OPPOSITION DIVISION
OPPOSITION No B 2 633 025
BGB Interherb Kft., Budapest, Százados út 18, 1087 Hungary (opponent),
represented by ABK – Dr. Krajnyák & Partner Law and Patent Office, Budapest,
Logodi u. 5-7, 1012 Hungary (professional representative)
a g a i n s t
Emanuel Popescu, Sat Tunari, str. Campului nr. 88, jud. Ilfov, 077180 Tunari,
Romania (applicant), represented by Cristina Adriana Sîrbu, 127 turda, bl. 2, sc. C,
ap. 91, sector 1, 011325 Bucharest, Romania (professional representative).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 633 025 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 14 599 815 , namely
against all the goods and services in Classes 3, 5 and 35. After a partial refusal of the
contested application in parallel opposition proceedings on 10/11/2016 the opposition
is directed against all the remaining goods and services in Classes 3 and 35. The
opposition is based on Hungarian trade mark registration No 195 777 ‘HERBAHÁZ’
as well as the Romanian and Hungarian trade names ‘HERBAHÁZ’ and
Decision on Opposition No B 2 633 025 page: 2 of 5
. The opponent invoked Article 8(1)(b) and Article 8(4)
EUTMR.
ADMISSIBILITY
a)
According to Rule 15(2)(f) EUTMIR (in the version in force at the time of filing of the
opposition), the notice of opposition must indicate the goods and services on which
the opposition is based.
In the present case, the goods on which the opposition is based in relation to earlier
Hungarian trade mark No 195 777 have been indicated in a language other than the
language of the opposition proceedings. According to Article 119(5) and (6) EUTMR
(in the version in force at the time of filing of the opposition, now Article 146(5) and
(7) EUTMR), this information has to be submitted in the language of the opposition
proceedings, namely English.
According to Rule 17(4) EUTMIR (in the version in force at the time of filing of the
opposition), if the notice of opposition does not comply with the provisions of Rule 15
EUTMIR (in the version in force at the time of filing of the opposition) (other than
referred to in paragraphs 1, 2 and 3 of Rule 17 EUTMIR (in the version in force at the
time of filing of the opposition), the Office will inform the opponent accordingly and
invite it to remedy the deficiencies noted within a period of two months. If the
deficiencies are not remedied before this time limit expires, the Office will reject the
opposition as inadmissible.
The Office informed the opponent of the deficiency in relation to the earlier Hungarian
trade mark registration No 195 777 in its notification dated 08/01/2016. The opponent
was set a time limit of two months, until 13/03/2016, to remedy the deficiency, namely
to provide an indication of the goods on which the opposition is based in the
language of the opposition proceedings.
The opponent did not reply within the prescribed time limit.
The opposition must therefore be rejected as inadmissible, as far as it is based on
this earlier mark.
b)
According to Rule 15(2)(c) EUTMIR (in the version in force at the time of filing of the
opposition), the notice of opposition must contain the grounds on which the
opposition is based, namely a statement to the effect that the respective
requirements under Article 8(1), (3), (4), (4a) and (5) EUTMR are fulfilled.
In particular, the grounds are to be considered properly indicated if one of the
relevant boxes in the notice of opposition form is checked or if they are indicated in
any of its annexes or supporting documents.
Decision on Opposition No B 2 633 025 page: 3 of 5
According to Rule 17(2) EUTMIR (in the version in force at the time of filing of the
opposition), if the notice of opposition does not contain grounds for opposition in
accordance with Rule 15(2)(c) EUTMIR (in the version in force at the time of filing of
the opposition), and if the deficiency has not been remedied before the expiry of the
opposition period, the Office will reject the opposition as inadmissible.
On 31/12/2015, the opponent filed notice of opposition against the contested
application. However, the opponent failed to indicate that its opposition was also
based on Article 8(3) EUTMR.
On 10/12/2016, as part of its submission to substantiate the opposition, the opponent
invoked Article 8(3) EUTMR for the first time and filed a document signed by the
parties (or their representatives) in Hungarian. However, it was too late for invoking
an additional ground of opposition, since the grounds had to be filed during the
opposition period, which already ended on 05/01/2016.
The opposition must therefore be rejected as inadmissible, as far as it is based on
Article 8(3) EUTMR.
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.
Decision on Opposition No B 2 633 025 page: 4 of 5
a) 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 precluding an earlier right that 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 for 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 trade mark was filed on 25/09/2015. Therefore,
the opponent was required to prove that the two trade names on which the
opposition is based were used in the course of trade of more than local significance
in Romania and Hungary prior to that date. The evidence must also show that the
opponent’s trade names have been used in the course of trade for goods and
services, business activities in connection with Classes 3, 5 and 35.
On 10/12/2016 the opponent filed the following evidence:
Screenshots showing samples of the applicant’s packaging: these samples are
clearly irrelevant for showing use of the opponent’s signs.
Screenshots showing samples of the opponent’s products/packaging: the
screenshots were printed on 09/12/2016. Therefore, they cannot show use of
the two trade names prior to 25/09/2015 (the filing date of the contested sign).
Three pages with contact information show the copyright sign and the year
2015. However, this indication is not conclusive proof that the entire content of
the screenshots were accessible before 25/09/2015.
In any case, even if the samples of the opponent’s packaging were taken into
account to prove that certain goods were offered by the opponent, the opponent
failed to provide any evidence that it used the two trade names in a sufficiently
significant manner in the course of trade. No evidence, such as invoices and sales
figures, were filed to show the length, intensity and geographical spread of use.
Decision on Opposition No B 2 633 025 page: 5 of 5
b) Conclusion
Considering all the above, the Opposition Division finds the opposition is not well
founded on the basis of the opponent’s earlier signs.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Konstantinos MITROU Beatrix STELTER Julia SCHRADER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.