OPPOSITION No B 2 753 559
Naturally Ahimsa Ltd., Unit 5, The Listed Building, 350 The Highway, London E1W 3HU, United Kingdom (opponent), represented by Shoosmiths LLP, Apex Plaza, Forbury Road, Reading, Berkshire RG1 1SH, United Kingdom (professional representative)
a g a i n s t
Le-Vel Brands LLC, 9201 Warren Parkway #200, Frisco Texas 75035, United States of America (applicant), represented by Finnegan Europe LLP, 16 Old Bailey London EC4M 7EG, United Kingdom (professional representative).
On 10/07/2017, the Opposition Division takes the following
DECISION:
- Opposition No B 2 753 559 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 in Classes 3, 5 and 35 of European Union trade mark application No 15 229 982. The opposition is based on European Union trade mark registration No 6 095 467 for the word mark ‘THRIVE’, on the non-registered trade mark ‘THRIVE’ (word) in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, The Netherlands and the United Kingdom, as well as on the trade name ‘THRIVE’ in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, The Netherlands and the United Kingdom. The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.
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THRIVE
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Earlier trade mark |
Contested sign |
PROOF OF USE – ARTICLE 8(1)(b) EUTMR
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the European Union trade mark No 6 095 467 on which the opposition is based.
The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
On 25/01/2017 the opponent was given until 30/03/2017 to file the requested proof of use.
The opponent did not furnish any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.
Therefore, the opposition on the basis of this earlier mark must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
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 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.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will 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 will 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 must also file proof of the existence, validity and scope of protection of its earlier right, as well as evidence proving its entitlement to file the opposition.
In the present case the notice of opposition was not accompanied by any evidence of use of the earlier signs in the course of trade invoked, in particular the above mentioned non-registered trade marks and trade names in the above listed territories.
On 25/08/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 30/12/2016.
The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested sign shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Reference is made once again to Article 76(1) EUTMR, as set out previously and it follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence. Reference is also made to the relevant time-frames as set out under Rule 19(1) EUTMIR and Rule 19(2) EUTMIR (set out above). However, in the present case the notice of opposition was not accompanied by any evidence concerning the reputation of the earlier mark, the European Union trade mark registration No 6 095 467 on which the opposition is based nor was any evidence filed subsequently.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must also be rejected as unfounded as regards this ground.
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
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María Clara IBÁNEZ FIORILLO |
Edith Elisabeth VAN DEN EEDE |
Francesca CANGERI SERRANO
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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.