OPPOSITION Nо B 3 126 022

 

Dream Yacht Mediterranée, SARL Unipersonnelle, Route Saint-Mandrier Cd18, 83430 Saint-Mandrier-sur-Mer, France (opponent), represented by Cabinet Smissaert, 22, quai Louis Durand, 17 000 La Rochelle, France (professional representative)

a g a i n s t

Shenzhen Locitech Co., Ltd, No.15, Jingye Road 5, Yanchuan Community, Songgang Subdistrict, Baoan District, Shenzhen, Guangdong, People's Republic of China (applicant), represented by Intermark Patentes Y Marcas, S.L.P. (Also trading as Lidermark Patentes y Marcas), C/Obispo Frutos, 1B 2°A, 30003 Murcia, Spain (professional representative).

On 19/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 126 022 is rejected in its entirety.

 

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

 

REASONS

 

On 13/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 227 516 (figurative mark). The opposition is based on EUTM registration No 17 307 406, ‘DREAM YACHT’ (word mark); Belgian and French company names ‘DREAM YACHT GROUP’; French company name ‘DREAM YACHT MEDITERRANÉE’; French domain name ‘DREAMYACHTCHARTER’. The opponent invoked Article 8(5) EUTMR in relation to the EUTM registration and Article 8(4) EUTMR for the remaining company names and domain name.

  

REPUTATION — ARTICLE 8(5) EUTMR

The opposition under Article 8(5) EUTMR is based on EUTM registration No 17 307 406, ‘DREAM YACHT’ (word mark).

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

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 provided 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)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

 

On 07/09/2020, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 17/01/2021.

 

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

 

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds and earlier right are concerned.

 

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

 

The opposition under Article 8(4) EUTMR is based on company names (Belgium, France) ‘DREAM YACHT GROUP’, French company name ‘DREAM YACHT MEDITERRANÉE’, and on French domain name ‘DREAMYACHTCHARTER’.

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.

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.

  

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 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 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. 

In the present case, with regard to the identification of the particulars concerning the filing or registration of the earlier rights, the opponent indicated in the notice of opposition that it wishes to rely on online substantiation. In this respect, the notice of opposition contains three hyperlinks: one link to a French website showing company information including address, creation date, type of company, identification number of the company name ‘DREAM YACHT GROUP’ and two links to the opponent’s French website showing its activities.

However, none of the hyperlinks provided therein by the opponent enables the Opposition Division to access the relevant provisions of Belgian and French law. Furthermore, the notice of opposition was not accompanied by any other evidence of use of the earlier sign in the course of trade nor was any evidence submitted at a later stage of the proceedings within the time limit (17/01/2021 substantiation period).

It follows that the opponent did not submit any information on the legal protection granted to the type of earlier rights invoked by it, namely the company names and a domain name purportedly used in Belgium and France. Moreover, 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.

 

Therefore, the opposition is not well founded under Article 8(4) EUTMR. The opposition must also be rejected as unfounded insofar as these grounds and the earlier rights 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.

 

 

The Opposition Division

 

Martina GALLE

Chiara BORACE

Erkki MÜNTER

 

 

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.