OPPOSITION Nо B 3 117 545

 

Edoo, Vltavská 3101/24, 15000 Praha 5, Czech Republic (opponent), represented by Patentcentrum Sedlák & Partners S.R.O., Okružní 2824, 370 01 České Budějovice, Czech Republic (professional representative) 

 

a g a i n s t

 

Edulife Limited, 71-75 Shelton Street, Covent Garden, London WC2H 9JQ London, United Kingdom (applicant), represented by London IP (Europe), Quay House, Fitton Street, Off South Mall, Cork, Ireland (professional representative)

On 08/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 117 545 is rejected in its entirety.

 

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

 

REASONS

 

On 30/04/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 168 703 ‘Edoo’ (word mark), namely against the goods and services in Classes 9, 35, 38, 41, 42 and 45. The opposition is based on a non-registered trade mark or other sign used in the course of trade in the Czech Republic, namely the company name ‘EDOO’, for 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.

The Opposition Division shall first consider the requirement regarding the applicable law.

 

b)   The right under the applicable law

 

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

 

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 [now, the EUIPO] 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 sign invoked by the opponent, namely the company name ‘EDOO’, pursuant to the provisions of Czech law.

Although, in the Notice of Opposition, the opposition ticked the box stating that it wished to rely on online substantiation pursuant to Article 7(3) EUTMDR, none of the hyperlinks provided therein by the opponent enables the Opposition Division to access the relevant provisions of Czech law. Furthermore, within the due date set down by the Office (16/10/2020), the opponent did not provide any evidence of the relevant applicable Czech law.

For the sake of completeness, the Opposition Division wishes to point out that apart from the fact that the references to particular provisions of Czech law, which were set out in the opponent’s observations dated 09/03/2021, are inadmissible as they were not provided within the due date set out by the Office, as stated in the previous paragraph, and even if such references in the said observations were admitted as late evidence pursuant to Article 95(2) EUTMR, in any event they do not satisfy the requirements of Article 7(2)(d) EUTMDR, referred to above, because such references alone do not amount to a clear identification of the content of the relevant national law.

In that regard, the Office Guidelines (Guidelines for Examination in the Office, Part C, Opposition, section 4, Rights under Article 8(4) and 8(6) EUTMR, section 4.2.1 thereof) make clear that the Office will reject the opposition if, inter alia, the opponent provides the reference to the relevant legal provision but does not provide the content (text) of the legal provision.

Therefore, as the opponent has not met the requirements of Article 8(4) EUTMR with respect to, inter alia, the substantiation of the applicable law, the opposition is not well founded and must be dismissed.

 

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

 

 

Irena LYUDMILOVA LECHEVA

Kieran HENEGHAN

María del Carmen SUCH SÁNCHEZ

 

 

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.