OPPOSITION No B 2 660 614

Rafael Aguila, Weittenauerstrasse 11, 72108 Rottenburg am Neckar, Germany, (opponent)

a g a i n s t

Edge Systems LLC, 2277 Redondo Avenue, Signal Hill, CA 90755, United States of America (holder), represented by Albright IP Limited, County House, Bayshill Road, Cheltenham, Gloucestershire GL50 3BA, United Kingdom (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 660 614 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 international registration designating the European Union No 1 247 362 ‘HYDRAFACIAL’, namely against all the goods in Class 3 (i.e. cleaning preparations for microdermabrasion machines; non-medicated skin care preparations, namely, lotions and serums). The opposition is based on the German non-registered trade mark ‘Hydrafacial’, claimed to have been used in the course of trade in relation to the following: cleaning solutions for microdermabrasion machines; and non-medicated skin care preparations, namely, lotions and serums. The opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARK

In the explanation of grounds attached to the notice of opposition, the opponent also made reference to an non-registered mark, ‘HYDRAFACIAL’, in the United States of America and claimed that he has the right to use the non-registered mark for goods in Class 3 under US law, ‘where an unregistered trade mark may receive protection under the federal “Lanham Act” (15 USC § 1125)’.

With regard to the non-registered trade mark ‘HYDRAFACIAL’ in the United States of America, it must be noted from the outset that such a right cannot be validly considered a basis for an opposition on the ground of Article 8(4) EUTMR, since the right relates to a territory outside the territorial extent of protection granted by that Article. Consequently, the opposition must be rejected as inadmissible insofar as it is based on a non-registered trade mark in the United States of America.

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.

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.

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 [the EUIPO] 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.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent merely argued that ‘under German law (German Federal Supreme Court, Case I ZR 23/01, September 9 2003 –“Farbmarkenverletzung I”), Rafael Aguila has the right to use the unregistered trademark for Class 3 goods for HYDRAFACIAL’.

CONCLUSION

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely the German non-registered trade mark ‘Hydrafacial’. The opponent did not submit any information on the possible content of the right invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the national law mentioned by the opponent (i.e. in Germany).

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, he must bear the costs incurred by the holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Oana-Alina STURZA

Michal KRUK

Loreto URRACA LUQUE

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.