OPPOSITION No B 2 749 474

El Dorado Dystrybucja Sp. z o.o., Wagonowa 5-7, 53-609 Wrocław, Poland (opponent), represented by Arkadiusz Michalak, Ul. Masarska 9/6, 31-539 Kraków, Poland (professional representative)

a g a i n s t

Zakłady Mięsne "łmeat-łuków" spółka akcyjna, ul. Przemysłowa 15, 21-400 Łuków, Poland (applicant), represented by Polservice Patent and Trademark Attorneys Office, Bluszczańska 73, 00-712 Warszawa, Poland (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 749 474 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all goods of European Union trade mark application No 15 235 881 , namely against all goods in Class 31. The opposition is based on two earlier Registered Community Designs . The opponent invoked Article 8(4) EUTMR.

Admissibility

The identification of the earlier marks and rights is examined according to Article 8(2) EUTMR and Rules 15(2) and 17(2) EUTMIR.

According to these Articles and Rules, the opposition can be based on six types of earlier rights inter alia earlier signs used in the course of trade. In this respect, the aforementioned articles are concretized by Article 8(4) EUTMR and Rule 15(2) (iii) EUTMIR. This points out that ‘where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this right exists in the whole Community or in one or more Member States and if so, an indication of the Member States,’

As the opponent indicated in the present case these requirements of Rule 15(2)(iii) EUTMIR namely, indication of the kind, the representation and the indication of the Member State, these requirements are met.(See as well, Guidelines for Examination in the Office, Part C, Opposition Procedural Matters, 2.4.2.2 Admissibility check , Relative admissibility requirements, Representation of earlier marks/signs, pages 16, 17)

Therefore, the opposition is admissible.

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.

The opponent bases the opposition on two Registered Community Designs, which he classifies under ‘other rights’.

‘Other signs used in the course of trade’ is a broad category that is not Article 8(4) EUTMR. In order for such signs to come within the ambit of Article 8(4) EUTMR, they must have an identifying function as to commercial origin, that is to say, they must serve to identify an economic activity engaged in by its proprietor (judgment of 29/03/2011, C-96/06 P, Bud, EU:C:2011:189, § 149).

Article 8(4) EUTMR does not cover other types of intellectual property rights that are not commercial signs – such as patents, copyright or design rights which do not have a primarily identifying function but which protect technical or artistic achievements or the appearance of a product.  

As stated above, Article 8(4) EUTMR is aimed at protecting signs used in the course of trade other than registered trade marks. Therefore, it refers to business identifiers such as non-registered trade marks, trade names, company names or establishment names that are protected by law by means of exclusive rights.

This is not the case here. The opponent invokes the aforementioned registered Community designs as they coincide in respect to the included word element ‘Dolina’ with the trademark applied for. However, designs are a form of intellectual property dealing with the ornamental or aesthetic aspects of an article’s appearance. Designs are deemed to be the result of a creative process, which needs to be protected against unauthorised copying or imitation by third parties to ensure a fair return on investment. They are protected as intellectual property but are not business identifiers or trade signs. For the sake of completeness, the opponent did not provide any evidence regarding registration or scope of protection of the rights invoked.

Therefore, designs do not qualify as signs used in the course of trade within the meaning of Article 8(4) EUTMR.

It follows from the above that 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

Renata COTTRELL

Claudia MARTINI

Denitza STOYANOVA-VALCHANOVA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.