OPPOSITION No B 2 483 868

Expom Kwidzyn Spólka z Ograniczoną Odpowiedziainoścíą, Nowy Dwór 1, 82‑500 Kwidzyn, Poland (opponent), represented by Krystyna Kozak, ul. 3 Brygady Szczerbca 2B/9, 80‑041 Gdańsk, Poland (professional representative)

a g a i n s t

Andrzej Markowski, Maszewo Duże, ul. Lipnowska 73, 09‑400 Płock, Poland (applicant), represented by Rumpel Spółka Komandytowa Rumpel i Partnerzy, Częstochowska 1a, 93‑115 Łódź, Poland (professional representative).

On 21/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 483 868 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 13 231 816 , namely against all the goods in Classes 9, 11 and 12. The opposition is based on the following earlier rights:

1. Polish trade mark application No Z. 432 770 , which matured into registration No 301 377;

2. Polish non-registered trade mark and/or trade name ;

3. Polish non-registered trade mark and/or trade name .

The opponent invoked Article 8(1)(a), (b) and Article 8(5) EUTMR in connection with the earlier right (1), Article 8(4) EUTMR in relation to Poland in connection with the earlier rights (2) and (3), and Article 8(3) in relation to Poland in connection with the earlier right (1) and non-registered trade marks (2) and (3).

The opponent also refers to copyright, however, this cannot be taken into account as copyright is not an admissible earlier right under Article 8 EUTMR.

SUBSTANTIATION

According to Article 41(1) EUTMR (in the version in force at the time of filing of the opposition, now Article 46(1) EUTMR), the notice of opposition must be filed within a period of three months following the publication of the European Union trade mark application.

According to Rule 15(2)(b) EUTMIR (in the version in force at the time of filing of the opposition), the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based. According to Rule 15(2)(e) EUTMIR (in the version in force at the time of filing of the opposition), the notice of opposition must contain a representation of the earlier mark as registered or applied for; if the earlier mark is in colour, the representation must be in colour.

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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 trade mark that is not yet registered, the opposing party must submit 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 European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR (in the version in force at the time of commencement of the adversarial part).

On 20/02/2015, the opponent filed an opposition against the contested application. One of the earlier rights on which the opposition was based was Polish trade mark application No Z. 432 770 . The notice of opposition did not contain a colour representation of this earlier mark, nor were colours seen or indicated in the extract of Polish trade mark application No Z. 432 770 from the Polish trade mark office’s database, which was submitted together with the notice of opposition.

On 04/03/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the facts, evidence and arguments in support of its opposition, namely until 09/07/2015. On 08/07/2015, within the time limit, the opponent submitted, inter alia, pages 2-6 of the notice of opposition and a copy of Polish application No Z. 432 770 from the TMview database with its translation in English.

As the opponent had provided no indications in the notice of opposition, or during the opposition period, that the earlier mark was in colour (a representation in colour, or a colour claim), and only submitted a colour representation to the Office on 08/07/2015 in order to substantiate its opposition, the evidence submitted for substantiation purposes does not support the claims set out in the notice of opposition.

Therefore, the opposition must be rejected as unfounded as far as it is based on Polish trade mark application No Z. 432 770 (which matured into registration No 301 377) and in relation to Article 8(1)(a) and (b), Article 8(3) and Article 8(5) EUTMR invoked in connection with this earlier right.

The examination of the opposition will continue in relation to Article 8(4) and Article 8(3) EUTMR in connection with the earlier rights (2) and (3).

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 European Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The opponent invoked Article 8(4) EUTMR in relation to Polish non-registered trade marks and trade names and in the notice of opposition.

In relation to all of the abovementioned earlier rights, the goods and services on which the opposition is based under this Article are the following:

Class 6: Metal moulds for plastics processing: injection, blow, compression, press tools, blanking dies.

Class 7: Motor starters, alternators (AC generators), DC generators and components for starters, alternators, DC generators, power generation devices for motor vehicles.

Class 12: Electrical and electronic equipment for motor vehicles, parts and accessories for motor vehicles, except for motorcycles, starters and components for motor vehicles and for drives and motors, electrical and electronic system components for motor vehicles.

Class 35: Retail, wholesale and online trade services of power generation devices for motor vehicles, electrical system components for motor vehicles, new and reconditioned: starters, alternators, generators for vehicles and components for starters, alternators, generators for motor vehicles, agricultural machinery and equipment and additional equipment, equipment and electronic components for motor vehicles; parts and accessories for motor vehicles, except for motorcycles; metal moulds for plastics processing: injection, blow, compression, press tools, blanking dies.

Class 37: Reconditioning services for alternators, starters and DC generators and components for alternators, starters and generators for motor vehicles, reconditioning services for blanking dies, injection moulds, industrial engineering components, electrical and electronic equipment for motor vehicles; parts and accessories for motor vehicles, except for motorcycles; components for motor vehicles and for drives and motors, electrical and electronic system components for motor vehicles, power generation devices for motor vehicles.

Class 40: Services in the field of material processing, heat treatment of metals; sandblasting, tumbling, metal cleaning; metal staining and engraving; coating of metals with non-metallic coatings by enamelling, lacquering, coating with plastics; curing (hardening), metal polishing; drilling, stamping, milling, shaving, planing, grinding, pull broaching, polishing, cutting, sharpening, welding, riveting of metal components; turning services on copying lathes; services in the field of plastics processing.

Article 8(4) EUTMR is aimed at protecting signs used in the course of trade other than registered trade marks. Therefore, it refers to business identifiers such as non‑registered trade marks, trade names, company names or establishment names that are protected by law by means of exclusive rights.

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

As already indicated above, according to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), 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 OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The 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’s submissions of 08/07/2015 contain a reference to ‘Article 131(1)PL-IP Law Act’ and a statement that the contested sign should not be registered in the name of the applicant ‘since protection rights cannot be assigned to designations, whose use violates personal or property rights of third parties and is contrary to good practice’. Aside from this, the opponent did not submit any further information on the legal protection granted to the types of signs it invoked, namely Polish non-registered trade marks and trade names. The opponent did not submit sufficient information on the possible content of the rights invoked or the conditions to be fulfilled for it to be able to prohibit use of the contested trade mark under the laws in Poland.

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

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

In the absence of any restriction in Article 8(3) EUTMR, and in view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and covers not only registered trade marks, but also applications and non-registered trade marks. In contrast, the express reference to ‘trade marks’ means that Article 8(3) EUTMR does not apply to mere signs used in the course of trade, other than unregistered trade marks.

According to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks. According to Rule 19(2)(e) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the opposition is based on an earlier right within the meaning of Article 8(3) EUTMR, the opposing party must provide evidence of their proprietorship. It follows that the opponent has to prove that it was the rightful proprietor of the earlier marks when the opposition was filed.

It is important to note that the evidence required in each case will depend on the kind of right relied upon.

In the present case, the opponent invoked Article 8(3) EUTMR in relation to Polish trade mark application No Z.432 770 (registration No 301 377) in relation to which the opposition has already been rejected as unfounded for the reasons explained in the substantiation section of the present decision.

In addition, the opponent invoked Polish non-registered trade mark and Polish non-registered trade mark .

It has been stated above that non-registered trade marks fall within the term ‘trade marks’ in the sense of Article 8(3) EUTMR. Consequently, non-registered trade marks are covered by this provision provided that the law of the country of origin recognises rights of this kind.

As already set out above in the section dealing with the opponent’s claims under Article 8(4) EUTMR, the opponent’s arguments in connection with the Polish non-registered trade marks are essentially based on a mere reference to ‘Article 131(1)PL-IP Law Act’. It is unclear, therefore, whether and under what conditions, Polish law recognises the rights invoked by the opponent. Nor has the opponent put forward any evidence that would shed light on the provisions of the Polish law about the requisites for acquiring exclusive rights in non-registered trade marks, or their scope of protection. Therefore, it is impossible for the Opposition Division to assess whether the evidence of use submitted by the opponent in relation to the non-registered Polish trade marks is sufficient to successfully rely on this type of right.

Consequently, the opposition must be rejected as not well founded under Article 8(3) EUTMR.

It follows that the opposition must be rejected in its entirety.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (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

Solveiga BIEZA

Rasa BARAKAUSKIENE

Denitza STOYANOVA-VALCHANOVA

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.