OPPOSITION No B 2 438 524

Lucozade Ribena Suntory Limited, 2 Longwalk Road, Stockley Park, Uxbridge  UB11 1BA, United Kingdom (opponent), represented by Novagraaf UK, 2nd Floor, Renown House, 33-34 Bury Street, London  EC3A 5AR, United Kingdom (professional representative)

a g a i n s t

Ayuntamiento de Bejis, C/. Virgen de Loreto, nº 2, 12430 Bejis (Castellón), Spain (applicant), represented by J. López Patentes y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 438 524 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 13 039 862 for the figurative mark ‘’. The opposition is based on United Kingdom trade mark registrations No 3 042 607 ‘’ and No 3 042 601 ‘’, International trade mark registrations No 1 224 068 ‘’ and No 1 224 069 ‘’ designating the European Union and according to the notice of opposition, the earlier non-registered figurative trade mark or other sign used in the course of trade‘’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR in respect of the earlier registered trade marks and 8(4) EUTMR in respect of the remaining rights.

PRELIMINARY REMARK/PROOF OF USE

On 03/03/2017, the applicant in its arguments referred to the absence of the opponent’s proof of use of the French earlier trade mark registrations No 4 017 711 and No 3 812 250. However, as mentioned above, the opposition is not based on these trade marks but on United Kingdom trade mark registrations No 3 042 607 and No 3 042 601, and International trade mark registrations (both designating the EU) No 1 224 068 and No 1 224 069. Therefore, this request for proof of use is unfounded since it relates to marks which were not used as a basis for the opposition.

The applicant also requested proof of use for the earlier rights upon which the opposition was based, namely United Kingdom trade mark registrations No 3 042 607 and No 3 042 601, and International trade mark registrations (both designating the EU) No 1 224 068 and No 1 224 069.

According to Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested sign, 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to a request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark. In the present case, the contested trade mark was published on 13/08/2014. The abovementioned United Kingdom registrations were registered on 23/05/2014 and the International registrations on 08/08/2014.

Therefore, even in its allegations the applicant made a request for proof of use, this request cannot be taken into account, because at the date of publication of the contested sign, these marks had not been registered for at least five years. Therefore, the request for proof of use must be considered inadmissible.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier International trade mark registration No 1 224 068 designating the European Union, which is registered for a broader scope of goods and services than the other earlier marks.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 5:        Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; fungicides, herbicides.

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; energy drinks; isotonic beverages; sports drinks; low calorie beverages; smoothies; vegetable juices [beverages]; pastilles and powders for effervescing beverages.

Class 33:        Alcoholic beverages (except beers).

Class 35:        Advertising; business management; business administration; office functions; retail services connected with the sale of dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, energy drinks, isotonic beverages, sports drinks, low calorie beverages, smoothies, vegetable juices [beverages], pastilles and powders for effervescing beverages, alcoholic beverages (except beers).

Class 43:        Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 32:        Table waters.  

Class 35:         Advertising and business affairs relating to trading in table waters; advertising, marketing and promotional services; import and export services; business management; business administration; online advertisements; business administration services for processing sales made on the internet.  

Class 39:        Distribution [transport] of retail goods; packaging and storage of goods; transport; crating services; storage of goods; freight [shipping of goods].  

Some of the contested goods and services are identical to the goods and services on which the opposition is based (e.g. the contested table waters are included in the list of goods of the earlier mark, mineral and aerated waters and other non-alcoholic beverages, in Class 32; as well as the contested advertising relating to trading in table waters is including in the opponent’s advertising services, in Class 35). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods assumed to be identical are directed at the public at large, whose degree of attention is considered to vary from average to higher than average, depending on the frequency of purchase and on their price. The services assumed to be identical are directed at the public at large, while some of the services, for example business administration are directed at professionals. Depending on their price, the frequency of purchase and customer needs, the degree of attention of the relevant public will vary from average to high.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of a shape of a stylised drop in three shades of grey.

The contested sign is a figurative mark consisting of a shape of a stylised drop in different tones of blue and the verbal elements: ‘Agua de’, in lower case characters; ‘BEJIS’, in larger upper case letters underneath; and “AGUA MINERAL NATURAL”, below, in much smaller uppercase letters. All of them are placed against a blue and white square background that simulates a depiction of the sky and some waves.

The words ‘AGUA’ and ‘AGUA MINERAL NATURAL’ are Spanish terms meaning water and mineral water, respectively. Taking into account that part of the relevant goods and services are related to drinks, including water or its sale or advertising,  these elements are not distinctive or weak, for example for the Spanish speaking-part of the relevant public and in relation to these goods and services. Moreover, these words may be understood by Italian speakers, due to their similarity to their language of origin ‘ACQUA MINERALE NATURALE’. In addition the words ‘MINERAL NATURAL’ will be understood by English speakers. For those who understand these words, they are weak too. For the rest of the public that these words have no meaning, they are distinctive.

Although, the word ‘BEJIS’ is a place name (a village located in Castellon, Spain), this circumstance is only known by a reduced part of the Spanish-speaking part of the relevant public. Consequently, the Opposition Division will not take into consideration this argument of the applicant as for the vast majority of the relevant public, this word has no meaning in relation to the relevant goods and services. Therefore, this word is considered distinctive.

The figurative elements of both signs, for the consumers that perceive them as stylised drops, and the background of the contested sign are considered somewhat allusive at least for a part of the relevant goods and services related to beverages, including water, because they convey the idea of water drops or waves. Despite being allusive, the drops are nevertheless distinctive overall. For the rest of the goods and services (for example advertising services), and also for the consumers that perceive this element as another kind of figurative element, for example a flame, these elements are distinctive too. Regarding the contested sign, it has to be recalled that, when signs consist of both verbal and figurative components, like the contested sign, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

The element ‘BEJIS’ occupies the central position of the contested sign. This taken together with the stylisation of the letters (including size and bold font) makes this word visually striking and more outstanding than the other elements ‘Agua de’ y ‘AGUA MINERAL NATURAL’. The earlier mark has no elements that can be considered clearly more dominant than other elements.

Visually, the signs partly coincide in their figurative elements, since both of the signs depict a stylised drop made up of three sections. However, the drops are composed differently (on the right with the two curved crescent type shapes to the left in the earlier mark and on the top with the two curved crescent type shapes underneath in the contested sign), and also they differ in their colours (as referred above). Furthermore, the signs also differ in the verbal elements of the contested sign, ‘Agua de BEJIS’, ‘AGUA MINERAL NATURAL’, with the word ‘BEJIS’, being the most distinctive and dominant element of the sign.

Therefore, the signs are visually similar to low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The figurative element of the earlier mark represents a stylised drop. The mark applied for includes a stylised drop with some similarities. The marks are, therefore, considered to be similar to a low degree from a conceptual point of view.  

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation as a result of its long standing and intensive use in the European Union, as well as in the United Kingdom in connection with all the goods and services for which it is registered, namely goods and services in Classes 5, 29, 30, 32, 33, 35 and 43.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Annex 1: copies of extracts from the Suntory Annual Reports dated 2013 and 2014. These reports show the trade mark ‘’ together with another marks in relation to soft drinks market share in the UK.
• Annex 2: a printout from www.adbrands.net which shows that the company ‘Lucozade Ribena Suntory’ is one of the UK’s top soft drinks manufacturers by values (2014). This is the sign that appears in these documents ‘’ together with the wording ‘Lucozade Ribena Suntory’ and ‘Ribena (Lucozade Ribena Suntory)’.
• Annex 3: a printout from the statistics website www.statista.com that shows that Lucozade and Ribena were in 2014 two of the UK’s largest soft drinks brands by market share (making up approximately 5.5% together). The image of the drop does not appear in this document only the word ‘Ribena’.
• Annex 4: a printout dated 25/09/2016, from the Opponent’s website updated in 2017. This document shows the use of the signs ‘’ and ‘’ in relation to reduced sugar and low-calorie drinks.
• Annex 5: a copy of a Road Map Case Studies on Lucozade Ribena Suntory from the British Soft Drink Association showing use of the earlier mark ‘’ This document refers to the investment done by Lucozade Ribena Suntory in 2010 in a £60m bottle blowing plant, which reduced the transportation of raw materials into the factory but led to an increase in electrical consumption and an increase in the carbon footprint. There is no reference to the relevant goods and services.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness or reputation through its use.

All the evidence provided relates to the signs: ‘’, ‘’, ‘’, and ‘’ or the words ‘Lucozade Ribena Suntory’ and ‘Ribena (Lucozade Ribena Suntory)’, which play no part in proving enhanced distinctiveness or reputation of the earlier mark ‘’. Any reputation that the mark ‘Lucozade Ribena Suntory’ or ‘sunTORY’ might have acquired cannot be automatically transferred to the figurative mark ‘ ’ (either in black and white or in colours). Furthermore, it is noted from the abovementioned documents that the evidence does not cover the figurative element on its own. There is no independent evidence that shows that the opponent’s figurative mark ‘’ on its own has acquired reputation or higher distinctiveness in the nature of, for example, results of opinion polls or market surveys including the image as such or market share details regarding such image on its own. In addition, in the independent evidence provided by the opponent, for example extracts from www.adbrands.net or www.statista.com, the figurative element ‘’ is always accompanied by other elements, such as ‘Lucozade Ribena Suntory’. Even in the material emanating from the opponent’s website or its annual reports, it is always accompanied by the abovementioned words. Even if it is true that the use of a trade mark can be proved where a mark is combined with another trade mark, it does not automatically follow that enhanced distinctiveness can be proven for a mark used in connection with a second trade mark as it is not clear that the public will recognise the mark on its own.

This does not mean that such documents do not have any probative value at all, the opponent has filed evidence which goes in some way to prove at least one the marks mentioned above, however the evidence always displays combined marks. The earlier figurative mark consisting of a fairly simply depiction of a drop is never displayed on its own but always in conjunction with distinctive words. Therefore, the opponent has not succeeded in proving enhanced distinctiveness or reputation for the earlier mark’. The final outcome depends on the overall assessment of the evidence in the particular case. In the present case, for the reasons already explained and given the insufficiency of the independent evidence mentioned above, it is considered that the evidence provided does not demonstrate that the earlier trade mark acquired an enhanced distinctiveness, let alone reputation through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite some suggestion of a connection with water or drinks.

5. Global assessment, other arguments and conclusion

As concluded above, the goods and services have been assumed to be identical. The degree of attention of the relevant public will vary from average to high. The signs have only been found visually and conceptually similar to a low degree.

The similarities between the signs only lie in the fact that they are both linked by the figurative elements, consisting of the image of a drop, which are composed differently and also depicted in different colours. The signs cannot be compared aurally. On the other hand, the visual differences between the signs, should be taken into account, especially regarding the verbal elements of the contested sign, the distinctive word ‘BEJIS’ and the words ‘Agua de’ and ‘AGUA MINERAL NATURAL’, which will not be overlooked by consumers, since they are clearly perceptible (even in the case of the Spanish- or Italian- speaking part of the public for which will be non-distinctive).

Therefore, all the above mentioned differences in section c) of the present decision between the marks are of such a nature that the signs can be distinguished effectively. Consequently, consumers will not think that the goods and services concerned originate from the same or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that the similarities between the signs are not sufficient to lead to a likelihood of confusion on the part of the public. In the absence of any enhanced distinctiveness, the opposition must be rejected even assuming the identity of all the goods and services.

The opponent has also based its opposition on the following earlier trade marks:

• International trade mark registration No 1 224 069 designating the European Union, for the figurative mark ‘’ for goods and services in Classes 5, 29, 30, 33 and 35.

• United Kingdom trade mark registration No 3 042 601 for the figurative mark ‘’ for goods and services in Classes 5, 29, 30, 33, 35 and 43.

• United Kingdom trade mark registration No 3 042 607 for the figurative mark ‘’ for goods and services in Classes 5, 29, 30, 33 and 35.

Since, these marks are identical or merely in different colours (yellow, blue and purple) to the one which has been compared and cover a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services. Furthermore, although the opponent also claims enhanced distinctiveness for these marks, the Opposition Division has already carried out an assessment of enhanced distinctiveness in the EU for the earlier international registration compared above in relation to the same goods and services. It should also be pointed out that the opponent filed the same evidence of reputation for these trade marks as that which has been examined above.

It is, therefore, necessary to examine the opposition on the basis of the ground of Article 8(5) EUTMR, as invoked by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in connection with all the earlier trade mark registrations mentioned above. However, for reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the earlier International trade mark registration No 1 224 068, for the figurative mark ‘’, for which the opponent claimed reputation in the European Union, in connection with goods and services in Classes 5, 29, 30, 33, 35 and 43.

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 trade mark 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.

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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has an enhanced distinctiveness or reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on Article 8(5) EUTMR. This conclusion is also applicable to the rest of the earlier marks for which the opponent invoked Article 8(5) EUTMR, as has been explained above in the section on Article 8(1)(b) EUTMR and in connection with the evidence to prove enhanced distinctiveness, which is the same for these marks. These marks are also the same as the one mentioned above or very similar.

The Opposition Division will conclude with the assessment of the opposition based on Article 8(4) EUTMR.

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

The opponent claims to be the holder of the earlier rights ‘’ and ‘’ used in the course of trade in the European Union in relation to the following goods: mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; energy drinks; isotonic beverages; sports drinks; low calorie beverages; smoothies; vegetable juices [beverages]; pastilles and powders for effervescing beverages; and the following services: advertising; business management; business administration; office functions; retail services connected with the sale of mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; energy drinks; isotonic beverages; sports drinks; low calorie beverages; smoothies; vegetable juices [beverages]; pastilles and powders for effervescing beverages, alcoholic beverages (except beers).

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. 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 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 sign 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 did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely ‘’ and ‘. 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. It is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR. It is also insufficient to submit an attachment of the above mentioned table of the Office’s guidelines as done 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

Orsola LAMBERTI

María Clara  IBÁÑEZ FIORILLO

Lucinda CARNEY

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.