Agora Trading | Decision 2454471 – AGORA, S.A. v. ΑGORA TRADING ΕΤΑΙΡΙΑ ΠΕΡΙΟΡΙΣΜΕΝΗΣ ΕΥΘΥΝΗΣ ΣΥΜΒΟΥΛΩΝ – ΑΝΤΙΠΡΟΣΩΠΕΙΩΝ – ΕΜΠΟΡΙΑΣ – ΕΙΣΑΓΩΓΩΝ

012000000 - 012999999, 012274171, 2017, 22, A-company, A-trademark, Agora Trading, AGORA, S.A., Date, Decision Type, I-company, Involved Parties, OPPOSITION, September-2017, Trademark, Trademark number

OPPOSITION No B 2 454 471

Agora S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Αgora Trading Εταιρια Περιορισμενησ Ευθυνησ Συμβουλων – Αντιπροσωπειων – Εμποριασ – Εισαγωγων, Λεωφόρος Βασιλέως Κωνσταντίνου 2, 11635  Αθήνα, Greece (applicant), represented by Κλεοπάτρα Κούτρα, Πατριαρχου Ιωακειμ 48-50, 10676  Αθήνα, Greece  (professional representative)

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 454 471 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 services of European Union trade mark application No 12 274 171, namely against all the services in Class 35. The opposition is based on non-registered trade mark ‘AGORA’ for services in Classes 35 and 36. The opponent invoked Article 8(4) EUTMR.

AGORA

http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=105266442&key=944711f30a84080262c4268f1d2d39b5

Earlier non-registered sign

Contested sign

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.

  1. Prior use in the course of trade of more than mere local significance

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. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested mark was filed on 01/11/2013. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Spain prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for administrative management and account and financial services.

On 14/03/2017 the opponent submitted, as evidence of use in the course of trade, the following documents:

  • Extract of the Company Registry of Madrid showing registration of AGORA S.A. on 02/02/1998.

  • Signed declaration of Mr. Juan Jose Sanz Pérez, the opponent’s company financial manager setting out the company’s structure and activities.

  • Copies of 133 invoices made out by AGORA S.A. covering the period 31.01.2010 – 31.01.2015.

  • Copy of the financial statement of AGORA S.A. for the year 2014.

  • Extract from the Spanish Patent and Trademark Office’s database ‘Sitadex’ showing registration of the commercial name AGORA on 20/11/2001.

In the present case, the evidence filed by the opponent does not show any use of the trade name “AGORA”, but only of the company name “AGORA, S.A.”. Although this circumstance in itself would suffice to reject the opposition, for the sake of completeness the Opposition Division will also analyse the evidence of use of the latter.

The evidence shows some use of the company name, but there are not sufficient indications regarding the specific services for which it has been used, since the statement of the financial manager of the opponent is not corroborated by the invoices which only refer generically to “management services according to agreement” and no agreement has been filed in order to ascertain the nature of said services. Therefore there is no evidence of use of the company name for the services on which the opposition is based, namely administrative management and account and financial services.

In addition, the evidence does not show use in the course of trade of more than local significance, even for those generically described services. Most of the invoices seem to be merely internal use: the statement from the financial manager explains that the services are provided to group companies and many of them are addressed to companies with an identical address and, as regards those that could qualify as external use, they concern only a very small number of clients in a limited geographical area (Molins de Rei and Barcelona). The opponent did not submit any evidence relating to the advertising and promotion of the mark in Spain or other material showing that the sign in question had established itself in the marketplace to such an extent as to show that its use in the course of trade is of more than mere local significance.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Ferenc GAZDA

Cynthia DEN DEKKER

Jose Antonio GARRIDO OTAOLA  

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.

Leave Comment