OPPOSITION No B 2 583 279
Koberce Breno, spol. s r.o., Antala Staška 1071, 14000 Prague, Czech Republic (opponent), represented by Ladislav Břeský, Botičská 1936/4, 128 00 Praha 2, Czech Republic (professional representative)
a g a i n s t
Laura Maria Vassilaki, Mandilara 38, 85300 Kos, Greece (applicant).
On 30/09/2016, the Opposition Division takes the following
2. The opponent bears the costs.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
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 shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
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 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 08/01/2015. 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 Czech Republic prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for Chemical products for use in industry, plastics in raw condition, adhesives for industry(1); Vinyl floor coverings for forming a floor(19); Fabric and textile ware, not included in other classes, bed covers and tablecloths(24); Carpets, mattings, floor mats, linoleum and other floor facings, wallpapers - not textile ones, floor coverings, floor coverings from PVC(27); Carpet-laying (37); Delivery of floor coverings (39); Carpet edging(40).
On 19/02/2016 and on 26/02/2016 the opponent filed the evidence of use of its earlier sign including the relevant translations as follows:
Printout from the Commercial Register of Metropolitan Court in Prague issued on 21/09/2015 showing the registration details of the company name KOBERCE BRENO, spol. s.r.o which was registered on 22 September 1997.
Ten photographs of the Opponent’s stores.
Four invoices from company LOGOSIGN to the Opponent’s shops in Kolin, Pardubice, Prerov and Tabor. The invoices are for graphic signs, stickers and for services in relation to removing the old signs and installation of new signs and advertisement on the relevant stores.
Copy of a profit and loss account statement of the company KOBERCE BRENO, spol. s.r.o. for 2013. However, it is not clear if the figures mentioned in the report relate to the goods and services on which the opposition is based.
Copy of the front pages from the Opponent’s business annual reports for years 2013 and 2014.
Several advertisements published in the magazines “moderni byt” and “marianne bydleni” from 2014. The advertisements refer to the retails stores BRENO KOBERCE PVC where the biggest range of floor coverings is offered. There is no reference to the relevant earlier goods and services bearing the opponent’s sign.
A vast amount of leaflets, covering period between 2011 and 2014, advertising the sale of carpets and other floor coverings by BRENO KOBERCE PVC. However none of these goods bear the opponent sign instead they are branded with many different names for example ‘SHEFFIELD’, ‘AMBIENT’ or ‘JUMBO’.
Several discount vouchers from the shop BRENO KOBERCE PVC from 2011 and 2012. They relate to the sale of different floor covering products.
Several advertising leaflets by BRENO KOBERCE PVC pointing out to the discounted prices of a big range of different floor coverings e.g. laminate floors branded as PVC AMBIENT, PVC AVANT. The leaflets cover the period between 2012 and 2014.
Print screen from the opponent’s Facebook page from 2009, 2012 and 2015.
Print screen from the opponent’s website www.koberce-breno.cz (not dated).
Several invoices and delivery notes issued by KOBERCE BRENO, spol. s.r.o. and addressed at different customers to various places in the Czech Republic in 2010, 2011, 2012, 2013 and 2014.
Two invoices from company MEDIABOX, spol. s.r.o issued in 2014 and for services in relation to advertisement. However, it is not clear from these invoices what goods and services have been advertised.
Two photographs showing the opponent’s sign used in sponsoring sports events in three cities. One photograph of a note which announces that the opponent sponsored building of a playground for kids in Postřižín village.
Extract from the Guidelines of the Czech Industrial Office.
Decision of the President of the Industrial Property Office (IPO) issued on 20/12/2010. This decision concerns a case where the Czech IPO confirmed that an unregistered sign “ISS INTERNATIONAL SCORPION SECURITY” has been used in the course of trade of more than local significance.
List of the opponent’s customers.
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).
The evidence listed above show that the place of use is the Czech Republic. This can be inferred from the language of the documents (Czech), the currency mentioned (Czech koruna) and the addresses (in the Czech Republic). The above evidence also refers to the relevant time, namely to the period before the filing date of the contested mark.
However, the submitted evidence indicates that the opponent’s sign has been used only in relation to retail services concerning floor coverings. These services do not fall within any of the categories of the goods and services on which the opposition was based. Therefore, the opponent has not shown use for any of the goods and services on the basis of which the opposition was entered neither that the sign has been used in a more than local significance in relation to those goods and service.
The evidence clearly indicates that the opponent main business activity is sale of floor coverings. In fact the opponent itself states in its submission that ‘the Opponent is important supplier of floor coverings in Czech Republic’. This is also supported by the references on the opponent’s Facebook page where the postings invite to visit the nearest shop in order to check the range of the goods, services and ask for advice. The statements on opponent’s website also confirm the opponent is selling floor coverings and related goods originating from many different manufactures to the end consumers.
The advertising leaflets feature a big scale of floor coverings, including carpets, laminate floors. However none of these goods bear the opponent sign instead they are branded with many different names for example ‘SHEFFIELD’, ‘AMBIENT’ or ‘JUMBO’. The same applies to the provided invoices. All goods included in those invoices are denominated with different names.
Furthermore, the references in the advertisements published in the magazines “moderni byt” and “marianna bydleni” are in relation to the retails stores BRENO KOBERCE PVC where the biggest range of floor coverings is offered.
The invoices from the company LOGOSIGN a.s. prove only that some signs and adverts on several opponent’s shops have been replaced. The invoices from the company MEDIABOX suggest that these are for advertising services provided to KOBERCE BRENO, spol. s.r.o. However, it is not clear from them which goods and services have been advertised.
Despite showing some use of the opponent’s company name KOBERCE BRENO, spol. s.r.o. in relation to fitting carpets and other types of floor coverings like laminate floor, it is not apparent from the evidence that the significance of the sign relied on in the present case is indeed more than merely local within the meaning of Article 8(4) EUTMR for these services.
Only few of the invoices include these services and although the opponent submitted a considerable number of advertising leaflets and other advertising materials, none of these refer to these services neither to the reaming goods and services on which the opposition was based.
Hence, the evidence does not succeed in establishing that the sign has been used in
the course of trade of more than local significance for all the goods and services on which the opposition is based, namely Chemical products for use in industry, plastics in raw condition, adhesives for industry(Class 1); Vinyl floor coverings for forming a floor(Class 19); Fabric and textile ware, not included in other classes, bed covers and tablecloths(Class 24); Carpets, mattings, floor mats, linoleum and other floor facings, wallpapers - not textile ones, floor coverings, floor coverings from PVC (Class 27); Carpet-laying (Class 37); Delivery of floor coverings (Class 39); Carpet edging (Class 40).
Consequently, 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 and services on which the opposition was based before the relevant date and in the relevant territory. As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.