OPPOSITION No B 3 055 025

Malhas Sonix, S.A., Rua Filipa Borges, 1163 a 1245, 4754-909 Barcelos, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103, Lisboa, Portugal (professional representative)

a g a i n s t

Lenntek Corporation, 1610 Lockness Place, 90501 Torrance, United States of America (applicant), represented by Filemot Technology Law LTD, 25 Southampton Buildings, WC2A 1AL London, United Kingdom (professional representative).

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

DECISION:

1. Opposition No B 3 055 025 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 866 411 for the word mark ‘SONIX’, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 3 810 942 for the figurative mark , Portuguese trade mark registration No 345 024 for the figurative mark and other sign used in the course of trade in Portugal, namely the registered Logotype No 35 177 . The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

a) European Union trade mark registration No 3 810 942 for the figurative mark , and Portuguese trade mark registration No 345 024 for the figurative mark .

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

On 11/12/2018 the applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 3 810 942 and Portuguese trade mark registration No 345 024.

The request was filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 14/12/2018 the opponent was given two months to file the requested proof of use. This time limit expired on 19/02/2019.

The opponent did not submit any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected as unfounded pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR, as far as it is based on these earlier rights.

b) The earlier registered Logotype No 35 177 .

SUBSTANTIATION OF 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.

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.

According to 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 will be 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 Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof 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 the present case, the notice of opposition was accompanied by the registration certificate of the opponent’s right however there was no evidence whatsoever showing that the opponent’s registered Logotype has been used for more than mere local significance in Portugal. Additionally, the opponent must provide the relevant national law and show that it would succeed under that national law in preventing the use of the subsequent trade mark.

The Opposition Division wishes to remind that the above-mentioned evidence should be filed by the opponent within the substantiation period.

In the present case, the opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

The mere fact that the sign is registered in accordance with the requirements of the respective national law is not in itself sufficient for the application of Article 8(4) EUTMR. As mentioned above, the use requirement in Article 8(4) EUTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a business identifier alone, that is, without any requirement relating to use.

Due to the cumulative nature of the provisions it is redundant to enter into the absence of information concerning the relevant national law. Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

Consequently, the opposition will 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 (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

Monika CISZEWSKA

Reet ESCRIBANO

Alina FRUNZA

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.