OPPOSITION No B 2 342 270

Philip Morris Brands Sàrl, Quai Jeanrenaud 3, 2000 Neuchâtel, Switzerland (opponent), represented by Hoyng Rokh Monegier Spain LLP, Calle Ruiz de Alarcón, 7-2º Dcha, 28014 Madrid, Spain (professional representative)

a g a i n s t

PM-International AG, Wäistrooss 15, 5445 Schengen, Luxembourg, (applicant), represented by Rau Schneck & Hübner Patentanwälte Rechtsanwälte PartGmbB, Königstraße 2, 90402 Nürnberg, Germany (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 342 270 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 of European Union trade mark application No 12 313 508 , namely against goods in Classes 18, 25, 28, 32 and 33. The opposition is based on European Union trade mark registration No 9 488 784  , international trade mark registrations No 861 924 ‘PM’, No 1 035 386  , No 1 011 037  designating the European Union and the territories of all Member States; and non-registered trade mark , for the territory of the European Union and the territories of all Member States. The opponent invoked Article 8(5) and 8(4) EUTMR.

SUBSTANTIATION-regarding earlier international trade mark registrations No 861 924, No 1 035 386 and No 1 011 037

According to Article 76(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 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 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 Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union 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) EUTMIR.

In the present case the evidence filed by the opponent along with the notice of opposition (as far as earlier international trade mark registrations No 861 924, No 1 035 386 and No 1 011 037 are concerned) consists of excerpts from ‘OHIM-eSearch’, which is the database supported by the European Union Intellectual Property Office (former Office for Harmonization in the Internal Market).

On 17/04/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material (proof of the existence, validity and scope of protection of its earlier marks), namely until 17/08/2014. On 16/06/2014, due to the extension of the cooling-off period, the Office gave a new time limit, which expired on 17/06/2016.

The opponent did not submit further materials regarding the existence, validity and scope of protection of the earlier marks.

Following from the requirements of Rule 19(2)(a)(ii) EUTMIR, in the case when the earlier trade mark is not a European Union trade mark (which is the case at issue), the opponent has to provide evidence of its filing or registration, by submitting documents emanating from the administration by which the trade mark was registered, which in the case at issue is the World Intellectual Property Organization. The opponent, as explained above, submitted evidence from ‘OHIM-eSearch’, supported by the European Union Intellectual Property Office, which however is not the institution that has registered the marks at issue. It must be held that since EUIPO is not competent for the management of the international registrations and is not the administration with which the application for a trade mark was lodged, within the meaning of Rule 19(2)(a)(ii) EUTMIR, the documents produced by the opponent do not, for the purposes of that provision, constitute evidence of the existence, validity and scope of the protection of the international trade mark registrations (following from the judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994, §  26, 28).

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 its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

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

The Opposition Division will further continue with the examination of the opposition based on earlier European Union trade mark registration No 9 488 784, in regard to which Article 8(5) is invoked.

REPUTATION – ARTICLE 8(5) EUTMR

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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 14/11/2013. However, the contested trade mark has a priority date of 20/09/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 34: Tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 08/09/2015 the opponent submitted evidence to prove the reputation of the earlier mark. For the sake of clarity, the Opposition Division lists the submitted evidence in the same way and with the indication given by the opponent. The evidence is the following:

• Annex 1. A printout from www.forbes.com containing a press article entitled ‘A Closer Look At Philip Morris´ Asia Opportunity’, dated 03/05/2013. The article is in English and contains information about the presence of the opponent’s company and brand in Asia. It shows a representation of a coat of arms depicted in red, white and brown, where the letters ‘PM’ are shown and the words ‘PHILIP MORRIS INTERNATIONAL’ are positioned below, contained within a band: .

• Annex 2 consists of a printout of a company overview of ‘Philip Morris’, carried out by www.threfis.com. Both the printing date of the document (24/06/2015) and the date of the last update of the information contained in it (23/06/2015) fall out of the relevant period of time.

• Annex 3 contains Philip Morris´s annual reports for all years between 2009 and 2013, inclusive. According to the opponent, they are available to the public, and to shareholders. These reports refer to the presence of the ‘Philip Morris’ company in different markets, such as the European Union, and to the different products marketed by the company (for instance, ‘Marlboro’ and ‘Parliament’ cigarettes). The reports include representations of a complex device, containing the letters ´PM´ in the middle, as follows: . It appears on some of the pages of the reports with a reference to ‘Philip Morris’ company.

The document further contains pictures of packaging of some of the cigarettes sold by the company, under brands such ‘Marlboro’ and ‘Parliament’. The cigarettes marketed under ‘Marlboro’ seem to contain the representation of the sign referred to in the previous paragraph. However, it is not possible to see the parts of the sign in detail, due to their small size. Furthermore, it is not clear whether the device contains the letters ‘PM’:

. .

The report refers to the presence of the ‘Philip Morris’ company and the different cigarette brands it produces in the European market, including some highlights about specific countries, such as Germany. The figures of the company income by region show that Europe constitutes the most important market for the company in this regard, throughout the years covered by the report, and ‘Marlboro’ and ‘L&M’ are the most important brands of the company.

• Annexes 4 to 6 contain printouts from the following websites: www.marketoracle.co.uk, www.tobacco-facts.net and http://finance.yahoo.com, showing the use of ‘PM’ as an acronym for ‘Philip Morris’ company.

• Annex 7 contains printouts from the opponent´s homepage www.pmi.com (in different official languages of the EU, including English) where a sign consisting of a coat of arms containing, inter alia, letters ‘PM’, appears in the upper left side of the page. The document refers to the presence of the company and products in different parts of the relevant territory. It is made clear in them that one of the most popular cigarette brands of the opponent in these markets is ‘Marlboro’. The printing date of these documents is 25/06/2015 (i.e. out of the relevant period of time).

• Annex 8. Printout from Wikipedia in Spanish. The printing date of the document is 24/06/2015, being the last editing date 30/04/2015 (i.e. out of the relevant period of time).

• Annex 9. Printout from www.brandsoftheworld.com containing an entry regarding the ‘Philip Morris’ company and its logos. The article has, as the last editing date, 22/08/2012. It contains a representation of a coat of arms containing, inter alia, the letters ‘PM’, accompanied by the name of ‘Philip Morris’.

• Annex 10. Printout from www.financninoviny.cz (Czech website) in Czech containing an article published on 30/04/2015 where ‘Philip Morris’ is mentioned in the title and within the text. The document contains a picture of the entrance to a building. Next to the entrance door, in the wall, both the words ‘PHILIP MORRIS’ and a coat of arms with the same characteristics as the ones referred to in the previous annexes. However, the publication date falls out of the relevant period of time.

• Annex 11. Printout from www.theguardian.com, containing an article published on 01/09/2011. The text is in English and refers to ‘Philip Morris International’ company and the presence of its products in the European market. One of the related topics at the end of the article is ‘tobacco industry’. This article is accompanied by the coat of arms referred to in Annex 10 depicted on a building.

• Annex 12. Printout from www.connexionfrance.com, containing an article published on 17/10/2011. The upper part of the page contains the title ‘The Connexion, France´s English-language newspaper’. The text refers to the increase of the prices of cigarettes and in particular to the price of what refers to as ‘the most popular brand, Marlboro’. The text explains the reasons for such increase and the impact on the French market. The text is accompanied by a picture showing the front part of a Marlboro pack, where a sign consisting of a coat of arms, with the abovementioned characteristics , is visible in the front part of the packaging, however the letters in the middle (if any) are not legible.

• Annex 13 contains a printout from www.news.bbc.co.uk, which according to the opponent is the online edition of the British broadcasting company BBC. The document consists of an article, published 20/04/2005 and refers to the ´Marlboro´ cigarettes, their price increase, and the consequences that this has had for ‘Philip Morris USA’. The article is accompanied by a picture of Marlboro packs, where the same sign referred to in Annex 12 is visible.

• Annex 14 contains a printout from www.temi.repubblica.it with a description of the ‘Philip Morris International’ company, and indicating what they offer to the new employees they are looking for in Italy. The printing date of this document is 6/12/2015 (i.e. out of the relevant period of time) and there is no additional date (e.g. publication date).

• Annex 15 contains a printout from www.amcham.ee. It shows an entry from the American Chamber of Commerce in Estonia. According to the opponent, the entry is from 2012. Even if this entree has 2012 as copyright date, the summary refers to ‘PAST’ events, and it is possible to choose between years 2010 to 2015, and therefore the printout shows information obtained, at least, in 2015. The document contains the depiction of a coat of arms with the same characteristics as that referred to in Annex 9 above, and information about the ‘Philip Morris Estonia’ Company, where it is indicated that it was established in 1997. The document contains the following information ‘Members of the AMCham Estonia include both business and individuals from the United States, Estonia and neighbouring countries who are conducting business in or trade with Estonia’.

• Annex 16 contains a printout from the Greek website www.greece.greekreporter.com, published on 28/02/2013. The article refers to the opposing company and its presence in ‘Greece´s tobacco production’. The document contains the depiction of a coat of arms with the same characteristics as described in previous annexes, accompanied by the name of ‘Philip Morris International’.

• Annex 17 contains a printout from the Italian website www.newslavoro360.it (in Italian). It contains different pictures showing a coat of arms as referred to in Annex 9. It also contains pictures of the ´Marlboro´ packs of cigarettes, and some news entries referring to ‘Philip Morris’, containing the same pictures already referred to, that were published on different dates in 2014 and 2015 (i.e. out of the relevant period of time). The printing date of this document is 6/12/2015 and there is no additional date (e.g. publication date).

• Annex 18 contains a printout from the French website www.ma-cigarette.fr (in French), dated 21/11/2013. The printout contains a reference to ´Philip Morris International (PMI)’. The article contains a picture showing a coat of arms as referred to in Annex 9. At the end of the document, there is information showing the number of times that it has been viewed/read (a total of 234 653 until 03/2015).

• Annex 19 contains a printout from the website www.cigarettestime.com published on 28/06/2012. A reference is made to the company ´Philip Morris International´ and ‘PMI’. The article contains a picture showing a coat of arms as referred to in Annex 9, with a red background. It does not refer to the presence of the opponent in the relevant territory, and the figures referred to are expressed in US Dollars.

• Annex 20 contains a printout from the British website www.clovecigarettes.co.uk, written in English. It refers to ´Marlboro´ cigarettes, produced by ´Philip Morris´. The coat of arms referred to above appear on some of the boxes, however there are no legible letters. The printing date of this document is 06/12/2015 (i.e. out of the relevant period of time) and there is no additional date (e.g. publication date).

• Annex 21 contains a printout from the website www.leightonliterature.com, where a coat of arms, similar to the one described in Annex 9 (with the additional word ‘Slovakia’) is shown. The date of the article is 18/01/2015 (i.e. out of the relevant period of time).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

With regard to the documents submitted in a language different from the language of the proceedings (several articles), it is noted that, pursuant to Rule 19(2)(c), Rule 19(3) and Rule 98 EUTMIR, the evidence that the earlier right has a reputation must be filed in the language of the proceedings or accompanied by a translation within the time limit for substantiation of the earlier right on which the opposition is based. In the case at issue, as it was explained above, the deadline for the opponent to substantiate its earlier rights was 17/06/2016. The opponent did not submit a translation of the articles in question. However, according to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Therefore, the Opposition Division will take into account only the parts of the evidence that are filed in the language of proceedings (e.g. parts of the text or references in English) or at least self-explanatory (e.g. images, representations of the marks, publication and printing dates, etc.)

For the sake of completeness, it is noted that following a request for submission of proof of use for the earlier international registration No 861 924 (in regard to which the opposition was rejected as unfounded), the opponent files on 24/06/2016 evidence to prove the use of this earlier right. As the evidence is submitted after the period set for proving the existence, validity and scope of protection of the earlier rights and mentioned above (i.e. 17/06/2016), this evidence could not be taken into account for the assessment of reputation under Article 8(5) or for the assessment of the prior use in the course of trade of more than mere local significance under Article 8(4) below. The Opposition Division, therefore, proceeds with the analysis of the evidence listed above.

A significant part of the evidence falls out of the relevant period of time. While it is true that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence (e.g. opinion polls, affidavits) are not necessarily available before the relevant date and such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence, this is not the case with the evidence at issue. The evidence dated after the relevant timeframe (printouts from different websites) does not give information about the use of the mark in question in regard to the relevant goods in the market, during the relevant period of time.

The documents corresponding to the relevant period of time contain representations of coats of arms, consisting of two ramping animals (which could be seen as lions or horses) facing each other and separated by an oval shape containing the letters ‘PM’, such as . These letters are sometimes written in the same typeface as the earlier EUTM, and in other documents in a different typeface (i.e. regular upper-case letters). The coats of arms contain a crown on top of the oval shape, and another one on the animal´s head, and a band underneath the oval. Within this band, other words such as ‘Philip Morris International’ are written. The coats of arms are depicted in different colours (e.g. red, blue, etc.). On a part of the submitted evidence the letters ´PM´ (if depicted at all) are not legible.

It is noted that, the earlier registration on which the opposition is based is never used on its own, that is, without being an element of the elaborated shield device. The opponent has not submitted documents where the earlier mark as such is referred to or represented. Within the representations of coats of arms appearing in the documents, the letters ‘PM’ are not particularly outstanding or dominant. They are included (if visible at all) in the coat of arms as one of the conjoined elements in it. Consumers cannot be expected to perceive the coats of arms referred to above, and to identify one of the elements in the coat of arms, which is not particularly outstanding within them, as an independent and reputed trade mark.

Although, in principle, it cannot be ruled out that a trade mark may acquire repute or enhanced distinctiveness even if only used alongside or as part of other marks, the evidence shows that the earlier trade mark (when visible) is placed such a way as to be only an element of a complex device. In the absence of any evidence relating to the renown of the earlier mark per se (e.g. survey evidence), from the evidence adduced, the Opposition Division cannot find that the earlier mark, on its own, has a reputation. Consequently, this element, being the earlier mark, does not enjoy recognition on its own necessary to reach the threshold of reputation.

For the sake of completeness, it is further noted that the shield device (part of which the earlier mark occasionally is) is used in the submitted evidence as a reference to the company of the opponent and/or another company/ies, which might be economically related to the opponent, as the evidential material refers to ‘Philip Morris’ or ‘Philip Morris International’. Even though some of the evidence reflects the production of cigarettes (as in some of the relevant goods), this reference is usually made either in relation to the business of the company per se and/or in reference to other brands under which the said company trades with those products (e.g. ‘Marlboro’, ‘Parliament’).

As a result, the evidence is insufficient to show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

Since the opposition was rejected on the ground of Article 8(5) EUTMR, the Opposition Division will further proceed with the examination on the other ground invoked by the opponent, namely Article 8(4) EUTMR.

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

The opponent based the opposition on a non-registered trade mark alleged to exist in the European Union and all Member States of the European Union in relation to tobacco products; smokers' articles; printed matter.

Regarding the claimed non-registered mark as far as the European Union as such is concerned, it is noted that Article 8(4) EUTMR reflects the existence of non-registered mark in Member States. It grants the proprietors of non-registered marks the possibility of preventing the registration of an EUTM application where they would succeed in preventing use of that EUTM application under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later EUTM are satisfied and the other conditions of Article 8(4) EUTMR are met. As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition. Therefore, the Opposition Division will proceed with the examination on this ground as far as the territories of the Member States are concerned.

In its observations, submitted on 08/09/2015 the opponent focuses, for the purpose of procedural economy, on the territories of Poland and Germany, and evidence is submitted in relation to these territories only. Accordingly, the opposition under Article 8(4) EUTMR will now be examined in relation to the territories of Poland and Germany.

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.

Prior use in the course of trade of more than mere local significance

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. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application (i.e. 14/11/2013 in the current proceedings) for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

The opponent explains that, for economy of proceedings, focuses the analysis and evidence submitted in relation to Article 8(4) EUTMR on the territories of Germany and Poland.

Regarding the existence of the non-registered trade mark in Germany, on 08/09/2015 the opponent filed the following evidence:

• Annex 22. Copy of the German Trademark Act, with an English translation.

• Annex 23. Printout from www.pmi.com, in English. The printing date of this document is 17/07/2015 (i.e. out of the relevant period of time), and there is no additional date that could indicate that the information contained in it was made available during the relevant period of time (e.g. application date).

• Annex 24. Printout from the website www.atlantic-times.com, published on April 2005, in English. This document contains references to the company ‘Philip Morris’ and its products (e.g. cigarettes). There are also some references to places in Germany (e.g. Berlin). However, there is no representation of the non-registered mark.

• Annex 25. Printout from the German version of the entry on the opponent at Wikipedia (in German). This document contains a representation of the non-registered mark, being this the ‘version’ of it in 2008. The printing date is 17/07/2015. According to the opponent, the entry was created on 23/03/2008.

• Annex 26. Printouts of news from the website www.presseportal.de (in German), dated between 2007 and 2013 referring to Philip Morris GmbH. The non-registered mark appears in them, accompanied by ‘Philip Morris GmbH’. In some of these documents depictions of the map of Germany are included.

• Annex 27. Printout from www.liquid-news.de containing an article written in German, published on 24/07/2014. The date of publication is out of the relevant period of time.

• Annex 28. Printout from the website www.mtp.org showing an entry dated 1/04/2012, containing a text in German, and where the non-registered mark is shown, accompanied by the name ‘Philip Morris GmbH’ in capital letters.

• Annex 29. Printouts from the website www.wiwo.de (in German). One of them shows an entry dated 27/05/2011, containing text in German, and where the
  non-registered mark is shown. Another printout shows an entry dated 07/10/2014 (out of the relevant time frame).

• Annex 30. Printout from www.wuermtal.net containing a text in German, and accompanied by a picture of the entrance to a building, where the non-registered mark is shown. The document contains the date 18/12/2013 (beginning of the text), and has the printing date of 17/07/2015, both out of the relevant period of time.

Most of the evidence submitted listed above is in German. In this regard and as it was explained above, according to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document. However, no such translation was received. According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

In this case, the Opposition Division will take into account only the parts of the evidence that are filed in the language of the proceedings (e.g. parts of the text or references in English) or at least self-explanatory (e.g. images, representations of the marks, publication and printing dates, etc.)

Even though some of the indications point to the relevant territory (e.g. German is used in the documents) and some of the information (although scarce) points towards the relevant timeframe, the opponent fails to prove the extent of use of the earlier sign or that the earlier sign is used in connection with the relevant goods.

A significant amount of the evidence is dated out of the relevant period of time, and does not even refer to the use of the non-registered sign during the relevant period of time. For the documents falling within the relevant period of time, one consists of an entry from Wikipedia. The Wikipedia entries cannot be considered a reliable source of information, as they can be amended by Wikipedia’s users. For the sake of completeness, it is noted that the Wikipedia entries do not provide any information on the use of the earlier sign in relation to the relevant goods.

The rest of the submitted evidence (referring to the relevant period of time) are as well printouts from different websites. These, however, when depicting the sign at issue refer to ‘Philip Morris’ company and not to the use of the sign for the relevant goods. When a reference to tobacco products (cigarettes) is made it only concerns the production of the company ‘Philip Morris’ and not the use of the sign at issue for the marketing of the relevant goods.

The evidence submitted, taken together, gives no information about the goods provided under the earlier sign. Furthermore, the opponent submitted no evidence, such as turnover or market figures, or documents that could show any actual marketing of the goods under the earlier sign. Consequently, the opponent failed to submit information on or indications of the extent of use of the earlier sign or use in relation to the relevant goods.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 43).

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the territory of Germany.

Regarding the existence of the non-registered trade mark in Poland, on 08/09/2015 the opponent filed the following evidence:

• Annex 31. Copy of the Polish Act on Industrial Property, accompanied by translation in English.

• Annex 32. Printout from www.pmi.com, in English. The text refers to the presence of the opponent in Poland since 2005. The left side of the page contains, in the section ‘Careers’ references to several dates in 2015. However, the document does not contain a printing date or a publication date.

• Annex 33. Printout from the website zlopiszkowice.ovh.org (in Polish), published on 04/09/2014, and therefore out of the relevant period of time. The article contains the opponent’s sign, accompanied by the name ‘Philip Morris International’.

• Annex 34. Printout from the website lkk.pl where the non-registered mark appears, accompanied by the words ‘PHILIP MORRIS POLSKA’. The document contains text in Polish and English. The printing date of this document is 02/07/2015 (out of the relevant period of time). According to the opponent, the document was created in 2012, which corresponds with the copyright date at the bottom of the page. However, the document contains a section on the right side of the page, where references to dates in 2015 appear. Therefore, the date on which the document was available in the presented form could not be established.

• Annex 35. Printout from www.neo.krakow.pl (in Polish), bearing the printing date 31/08/2015. The opponent claims that the document reports an event of 12/11/2013. Both dates referred to are out of the relevant period of time. The document contains one picture that includes the non-registered mark, among other elements (e.g. a picture of people, maps, etc.).This Annex also contains a printout from automatykab2.pl (in Polish), which includes a picture of a building, together with the opponent´s company name and the representation of the non-registered sign. The document contains a reference to 2013 on what seems to be the date. Lastly, this Annex contains a printout from the website trans-ziem.pl (in Polish), with a printing date of 2/07/2015 (out of the relevant period of time). The document contains a representation of the opponent´s sign, together with the words ‘PHILIP MORRIS POLSKA’.

• Annex 36. A copy of the Polish Act on Combating Unfair Competition and partial translation in English.

• Annexes 37 and 38. Judgements of the Polish Supreme Court of January 9, 2008 (case file II CSK 363/07) and of October 20, 2005 (case file II CK 154/05), concerning unfair competition (with partial translation in English).

• Annex 39. Excerpt from ‘Act on Combating Unfair Competition’, Commentary and partial translation in English.

• Annex 40. Judgement of the Polish Supreme Court of December 14, 1990 (case file I CR 529/90), regarding protection of business name (with partial translation in English).

The vast majority of the text in the documents submitted is in Polish. Following the same approach indicated in the examination of the evidence in relation to the territory of Germany, the Opposition Division will take into account only the parts of the evidence that are understandable (e.g. parts of the text or references in English) or at least self-explanatory (e.g. images, representations of the marks, publication and printing dates, etc.)

In this case, after examining the evidence listed above, the Opposition Division considers that the opponent has not submitted any evidence regarding use of the mark in relation to the goods in question. There are no references at all to the goods for which the non-registered mark was claimed to be protected. The sign is only placed in a reference to the company/ies ‘Philip Morris’. Moreover, most of the evidence is dated outside the relevant period. They could not be related to any use of the sign in relation to the relevant goods at any moment, needless to say within the relevant timeframe. There is no information about turnover figures or any commercialisation of the relevant goods under the opponent’s sign.

It is, therefore, concluded that the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the non-registered mark in Poland.

The opponent focused its arguments and the evidence submitted under Article 8(4) EUTMR on the territories of Poland and Germany, for the purpose of procedural economy. However, the evidence submitted under Article 8(5) EUTMR and listed in the previous section will also be taken into account under 8(4) EUTMR, for the sake of completeness.

The documents submitted under Article 8(5) refer to different Member States. However, as described in the previous section, they have a significant lack of information (see description of annexes and reasoning in the previous section) and cannot contribute to demonstrating the existence of the non-registered sign in the territory of any of the Member States. Therefore, the conclusion, that the use is not proven in regard to the territories analysed in details above (i.e. Germany and Poland) could not be different even based on those documents. Finally, the documents so provided taken as a whole do not show use of the sign in question in the territory of any Member State.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the relevant territories.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Irina SOTIROVA

Irina SOTIROVA

Natascha GALPERIN

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.