OPPOSITION No B 2 364 514
Geonomics Global Games Limited, 5th Floor One New Change, EC4M 9AF, London; GB (opponent), represented by Bristows LLP, 100 Victoria Embankment, EC4Y 0DH, London, United Kingdom (professional representative)
a g a i n s t
NeoLotto Ltd., Office 1/_398, Quantum House, 75 Abate Rigord Street, XBX1120, Ta' Xbiex, MT (applicant), represented by DLA Piper UK LLP, Jungfernstieg 7, 20354, Hamburg, Germany (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
opponent filed an opposition against all the goods and services of
European Union trade mark application No 12 500 708
for the figurative mark
Originally the opposition was also based on EU trade mark application No 10 183 655 of the word mark ‘GEOLOTTO’ in relation to Article 8(1)(b) and 8(5) EUTMR. However, this trade mark application never got registered since it was refused in opposition proceedings by decision B 1 969 214 of 30/06/2015 which was later confirmed in appeal by decision R 1695/2015-1 of 07/09/2016.
Therefore, it cannot serve as a legal basis of the opposition pursuant to Article 8(2)(a) EUTMR in conjunction with Article 8(1)(b) and 8(5) EUTMR and the opposition will continue on the basis of the only remaining ground, namely that of Article 8(4) EUTMR.
The applicant claims that the opponent did not file a valid opposition for two reasons. First, the opponent did not tick in the notice of opposition the box of Article 8(4)(a) but that of Article 8(4) of Regulation (EC) No 207/2009. Second, the opponent failed to meet the requirement of Rule 15(2)(b)(iii) of Regulation (EC) No 2868/95, since the opponent did not clearly specify the nature of the right nor indicated the member states where the claimed rights exit.
However, these arguments cannot succeed. First, Article 8(4)(a) referred to by the applicant did not exist at the time of filing of the opposition (03/06/2014), but was introduced with Regulation (EU) No 2015/2424 to serve as a basis of any opposition proceedings in relation to geographical indications. This Regulation entered into force on 23/03/2016 and, therefore, the opponent correctly invoked Article 8(4) of Regulation (EC) No 207/2009 at the time of filing of the opposition. Second, in relation to this ground of Article 8(4) of Regulation (EC) No 207/2009 the opponent did clearly specify the type of rights and territories invoked by ticking the boxes ‘non-registered trade mark’, ‘EU’ and the ‘UK’.
Nevertheless, the opposition is inadmissible in so far as the opponent intended to base its opposition on a non-registered EU trade mark, since no such right is protected at European Union level and, thus, is not an eligible basis for opposition. It follows from this, that the opposition is not well founded under Article 8(4) of Regulation (EC) No 207/2009, as far as it is based on this non-registered EU trade mark.
As regards the other claimed non-registered right, namely the non-registered UK trade mark, the opponent failed to indicate in accordance with Rule 15(2)(f) of Regulation (EC) No 2868/95 for which goods and services this UK non-registered trade was used in the course of trade in the UK. Since this is a relative admissibility requirement, the opponent should have been invited to remedy this deficiency in accordance with Rule 17(4) of Regulation (EC) No 2868/95. However, in line with Office practice, this was not done at the moment of checking the admissibility, since the opposition was found admissible on the basis of EU trade mark application No 10 183 655.
Since this mark, for reasons explained above, can no longer serve as a basis for the opposition, the question needs to be addressed if the opponent has remedied this deficiency in a later stage of the proceedings by indicating for which goods and services its UK non-registered trade was used in the course of trade in the UK.
After the opposition time period, namely in its observations of 16/12/2014, the opponent claims to have used the sign GEOLOTTO throughout the UK in relation to the provision and management of an on-line lottery, as well as related goods and services, as discussed above (see point 37 of these submissions). Although admittedly this specification is rather vague, when read in combination with what the opponent states in point 14 of the same submissions, where the opponent claims that “the goods and services covered by the applicant’s mark are either identical or highly similar to those covered by the opponents’ mark”, it can be reasonably assumed that the phrase as well as related goods and services, as discussed above refers to the aforementioned point 14 and the goods and services compared above in relation to the earlier invoked EU trade mark application No 10 183 655.
Accordingly, for the sake of economy of proceedings the Opposition Division will not reopen proceedings but proceed on the premise that the earlier non-registered UK trade mark was claimed to be used in the course of trade in relation to the same goods and services for which the earlier refused EU trademark application was invoked under Article 8(1)(b) EUTMR, namely:
Class 9: Computer software for the creation, development, design, provision and management of on-line games including games involving gambling or competitions; computer software for betting, gaming and gambling, including for lotteries; electronic and computer games including games involving gambling or competitions.
Class 28: Games; games involving gambling; games being competitions; articles and apparatus for use in games including games for gambling and in playing games.
Class 38:Telecommunication services, namely, distribution of interactive educational and entertainment products, programs and of computer games; transmission of information on-line via the Internet and/or by means of telecommunications; transmission and/or distribution of data, text, images, graphics, sound and/or audio-visual material; providing access to websites to enable users to participate in and edit content; providing access to software to enable users to participate in and edit website content; all of the aforesaid services in relation to gambling, gaming, competitions and lotteries.
Class 41: Arranging, organising, provision, management and administration of gambling, gaming, lottery, casino, services; gambling, gaming and casino services; lottery services; arranging, organising, provision, management and administration of competitions including lotteries; provision of the aforesaid services in electronic or computerised form; provision of the aforesaid services on-line from a computer database, the Internet or other telecommunications; provision of information relating to gambling, gaming and lottery services accessible via the Internet or other telecommunications; provision of information on line from a computer database or from the Internet in relation to gambling, gaming, lottery, amusement and entertainment services.
This approach is the best light in which the opponent’s case can be considered, but will not prejudice the applicant as will be clear from the outcome of this case.
NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
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 precluding an earlier right that 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 for 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 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).
In the present case, the contested trade mark was filed on 14/01/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the goods and services of Classes 9, 28, 38 and 41 listed above.
On 16/12/2014 the opponent filed the following evidence:
Annex A: Undated screen shot from the opponent’s website www.geolotto.com.
Annex B: Invoices from various suppliers addressed to Geo24 UK Ltd, dated 14/08/2014, 31/10/2014, 03/10/2014, 11/08/2014 and 21/10/2014 concerning service orders for media, production and advertising.
Annex C: Information about the launch of an advertising campaign starting from September 2014 until December 2014.
Annex D: Press release dated 01/09/2009 about the website www.thetrainline.com owned by the leading UK rail ticket retailer and rail ticket information provider.
Annex E: Screenshots from the opponent’s Youtube page www.youtube.com/user/geoLottoGame containing the text: “Want to know how to play www.geolottocom? We’ve put together this quick and simple How-To-Play guide to tell you all you need to know to get started” published on 26/09/2014.
Annex F: Undated screenshots from the opponent’s Facebook and Twitter page both showing the text: “We’re Geolotto com a brand new online lotto game where your Lucky Place can win up to £1 million”. The Facebook page shows that it has 2,809 followers and the Twitter page shows that it has 2,718 followers.
Annex G: Document of unknown origin dated 16/12/2014 containing statistics showing numbers of visitors to the website www.geolotto.com broken down by EU countries over the period 01/08/2013 – 15/12/2014. It shows that the opponent has received over half a million visitors to its website from the UK alone which has resulted in almost 200,000 separate transactions, leading to a revenue of around £90,000.
Moreover, in its observations the opponent’s inserted the following turnover figures in respect of the use of the opponent’s mark in respect of goods and services relating to lottery services since 2013:
And the following advertising spend figures in relation to the use of the opponent’s mark in respect of lottery services since 2013:
The opponent claims that the use is sufficient to prove the acquisition, continued existence of the non-registered trade mark. In its observations of 16/12/2014 the opponent states that the use of the mark commenced on 13/08/2013 (see point 21) and that the turnover figures demonstrate substantial growth in a short space of time (see point 23).
Moreover, the opponent claims that the advertising figures (point 24) show that the opponent has invested significantly in advertising the goods and services and that this is supported by the invoices of Annex B (see point 25). Furthermore, the opponent admits that the information about the advertising campaign (Annex C) is dated after the date of application of the applicant’s mark, but claims that this is suggestive of the types of advertising that would have been conducted on various website including the website www.thetrainline.com (see points 26-27).
However, it must be borne in mind that according to established case law genuine use of a trade mark, cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (30/11/2009, T‑353/07, ‘Coloris’, EU:T:2009:475, § 24 and of 08/07/2004, T-203/02, ‘Vitafruit’, EU:T:2004:225, § 42).
Moreover, contrary to the use requirement of registered trade marks, it must be noted that for non-registered trade marks and business identifiers which do not require registration, use constitutes the only factual premise justifying the existence of the right, including the ascertainment of the beginning of its existence. In the case of unregistered signs, the use is a matter of substantiation, that is, it must prove that the right exists at all.
In this context, Rule 19(2)(d) EUTMIR (in the version in force at the time of filing of the opposition) expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection of that right. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded (Rule 20(1) EUTMIR in the version in force at the time of filing of the opposition). This use requirement applies irrespective of the requirements met under national law in order to acquire exclusive rights.
Against this background it must concluded that on the basis of the evidence submitted the opponent failed to prove that it had a non-registered trade mark ‘GEOLOTTO’ at the moment of filing of the contested mark for the following reasons.
First, it must be noted that it is mentioned in the opponent’s observations that the sign ‘GEOLOTTO’ was only shortly before the relevant time, i.e. 14/01/2014 introduced on the market namely as from 13/08/2013. The opponent claims that within that short time period (about five months) there was a substantial growth due to significant investments in advertising.
However, there is no evidence dated within that time frame showing that this had led to any substantial use of the mark in the course of trade. As correctly pointed out by the applicant, almost all evidence is dated after the filing of the contested application or not dated at all (see annexes A-C and E-F) and in so far as it provides some quantitative data as to the use of the opponent’s website (Annexes F and G) is not very impressive for a country like the UK. The only pieces of evidence that refer to an earlier date are Annex D and Annex G. However, Annex D is completely irrelevant, as it is merely intended to show the type of website where the opponent’s advertising could have been published, while the statistics of Annex G do not provide a clear picture of the amount of visits of the opponent’s website and consequent transactions until 14/01/2014, since the data relate to a period which extends until 11 months after this date.
Moreover, there is no information as to the provenance of this document. Also the turnover figures and advertising spends mentioned in the opponent’s observations are of an unofficial character, not being part of any official or published document, nor is there any information regarding their origin, the circumstances in which they came into being or who is responsible for them. Therefore, also considering that they emanate from the opponent, a party interested in the outcome of these proceedings, the data are of very little probative value without any additional independent evidence to support it.
In the present case there is no such evidence to support these figures, since none of the documents show any actual sales of the goods and services which could support the turnover figures and the invoices cannot support the advertising figures since they are dated after the filing date of the contested application.
Considering all the above, it must be concluded that the evidence submitted by the opponent is insufficient to prove that the earlier right actually has a real presence on the relevant UK market (29/03/2011, C-96/09 P, ‘BUD’, EU:C:2011:189, § 157), because it has not been proven that the earlier right was used in the course of trade of more than local significance in connection with the goods and services claimed before the relevant date and in the relevant territory, the United Kingdom.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.