OPPOSITION No B 2 130 170

Bytemark, Inc, 275 7th Avenue, Suite 1501, New York Delaware 10001, United States (opponent), represented by Kempner & Partners LLP, Fountain House, 4 South Parade, Leeds LS1 5QX, United Kingdom (professional representative)

a g a i n s t

Bytemark Limited, 2 Opus Avenue, York North Yorkshire YO26 6BL, United Kingdom (applicant), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative).

On 08/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 130 170 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 Community trade mark application No 11 067 014. The opposition is based on United Kingdom trade mark application No 2 603 479 for goods and services in Classes 9 and 35 and the non-registered marks in United Kingdom ‘Bytemark’ and .

The opponent invoked Article 8(1)(a) and (b), 8(5) and 8(4) CTMR.

Bytemark	BYTEMARK
Earlier rights	Contested sign

SUBSTANTIATION

According to Article 76(1) CTMR, 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) CTMIR, 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) CTMIR, 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 trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a Community trade mark application) - Rule 19(2)(a)(i) CTMIR.

If the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

Furthermore, if, in the course of the proceedings, the earlier right ceases to exist (because it has been declared invalid, it has not been finally registered or it has not been renewed), the final decision cannot be based on it. The opposition has to be rejected as far as this earlier right is concerned (see in this respect judgment of 13/09/2006, T-191/04, ‘METRO/METRO’, paragraphs 33 and 36).

Therefore, if a decision taken in national proceedings invalidates, revokes or results in some other way in the extinguishment of the right, the opposition will be deemed unfounded insofar as it is based on that earlier right.

In the present case, the opposition is based on the United Kingdom trade mark application No 2 603 479 which was filed on 02/12/2011. The opponent submitted, together with the notice of opposition, the corresponding certificate from the UK intellectual property office. In this document, the status of the application appears as ‘opposition outstanding’.

On 20/05/2015, the applicant informed the Office that the opponent’s trade mark application had been refused by the national authorities. In support of its statements, the applicant attached evidence from the UK authorities, namely the final decision of the Appointed Person in the UK Appeal dismissing the opponent’s appeal. It also attached the UK law according to which there is no further appeal against this decision (Section 76(4) of the Trade Marks Act 1994). According to this provision ‘where an appeal is made to an appointed person and he does not refer it to the court, he shall hear and determine the appeal and his decision shall be final’.

On 04/06/2015, the Office informed the opponent and gave him a deadline until 04/08/2015 to make observations in view of the applicant’s submissions. The opponent did not file any observations.

In view of the above, since the earlier right on which the opposition was based has ceased to exist, the opposition is rejected as unfounded as far as it is based on United Kingdom trade mark No 2 603 479 and the grounds of Article 8(1)(a) and (b), 8(5). The analysis of the opposition will continue as regards the other earlier rights invoked by the opponent.

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

The opposition is also based on the earlier non-registered trade marks, ‘Bytemark’ and , used in the course of trade in United Kingdom.

According to Article 8(4) CTMR, 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 Community 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 Community trade mark, or the date of the priority claimed for the application for registration of the Community 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) CTMR 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) CTMR cannot succeed.

The right under the applicable law

According to Article 76(1) CTMR, 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) CTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) CTMR, 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 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’ (judgment of 05/07/2011, C‑263/09 P, ‘Elio Fiorucci’, paragraph 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).

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.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely two non-registered marks in the United Kingdom.

The only reference made by the opponent to the national law is the following: ‘… the earlier non registered trade marks/signs BYTEMARK/ BYTEMARK Device are used in the course of trade of more than local significance and, pursuant to the law governing it, the trade marks/signs confers on them the right to prohibit the use of a subsequent trade mark’. The opponent also submits some pieces of evidence to demonstrate the use of the non-registered marks and the reputation and goodwill in the United Kingdom.

Nevertheless, this is not sufficient for the application of Article 8(4) CTMR. 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 law in each of the Member States mentioned by the opponent.

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

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Frédérique SULPICE

Begoña URIARTE VALIENTE

Andrew CARTER

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.