opposition will proceed with respect to the last earlier right invoked by the opponent, namely the sign ‘TERRAFORMING MARS’ protected under the law of passing off in Ireland. 

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.

 

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.

 

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.

 

The right under the applicable law

According to Articles 95(1) EUTMR the office will restrict the examination to the facts, evidence and arguments submitted by the parties and the relief sought. That means in relation to the earlier right within the meaning of Article 8(4) EUTMR, the opposition is based on, according to  Article 7(2)(d) EUTMDR, 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).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfillment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law. 

 

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely in relation to the law of passing off in relation to Ireland. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

While the applicant claimed other sign in the course of trade for the United Kingdom and Ireland, the argumentation as well as the evidence only refer to passing off in the United Kingdom, but not to Ireland at all. The only indication of Ireland is in the opposition note, however, in the further proceedings, Ireland is not indicated, neither argued or part of the evidence.

Therefore, none of the above mentioned criteria of Article 8 (4) has been fulfilled.

Therefore, the opposition is unfounded as far as the opposition is based on the other sign used in the course of trade in relation to Ireland.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

Finally and for the sake of completeness, the opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for an opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this opponent´s claim is also dismissed.

Therefore, the opposition cannot succeed on the basis of any of the rights invoked by the opponent. Consequently, the opposition is to be rejected.

 

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

 

 

Denitza STOYANOVA-VALCHANOVA

Claudia MARTINI

Lidiya NIKOLOVA

 

 

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.