OPPOSITION No B 1 111 659

mPay Sp. z.o.o., ul. Boryszewska 14/18, 00-781 Warsaw, Poland (opponent)

a g a i n s t

mPAY24 GmbH, Annagasse 5, 1010 Vienna, Austria (applicant), represented by Hans Georg Zeiner, Schellinggasse 6, 1010 Vienna, Austria (professional representative).

On 09/12/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 111 659 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 and services of European Union trade mark application No 4 931 986 ‘MPAY’, namely against all the goods and services in Classes 9, 16, 35, 36 and 38. The opposition is based on the following earlier rights:

• Benelux trade mark registration No 781 548 ‘mpay’,
• Polish trade mark applications No Z-263058 ‘m-Pay’ and No Z-263059 ‘mPay’,
• European Union and each individual Member State company name ‘mPay’, 
• European Union and each individual Member State domain name ‘mpay.eu’, European Union and each individual Member State domain name ‘mpay.org’, Polish domain name ‘mpay.pl’ and Polish domain name ‘m-pay.pl’.

The opponent invoked Article 8(1)(a), 8(1)(b) and 8(4) EUTMR.

PRELIMINARY REMARK

Given that non-registered trade marks are not protected at European Union level, the unregistered rights invoked in this respect, European Union company name ‘mPay’ and European Union domain names ‘mpay.eu’ and ‘mpay.org’, are not an eligible basis for opposition.

The examination of the opposition will continue on the basis of the rest of the invoked earlier rights.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided 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 Rule 19(1) EUTMIR, the Office shall 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 Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

If the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 16/03/2007, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 17/07/2007.

Regarding earlier Benelux trade mark registration No 781 548 ‘mpay’, the notice of opposition was accompanied by a certificate issued by the Benelux Trade mark Office in French. On 17/07/2007 the opponent submitted a translation of the certificate. The indicated expiry date of earlier Benelux trade mark registration No 781 548 is 01/12/2015. On 05/12/2016, the applicant submitted an excerpt from the Benelux Trade mark Office which shows that earlier Benelux trade mark registration No 781 548 ‘mpay’ has not been renewed and that it expired on 01/12/2015. Therefore, the earlier Benelux trade mark registration No 781 548 ‘mpay’ ceased to exist and can no longer be a valid basis for an opposition; therefore it will not be taken into account.

In relation to Polish trade mark applications No Z-263058 ‘m-Pay’ and No Z-263059 ‘mPay’, the notice of opposition was only accompanied by a list of services in English. On 17/07/2007, the opponent submitted two documents in English relating to these applications. According to the opponent’s statements on 17/07/2007 and 18/07/2007, the documents are excerpts from the Polish Patent Office’s data base, which provides the content of the official data base in English except for the specification of the goods and services which is provided in Polish, and that the opponent modified the documents in order to translate the specification of the goods and services into English.

The opponent failed to submit a copy of the relevant filing certificates or an equivalent document, such as an excerpt from an official data base, emanating from the administration with which the trade mark application was filed. The submitted documents within the relevant period, 17/07/2007, are not from an official source and cannot be taken into account.

The opponent submitted the required evidence on 18/07/2007, that is, only after the expiry of the abovementioned time limit.

The reasons alleged by the opponent for the delay must be refused, since it could have submitted the extract from the official data base in English without altering the documents in respect of the specification of the goods and services in Polish, along with the translation of the specifications of the goods and services from Polish into English or file the copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed along with its translation.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier rights.

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

The opposition is based on each individual Member State company name ‘mPay’, each individual Member State domain name ‘mpay.eu’, each individual Member State domain name ‘mpay.org’, Polish domain name ‘mpay.pl’ and Polish domain name ‘m-pay.pl’ under 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.

1. The right under the applicable law

According to Article 76(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 Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection within the period referred in Rule 19(1) EUTMIR.

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 evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment 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 within the relevant period any information on the legal protection granted to the domain names invoked by the opponent.

Regarding the company name, within the substantiation period, the opponent just made a general reference to Polish legislation (Articles 23 and 24 Civil Code and Articles 3 and 5 of the Act on Combating Unfair Competitions). The opponent did not submit any 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 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.

The Opposition Division

Claudia SCHLIE

Alexandra APOSTOLAKIS

Vanessa PAGE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.