OPPOSITION No B 2 918 319

Primetime Denmark A/S, Roholmsvej 4B, 2620, Albertslund, Denmark (opponent), represented by Awa Denmark A/S, Strandgade 56, 1401, Copenhagen K, Denmark (professional representative)

a g a i n s t

Satwant Singh Cheema, 26 Goodmayes Lane, IG3 9NZ Ilford, United Kingdom (applicant).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 918 319 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 613 721 ‘No Nation’, namely against some of the goods in Class 18 and all the goods in Class 25. The opposition is based on Danish non-registered trade mark and company name ‘No Nation’. 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).

In the present case, the contested trade mark was filed on 18/04/2017. However, the contested trade mark has a priority date of 24/11/2016. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in Denmark prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for:

Luggage, bags, wallets and other carriers (Class 18).

Clothing, footwear and headgear, (Class 25).

Wholesale trade of clothing and footwear (Class 35).

On 01/12/2017 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:

• Exhibit 1: Order confirmation of 23/06/2014 from Copenhagen International Fashion Fair issued (CIFF) to ‘No Nation ApS’ (former name of the current opponent) confirming the stand reservation at the fashion fair in 2014, during the period from 03/08/2014 to 06/08/2014.

• Exhibit 2: an undated brand bible (catalogue) of ‘NoNation’, represented as or , including pictures of labels and boxes for articles of clothing and footwear.

• Exhibit 3: Danish Trademark Act No 223 of 26/02/2017 in English.

• Exhibit 4: Registration certificate of 03/03/2017 of Danish trademark No 2017 00542, ‘No Nation’, filed on 23/01/2017 for goods in Classes 18 and 25.

• Exhibit 5: Registration certificate of 27/06/2013 of the domain name ‘www.nonation.dk.’

The economic dimension of the use of the sign has to be assessed in light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (see judgment of 24 March 2009, T-318/06 to T-321/06, ‘General Optica’, para. 37).

The case law expressly provides that the concept of ‘use’ in course of trade under Article 8(4) shall not be confused with the notion of ‘genuine use’ contemplated by Article 18 EUTMR (see judgment of 29 March 2011, C-96/09 P, ‘Bud’, paragraph 143).

Notwithstanding the foregoing, certain evidential rules are common to all proceedings before the Office. In the same way as genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 6 October 2004, T-356/02, ‘Vitakraft’, para. 28, and judgment of 30 November 2009, T-353/07, ‘Coloris’, para. 24), use of a non-registered sign, a trade name or a company name must also be sufficiently certain, solid and objective. In fact, the need not to rely on suppositions or probabilities is even greater in the context of Article 8(4) CTMR where the very creation of the right itself may depend on use.

From the documentation furnished by the opponent, the Opposition Division finds that, even though it may represent an indication of use of the earlier non-registered trade mark and company name, it cannot be considered to be solid evidence for the purpose of establishing use in course of trade as required by Article 8(4) CTMR.

In particular, the opponent did not provide any invoice or any other informational document such as, for instance, advertising material, which could allow the Opposition Division to assess the market share of the earlier non-registered trade mark and company name in relation to the relevant goods or services and, in particular, its exposure amongst the public within Denmark. The opponent’s attendance at the Copenhagen International Fashion Fair during one week in August 2014 as well as the undated catalogue are insufficient to conclude that the public was exposed to the signs.

The registration certificates for the Danish trademark, ‘No Nation’ and for the domain name ‘www.nonation.dk.’ nor the registration certificates concerning the company name filed on 05/07/2017, cannot be regarded as proof of actual goods sold or services provided in the course of trade.

Therefore, the documentation submitted by the opponent, taken as a whole, does not suffice to enable the intensity or degree of use to be established, thus allowing proper assessment of whether the earlier non-registered trade mark and company name had been used in course of trade within the meaning of Article 8(4) CTMR.

2. Conclusion

Considering all the above, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the non-registered trade mark and company name were genuinely used in the relevant territory during the relevant period of time. Therefore, the opposition is not well founded on the basis of the opponent’s earlier signs.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Claudia ATTINÀ

Loreto URRACA LUQUE

Keeva DOHERTY

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.