Leitsätzliches
1) On 01/02/2020, the United Kingdom (UK) withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period European Union law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds.
The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision.
2) As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition.
3) The United Kingdom cannot be claimed as valid territory of the subject proceedings as UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds.
4) Merely quoted provisions of the United Kingdom law within the text of the opponent’s submission are, in any event, not sufficient in order to substantiate the opposition in relation to Article 8(4) EUTMR.

UK trademark does not (any longer) entitle to object to EU trade mark - EUIPO, Dec. from 12.2.2021 No.: B 003029595

 

OPPOSITION No. B 3029595
12/02/2021
 

[deutsche Version]

[...] London, UK (opponent), represented by [...] London, United Kingdom (professional representative)


a g a i n s t


Jann B. [...] Germany (applicant), represented by Terhaag & Partner Rechtsanwälte, Graf-Adolf-Str. 70, 40210 Düsseldorf, Germany (professional representative).


On 12/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 595 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 17 364 738 #sorrybro (word mark). The opposition is based on the following earlier rights:

1. United Kingdom trade mark registration No 3 181 272 for the word mark ‘SORRYBRO’ in relation to which the opponent invoked Article 8(1)(a); 8(1)(b) and 8(5) EUTMR.
2. United Kingdom trade mark registration No 3 182 882 for the figurative signin relation to which the opponent invoked Article 8(1)(a); 8(1)(b) and 8(5) EUTMR.
 
3. Non-registered word trade mark ‘SORRYBRO’ used in the course of trade in Austria; Croatia; Denmark; Finland; Greece; Italy; Luxembourg; Poland; Slovakia; Sweden; United Kingdom; Slovenia; Portugal; Malta; Latvia; Hungary; France; EUIPO; Cyprus; Belgium; Bulgaria; Czech Republic; Estonia; Germany; Ireland; Lithuania; Netherlands; Romania; Spain. In relation to which the opponent invoked Article 8(4) EUTMR.
4. Non-registered figurative trade mark used in the course of trade in Austria; Croatia; Denmark; Finland; Greece; Italy; Luxembourg; Poland; Slovakia; Sweden; United Kingdom; Slovenia; Portugal; Malta; Latvia; Hungary; France; EUIPO; Cyprus; Belgium; Bulgaria; Czech Republic; Estonia; Germany; Ireland; Lithuania; Netherlands; Romania; Spain. In relation to which the opponent invoked Article 8(4) EUTMR.

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period European Union law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense,must also be fulfilled at the time of taking the decision.

In the instant case, the opponent based the proceedings on two United Kingdom trade mark registrations (i.e. Nos 1 and 2 of the above list). The opposition is also based on two nonregistered trade marks used in the course of trade in, inter alia, the United Kingdom (i.e. Nos 3 and 4 of the above list).
Taking into account the above statement, it shall be concluded that the opposition no longer has a valid basis and it must be dismissed, as far as the above mentioned earlier rights and the invoked relative grounds i.e. Art 8(1)(a); 8(1)(b); 8(4) and 8(5) are concerned.

Consequently, the Opposition Division will assess the proceedings only on the basis of Nonregistered word trade marks ‘SORRYBRO’ andused in the course of trade in Austria; Croatia; Denmark; Finland; Greece; Italy; Luxembourg; Poland; Slovakia; Sweden; Slovenia; Portugal; Malta; Latvia; Hungary; France; EUIPO; Cyprus; Belgium; Bulgaria; Czech Republic; Estonia; Germany; Ireland; Lithuania; Netherlands; Romania; Spain. In relation to which the opponent invoked Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE - ARTICLE 8(4) EUTMR

(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.

b) The right under the applicable law

As a preliminary remark it is noted that the opponent’s claimed, inter alia, ‘EUIPO’ among the Member States on which the non-registered trade marks 3 and 4 are protected. The Opposition Division understands that with this claim the opponent wished to rely on a nonregistered trade mark used in the course of trade in the European Union.

Non-registered use-based trade marks exist in a number of the Member States and are signs that indicate the commercial origin of a product or service. Therefore, they are signs that function as a trade mark. The rules and conditions governing acquisition of rights under the relevant national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the EUTMR concerning registered trade marks.

In this regard, it must be recalled that Article 8(4) EUTMR reflects the existence of such rights in Member States and grants the proprietors of non-registered marks the possibility of preventing the registration of an EUTM application where they would succeed in preventing use of that EUTM application under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later EUTM are satisfied and the other conditions of Article 8(4) EUTMR are met. As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition.

In light of the subject principles, the opposition must be rejected as far as the above claim is concerned as a non-registered trade mark used in the course of trade in European Union cannot be considered an eligible basis for opposition.

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 Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

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 information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.
As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the
law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language.
The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfillment 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 did not submit any or sufficient information on the legal protection granted to the type of the non-registered trade marks invoked by the opponent.

Specifically, the opponent did not provide any reference to the relevant legal provision and its content regarding the applicable law in Austria; Croatia; Denmark; Finland; Greece; Italy; Luxembourg; Poland; Slovakia; Sweden; Slovenia; Portugal; Malta; Latvia; Hungary; France; EUIPO; Cyprus; Belgium; Bulgaria; Czech Republic; Estonia; Germany; Ireland; Lithuania; Netherlands; Romania; Spain.

As far as United Kingdom and Ireland are concerned, it is noted that the Opponent merely quoted some provisions of the United Kingdom law of passing off, only.

In this regard, it was already concluded that United Kingdom cannot be claimed as valid territory of the subject proceedings as UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds.

Besides, the opponent failed to submit any relevant jurisprudence demonstrating if – and under which terms and conditions – the provided provisions of the United Kingdom law of passing off can be applied in the assessment of the tort of passing off in the Republic of Ireland.

Finally, as outlined above, it is required that the opponent must provide the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). In the subject case, the opponent failed to adduce any original publications of the relevant provisions or jurisprudence. Therefore, the merely quoted provisions of the United Kingdom law within the text of the opponent’s submission are, in any event, not sufficient in order to substantiate the opposition in relation to Article 8(4).

Consequently, it is considered that the opponent did not submit any sufficient and valid information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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, 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.

A.D.B    A.B.    C. B.

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.