OPPOSITION Nо B 3 124 614

 

Sia Buschmann Tools, Mālu iela 28, 1058 Riga, Latvia (opponent), represented by Law Firm Fort, 8-4 Antonijas Street, 1010 Riga, Latvia (professional representative) 

 

a g a i n s t

 

Martin Mayerhofer, Innstr. 4, 6402 Hatting, Austria (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 18/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 124 614 is rejected in its entirety.

 

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

 

REASONS

 

On 22/06/2020, the opponent filed an opposition against all the goods and services (in Classes 8 and 35) of European Union trade mark application No 18 205 703 (figurative mark). The opposition is based on the two non-registered signs ‘Perfect Bender’ (word mark) and (figurative mark) protected in the European Union (EU), Austria, Denmark and Latvia as far as the opponent invoked Article 8(3) EUTMR and on the same two non-registered signs protected in Austria, Germany, Denmark and Latvia as far as 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 opponent invoked the two non-registered trade marks ‘Perfect Bender’ (word mark) and , allegedly protected in Austria, Germany, Denmark and Latvia.

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 encyclopedias 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).

Furthermore, the opponent must submit appropriate evidence of fulfilment 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.

On 31/07/2020 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2020.

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. 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. The opponent also did not make reference to evidence accessible online from a source recognised by the Office (Article 7(3) EUTMDR).

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 marks or earlier rights, 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.

Consequently, the opposition must be rejected as far as Article 8(4) EUTMR is concerned.

 

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

 

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

 

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

 

 the signs are identical or only differ in elements that do not substantially affect their distinctiveness; 

 the goods and services are identical or equivalent in commercial terms; 

 the applicant is an agent or a representative of the owner of the earlier mark; 

 the application was filed without the consent of the owner of the earlier mark; 

 the agent or representative fails to justify its acts. 

 

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

 

The opponent invoked the two non-registered trade marks ‘Perfect Bender’ (word mark) and , allegedly protected in the EU, Austria, Denmark and Latvia.

As to the territory of the EU, 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(3) EUTMR.

The Opposition Division deems it necessary to point out that even in case the opponent´s intention was to invoke the two non-registered trade marks in one or more of the EU Member States, he should have specified the territory in which the earlier mark is protected (an absolute admissibility requirement provided for in Article 2(2)(b)(iii) EUTMDR with respect to the ground of Article 8(3) 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. Consequently, the opposition based on the non-registered EU trade mark is to be rejected.

As to the territories of Austria, Denmark and Latvia, in the absence of any restriction in Article 8(3) EUTMR, and in view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and covers not only registered trade marks, but also applications and non-registered trade marks. According to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks.

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.

Consequently, non-registered trade marks are covered by the provision of Article 8(3) EUTMR provided that the law of the country of origin recognises rights of this kind. The opponent needs to, therefore, provide the Office with evidence establishing that under the relevant laws he has acquired exclusive rights for his claimed non-registered trade marks. The notice of opposition was, however, not accompanied by any evidence in this regard.

On 31/07/2020 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2020.

The opponent did not submit the necessary evidence mentioned above. For this reason, an assessment on whether or not the conditions under the relevant laws are fulfilled cannot be made. It follows from the above that, in relation to Article 8(3) EUTMR, the opponent has failed to establish that it has acquired exclusive rights for the invoked two non-registered trade marks in the countries in question.

Consequently, the opposition must be rejected as far as Article 8(3) EUTMR is concerned.

Finally and for the sake of completeness, the opponent stated that the applicant filed the contested trade mark in bad faith. However, 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 dismissed.

Conclusion

The opposition cannot succeed on the basis of any of the rights and any of the grounds 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

 

 

Lidiya NIKOLOVA

Beatrix STELTER

Holger Peter KUNZ

 

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.