OPPOSITION No B 1 974 958

Všeobecná Zdravotní Pojišťovna České Republiky, Orlická 2020/4, 13000 Praha 3,

Czech Republic (opponent), represented by Daněk & Partners, Vinohradská 17,
120 00 Prague 2, Czech Republic (professional representative)

a g a i n s t

Avery Dennison Corporation, 150 N Orange Grove Boulevard, Pasadena, California 91103, United States of America (applicant), represented by Baker & Mckenzie LLP, 100 New Bridge Street, London EC4V 6JA, United Kingdom (professional representative).

On 23/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 974 958 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 237 816 for the figurative mark ‘ ’. The opposition is based on, inter alia, European Union trade mark application No 8 238 156 for the figurative mark ‘ ’, which was filed on 23/04/2009 and registered on 08/02/2015, Czech well-known mark ‘ ’, and Czech non-registered trade mark ‘ ’. The opponent invoked Article 8(1)(b) EUTMR in relation to the earlier European Union trade mark No 8 238 156 as well as the Czech well-known mark and, in relation to the earlier non-registered sign, Article 8(4) EUTMR.

SUBSTANTIATION OF EARLIER WELL-KNOWN MARK

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 Rule 19(1) EUTMIR, the Office shall 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 Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.

On 13/05/2014, within the time limit for substantiation, the opponent submitted the following evidence:

• A print screen and a print out from the opponent’s website www.vzp.cz in English, providing information about the opponent and its goals. The sign
  ‘ ’ is displayed on the page. The print out is dated 13/05/2014.

• A print out from the opponent’s website in Czech and English, dated 13/05/2014 and concerning the ‘European Health Insurance Card On-line Verification’. The sign ‘ ’ is displayed on the page.

• Three print screens of the pages taken from www.izip.cz, containing a description of ‘IZIP’, a medical record system in English.

• A copy of the opponent’s 2011 annual report in English. The sign
  ‘ ’ appears on the front page. The opponent also states that other annual reports can be downloaded from its website.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier well-known mark.

In order to determine whether the earlier mark was well-known at the time of filing of the contested application, that is on 02/09/2011, all the relevant facts of the case must be taken into consideration, including, in particular, the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognised as well known by competent authorities; and the value associated with the mark (see Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) in September 1999).

The evidence submitted by the opponent does not provide sufficient indications of the degree of recognition of the trade mark by the relevant public. Most of the evidence is dated after the relevant date. The print screens and print outs from the websites provide information about the opponent and medical record system ‘IZIP’. However, this evidence does not demonstrate the knowledge of the relevant public about the opponent’s figurative sign. The annual reports are verified by independent auditors. These reports provide information about the activities, number of clients and turnover of the opponent’s company. However, this evidence does not show how the sign is perceived by the relevant public. In other words, these documents do not clearly show whether the relevant public, because of the mark, identifies the goods and services as originating from the opponent. It may well be that the opponent, as an insurance company, is known to a substantial part of the relevant public (as implied by the high number of clients) but this fact does not indicate whether or not the public recognizes the invoked plainly figurative mark as such. In other words, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that there is insufficient evidence of the existence of a well-known mark ‘ ’.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

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

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 238 156.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 16: Health insurance cards, health-related advertising materials and advertisements made of paper, information leaflets, professional publications and printed matter, colouring books, Memory, Happy Families, and various health-related advertising materials, printed periodicals, pamphlets, journals, newspapers, calendars, catalogues, almanacs, books, circulars, song books, sticker books (albums), non-periodical and periodical publications, comic strips, manuals (handbooks), bookbinding materials, writing implements, instructional material, printers' type, printing blocks, packaging of paper, stamps, stickers, plastics for modelling, modelling clay, children's modelling materials, plasticines, modelling wax, not for dental purposes, pastels (crayons), marker pens, paints - included in this class, chalks, sand and wax for artistic purposes, writing materials, drawing pads, school supplies (stationery), paint brushes, pencils, pencil leads, paper sheets (stationery), paper and paper products of all kinds, including copying paper, wrapping paper, paper (waxed-), filter paper, sheets of reclaimed cellulose for wrapping, paper coasters, paper table napkins, cardboard and goods of cardboard, water-colours, albums, musical greeting cards, postcards, diagrams, papier mâché figurines (statuettes), photographs, photograph stands, graphic reproductions, graphic prints, etchings, tickets, lithographs, oleographs, posters, paintings (pictures), framed or unframed, portraits, prospectuses, graphic reproductions, engravings, tourist guides, road maps, atlases, pictures, postcards and other promotiomal and informational material and souvenir items included in this class, including promotional publications, almanacs, promotional paper stickers, artists' requisites, including brushes, modelling clay, paper materials, painting canvas, painter's easels, house painters' rollers, artists' watercolour saucers, palettes for painters, hand-rests for painters, drawing boards, paper goods for office use, packaging materials, office requisites, including address labels for addressing machines, pads (stationery), numbering apparatus, adhesive tape dispensers (office requisites), covers (stationery), clip boards, folders (stationery), writing paper, wristbands for the retention of writing instruments, labels, not of textile, forms (printed), rubber bands, rubber erasers, moisteners (office requisites), included in this class, nibs, writing inks, inkwells, paperclips, cardboard, index cards (stationery), cards, paper tapes and cards for the recordal of computer programs, pencil lead holders, compasses for drawing, writing chalk, French curves, document laminators for office use, adhesive tapes for stationery or household purposes, pastes for stationery or household purposes, sealing compounds for stationery purposes, adhesive bands for stationery or household purposes, thumbtacks, pen holders, paper knives, envelopes, sealing wafers, pencil sharpening devices, pencil sharpeners, paper shredders, seals (stamps), sealing wax, pen cases, fountain pens, tablemats of paper, mats for beer glasses, postage stamps, writing cases (stationery), rulers, files (office requisites), boxes for pens, cases for stamps (seals), drawing pins, typewriters (electric or non-electric), sealing stamps, drawing instruments, writing or drawing books, indexes, staples, sealing machines for offices, paper-weights, tickets, printing sets, portable, ledgers, charcoal pencils, note books, babies' napkins of paper or cellulose, disposable, paper coffee filters, silver paper, plastic film for wrapping, conical paper bags, boxes of cardboard or paper, cardboard, cardboard tubes, paper bows, transfers, toilet paper, paper table napkins, table cloths of paper, cigar bands, writing pads, stamp pads, folders for papers, passport covers, stencil cases, paint boxes (articles for use in school), bags (envelopes, pouches) of paper or plastics, for packaging, towels of paper, signboards of paper or cardboard, advertisement boards of paper or cardboard.

Class 36: All health insurance services (full or partial health insurance, contractual, travel health insurance etc.), specialist consultancy services in the field of health insurance, the provision of specialised health care, insurance and financial services of all kinds included in this class, including as insurance and reinsurance and related activities, financial market activities, banking, consultancy and brokerage in the aforesaid fields, exchanging money, financial affairs and banking, included in this class, financial market services, financial services - analysis, transactions, operations, financial information, consultancy and management, fiscal assessments, financial appraisals and assessments in the fields of insurance, banking, real estate, stocks and bonds brokerage, stock exchange quotations, financial sponsorship, hire-purchase financing, providing mortgage loans, financial rental - leasing, surety services, banking, credit bureaux services, financial clearing, transfer (electronic funds-), clearing (financial), funds transfer (electronic -), capital investments, home-banking, issuing of tokens of value, issuing of travellers' cheques, issuing of securities, credit card services and issuing of credit cards, banking, real estate affairs, in particular renting of residential and non-residential space, brokerage in the purchase and sale of real estate, real estate appraisal, real estate brokerage, renting of appartments, renting of flats, renting of offices, maintenance and upkeep of real estate, leasing of data processing equipment, finance and monetary operations, financial consultancy, insurance brokerage and consultancy, hire-purchase financing, credit consultancy, providing of information on customs clearance, customs tariffs and customs debt guarantees, assistance with customs procedures, complementary financial services, leasing of real estate, land and offices, real estate offices, property development.

Class 42: Development, planning and implementation of systems for facilitating access to health care and improving the effectiveness and quality of such access, software solutions for ensuring the accessibility of health care, Internet and other electronic applications ensuring that doctors can share information and communicate with users, creation of databases within the framework of health care provision, electronic ordering systems, computer software installation, computer system design, programming of Internet database systems and Internet applications, designing Internet presentations and Internet server solutions, network management, providing of software, information technology consultancy, data processing, hosting and related activities and web portals, professional consultancy in the field of health, spa resorts, updating and maintenance of software, implementation, updating and maintenance, design, structuring and programming or otherwise creating Internet and intranet pages and bulletin boards (webpages and websites) and Internet or intranet applications, hosting (providing free space) for Internet or intranet information, pages and bulletin boards (webpages and websites), hosting (providing free space) for Internet or intranet applications, data conversion of computer programmes, data or other information in electronic form from various format to other formats, data conversion of documents, data or other information from physical media to electronic media, data and information back-up services using electronic and computer-related means and via email, consultancy in the field of computer and information technology, technological services and research and design relating thereto, industrial analysis and research, design of websites and Internet presentations, project planning, software development, design and development of computer hardware and software, consultancy, assistance, analytical, design, testing and programming services relating to computer software, firmware, hardware and information technology, consultancy relating to the evaluation, selection and implementation of computer software, firmware, hardware, information technology and data processing systems, information technology including via telecommunications networks, delivery on-line, via the Internet and via the World Wide Web, web hosting, webdesign, research, encoding and decoding security systems (software development), consultancy in the field of the application of computer technology and in the field of information technology, creating virtual-reality 3D computer animations and models, information technology, planning and implementation of automated management systems, programming, planning computer networks, rental of software, installation, repair, maintenance and servicing of software, developing interactive applications allowing the transmission and creation of graphical images via the Internet, programming, software, design, data conversion of computer programs and data (not physical conversion), data conversion of information and documents from physical media to electronic media, duplication of computer programs, technical studies in the field of computers and software, research, programming of multimedia applications, development of interactive and graphics programs, computer animations and visualisations, graphic design, implementation, updating, designing.

The contested goods and services are the following:

Class 1: Adhesives, other than for stationery or household purposes; and adhesives for use in the manufacture of medical and veterinary products.

Class 5: Securement products, namely, adhesive tapes, films, foams, bandages, dressings, labels and bands for medical and veterinary purposes; adhesives for medical and veterinary applications; anti-adhesion gels for use with wound drainage devices; diapers for incontinence; and single-dose drugs in plastic packages.

Class 9: Radio frequency identification (RFID) credentials, namely, tags, inlays, labels, stickers and cards, and readers for radio frequency identification credentials; RFID-based wireless sensors that can detect and measure chemical, physical and biological conditions in a variety of applications; software for tracking information sensed from RFID credentials and sensors; specialized patches comprised of small sensors, thin batteries and antennas for sensing and transmitting information concerning physiological parameters of the body; computer hardware and software for management of patient medical data and veterinary data; computer hardware and software for receiving, transmitting, processing, storing and displaying medical data; and computer hardware and software for diagnosing, monitoring and treating patients in the field of healthcare.

Class 10: Plastic films, foams and non-woven materials for medical and veterinary use; surgical drapes; medical devices, namely, wearable monitors, sensors and transmitters for monitoring and measuring patient vital signs and other physiological parameters and detecting medical events; medical diagnostic devices for monitoring properties of bodily fluids and physical states; transdermal drug delivery patches sold without medication; and Containers for dispensing, storing and disposing of medicine, medical waste, blood and bodily fluids.

Class 16: Disposable diaper closures; disposable diapers; labels containing RFID tags; paper labels that are electronically responsive; and packaging materials, namely, labels and plastic bags containing machine-readable information for identifying and tracking packages.

Class 17: Adhesive-backed plastic films, tapes and strips for use in medical, hygienic and personal care products; adhesive-backed plastic films, tapes and strips containing RFID tags; plastic films containing machine-readable information for identifying and tracking packages; plastic labels that are electronically responsive; and plastic containers for drugs.

Class 35: Collection, preparation, composition, processing, acquisition of bio-chemical information and data; collection, preparation, composition, processing, acquisition of medical and physiological information and data.

Class 42: Consulting services in the field of sensor label and radio frequency identification (RFID) technology; computer services, namely, providing online non-downloadable software for receiving and transmitting patient medical data; computer services, namely, providing online non-downloadable software for the diagnosis, monitoring, and treatment of patients in the field of healthcare; and provision of bio-chemical information and data.

Class 44: Consulting services in the field of medical adhesives; providing online searchable databases for tracking and organizing patient medical data and veterinary data; medical services; medical information; provision of medical and physiological information and data; computer services, namely, providing an online computer database featuring patient medical information; and computer services, namely, providing an online computer database featuring information for the diagnosis, monitoring, and treatment of patients in the field of healthcare.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services assumed to be identical are directed at the public at large and partly at professionals, especially in the medical field. The degree of attention may vary from average to high, depending on the particular goods and services, their field of application, sophistication and price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are figurative. The earlier mark depicts a thick black line ending with an arrowhead. On this line, there is a white thin line ending with an arrowhead. These lines are bending in two places at an angle of 60 degrees. The contested sign depicts three black thin lines surrounded by white and black layers with rounded ends. These elements are arranged in such a way that they overlap at an angle of 60 degrees.

The signs have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that each of them is composed of lines arranged around the angles at 60 degrees. They differ in all the remaining elements described in detail above. Therefore, the signs are similar to an average degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, the relevant public will perceive the arrows or a stylised arrow in the earlier mark. The contested sign has no clear and graspable meaning. Consequently, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the Czech Republic, ‘especially in the field of healthcare and insurance’. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the highly distinctive character of the earlier trade mark has already been examined above under the grounds concerning a well-known mark within the meaning of Article 8(2)(c) EUTMR and Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for earlier European Union trade mark registration No 8 238 156 which is identical to that mark.

Therefore, on the basis of the same evidence, the opponent also failed to prove that its European Union trade mark registration No 8 238 156 acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are assumed to be identical.

The signs have similar outline, namely, they are both composed of lines arranged around the angles at 60 degrees. However, this coincidence is not sufficient to outweigh the visual differences between the signs. The elements composing the signs are depicted in a very different manner. In the earlier mark, there is a thick black line and a thin white line, both ending with arrowheads. These lines are bending in two places at an angle of 60 degrees. The contested sign depicts three black thin lines surrounded by white and black layers with rounded ends. They compose three elements overlapping at an angle of 60 degrees. Therefore, the relevant public will perceive the earlier sign as a bending stylised arrow or bending arrows and the contested sign as a fanciful sign composed of three overlapping elements.

The degree of distinctiveness of the earlier mark is average and the level of attention of the relevant public may vary from average to high.

Taking into consideration all the above, in particular the visual differences between the signs and the fact that the signs are not similar conceptually and aural comparison is neutral, the Opposition Division considers that there is no likelihood of confusion on the part of the public.

The opponent stated that the contested application was filed in bad faith. This cannot be a basis for the opposition. Article 41 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 point will not be addressed.

The opponent refers to cases of the Court and previous decision of the Office to support its arguments. However, these cases are not comparable to the present proceedings because they concern different signs.

Finally, regarding the opponent’s argument concerning the signature with the name of the association, there is no fault with this practice as explained in detail in the decision of 28/11/2013, R 889/2012-2 and R 635/2012-2 – ‘NEOWEB / GEOWEB et al’ (§ 25 and § 26).

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness the Opposition Division notes that the evidence filed as proof of use, under Article 42(2) and (3) EUTMR, of the earlier Czech registered trade marks, cannot be taken into account as evidence of enhanced distinctiveness or existence of the well-known mark because it was received on 20/02/2015, therefore after the date of 13/05/2014 set by the Office for the opponent to submit evidence of the existence, validity and scope of protection of its marks.

The opponent has also based its opposition on the following earlier trade marks:

Czech trade mark registration No 208 580 for the figurative mark
‘ ’ Czech trade mark registration No 208 582 for the figurative mark ‘ ’, Czech trade mark registration No 208 584 for the figurative mark ‘ ’, Czech trade mark registration No 208 585 for the figurative mark ‘ ’, Czech trade mark registration No 285 089 for the figurative mark ‘ ’.

These marks are less similar to the contested sign. This is because they contain additional words which are not present in the contested sign and the figurative elements of these marks are red. These marks cover certain goods and services which do not appear in the earlier European Union trade mark registration
No 8 238 156. However, even if these goods or services were identical to the opponent’s goods and services, the outcome would not be different as, except the additional elements in the earlier marks which make them less similar to the contested sign, there are no other factors that would enhance the scope of protection of the earlier marks or influence the assessment towards establishing the likelihood of confusion.

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

The opposition is also based on the non-registered trade mark ‘ ’, used in the course of trade in the Czech Republic.

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 shall 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 right under the applicable law

According to Article 76(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 Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

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 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 evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

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, the opponent provided the content of the legal provision only in the language of the proceedings but not in the original language. A mere translation of the legal provisions invoked cannot substitute the original law and, therefore, cannot constitute the evidence required under the Rule 19(2)(d) EUTMIR.

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

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Natascha GALPERIN

Justyna GBYL

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.