OPPOSITION No B 2 920 133

Kaching AB, Nybrogatan 39, 114 39 Stockholm, Sweden (opponent), represented by Stefan Widmark, Stureplan 13, 103 88 Stockholm, Sweden, and Vamo Varumärkesombudet AB, Kungsportsavenyen 3, 411 36 Göteborg, Sweden (professional representatives)

a g a i n s t

Kashing Limited, Wimbledon Methodist Church, 1 Griffiths Road, Wimbledon, London, SW19 1SP, United Kingdom (applicant), represented by Baron Warren Redfern, 1000 Great West Road, Brentford, TW8 9DW, United Kingdom (professional representative).

On 26/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 920 133 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 557 613 , namely against all goods and services in Classes 9, 36 and 38. The opposition is based on the company name ‘KACHING AB’ used in the course of trade in Sweden for developing digital solutions and products for companies, carry on trade in securities and business compatible therewith. The opponent invoked Article 8(4) EUTMR.

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.

1. 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, 166).

Moreover, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered, and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the contested trade mark was filed on 05/04/2017. 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 Sweden prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade in the field of developing digital solutions and products for companies, carry on trade in securities and business compatible therewith.

On 03/07/2017 and 21/11/2017, that is, within the time limit set by the Office to substantiate the earlier right and to submit further material, the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence consists of the following documents:

• registration certificate of the Swedish company name ‘Kaching AB’, dated 01/11/2016, and its English translation; the object of the company is ‘The company shall develop digital solutions and products for companies, carry on trade in securities and business compatible therewith’;

• copy of the Swedish Trade Marks Act and partial English translation;

• extracts from the website kaching.mobi (in English) presenting the mobile retail platform and mentioning that Kaching worked together with another company, Digital Inn, to launch a product in Stockholm in June 2017; the extract also indicates that Digital Inn ‘welcomes 500k visitors to their stores every year’;

• extract from the website www.digitalinn.se dated 02/11/2017 presenting the activity of the company Digital Inn;

• Press release from Creades AB dated 24/02/2017 entitled ‘Creades invests in Kaching’, mentioning that Kaching worked with a telecommunication company and launched a product during spring 2017;

• booklet about an event entitled ‘Merchant payments ecosystem’, held in Berlin on 20-22/02/2018, and an extract from the website kaching-summit.confetti.events mentioning a ‘Kaching Summit’ in Stockholm in November 2017; one of the speakers indicated in both events is presented as being the founder and/or CEO of Kaching;

• copy of a business card of the ‘head of operations’ at Kaching (undated);

• extracts from the website www.kashing.co.uk (undated).

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 or 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 Opposition Division notes that most of the evidence is either undated or dated after the relevant date (e.g. the booklet dated in 2018) or refers to products/services launched on the market after this date (i.e. in June or spring 2017). Moreover, only some of the documents refer to the territory of Sweden, where the sign is protected, while others refer to Germany and the United Kingdom. Finally, all of the documents come from the opponent or related companies.

It follows that the evidence submitted by the opponent does not provide a convincing picture of use of the company name ‘KACHING AB’ in Sweden prior to the filing of the contested trade mark in the relevant territory.

The Opposition Division therefore considers that the evidence does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. In particular, the documents filed do not provide sufficient information concerning the commercial volume (no sales figures), the duration and the frequency of use of the earlier right, since no commercial documents, such as invoices or market surveys, have been submitted. In this regard, the opponent points out the level of investments made by the company Creades AB in Kaching AB. However, this kind of figure does not reflect any potential use in the course of trade of the company name as requested by Article 8(4) EUTMR, as they concern only financial transactions between two companies.

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 business activities on which the opposition was based before the relevant date and in the relevant territory.

On 09/04/2018, after expiry of the time limit, the opponent submitted the following additional evidence:

• copy of the Swedish Trade Names Act in English;

• copies of two emails sent from email addresses containing the name ‘kaching’;

• extract from a website on which it can be read that Kaching won the ‘MPE Awards — Public vote’ in the category ‘influence of the year’ in 2018.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or insufficient, the opposition will be rejected as unfounded.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence with regard to the substantiation of the earlier mark concerned is submitted within the time limit set by the Office or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) EUTMDR, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted after expiry of the time limit when the evidence submitted within the time limit is manifestly irrelevant or manifestly insufficient.

It has been stated above that the evidence submitted by the opponent within the set time limit is manifestly insufficient for and/or irrelevant to the proceedings in question. Therefore, the evidence submitted on 09/04/2018, after expiry of the time limit, cannot be taken into account.

For the sake of completeness, the Opposition Division notes that, in any case, this belated evidence is clearly irrelevant to the proceedings, since it does not contain any information concerning the use of the company name in the course of trade.

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 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 (formerly 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

Carmen SÁNCHEZ PALOMARES

Julie, Marie-Charlotte HAMEL

Cristina CRESPO MOLTÓ

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.