OPPOSITION No B 2 753 641

Auto Industrial, S.A., Avenida Navarro, nº 36, 3000-150 Coimbra, Portugal (opponent), represented by Inventa International, S.A., Alameda dos Oceanos, 41K-21, Parque das Nações, 1990-207 Lisboa, Portugal (professional representative)

a g a i n s t

Indusauto Hernandez S.L., Carretera Nacional 340, 46815 Llosa Ranes (Valencia), Spain (applicant), represented by José Miguel Muñoz Orgaz, Calle José María de Haro, 61 Planta 13-I, 46022 Valencia, Spain (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 753 641 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 15 048 713, namely against the goods and services in Classes 12, 37 and 40. The opposition is based on two earlier non-registered signs, a logotype ‘  ‘ and insignia of an establishment ‘ ’, used in the course of trade in Portugal. The opponent invoked Article 8(4) EUTMR.

1. logotype

insignia of an establishment
Earlier non-registered signs	Contested sign

Preliminary remark

In the present case, the notice of opposition was filed by the opponent on 17/08/2016, i.e. within the respective three-month opposition period ending on 17/08/2016. In the notice of opposition the opponent indicated that the opposition is based on Article 8(4) EUTMR and the above-mentioned non-registered signs used in the course of trade in Portugal.

In its submission and arguments filed on 01/02/2017, the opponent argued that the opposition is also based on the earlier Portuguese trade mark registration No 347 833 ‘AUTO INDUSTRIAL’ and a company name No 41 783 ‘AUTO INDUSTRIAL’. Furthermore, the opponent stated that the opposition is also based on Article 8(1)(b) EUTMR. In this regard, the Opposition Division notes that the scope of the opposition cannot be extended after the expiry of the opposition period. Therefore, it is considered that the opposition is based only on the earlier rights and grounds invoked within the opposition period.

For the reasons outlined above, the Opposition Division will then proceed to examine the opposition under Article 8(4) EUTMR only in relation to the invoked non-registered signs, used in the course of trade in Portugal.

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 trade mark was filed on 27/01/2016. 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 Portugal prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the following services:

Trade, maintenance and repair of motor vehicles, motorcycles, bicycles and other means of transportation; trading fuel, oils and lubricants; selling home appliances, radios and televisions, including those related to with the trade, maintenance and repair of motor vehicles and motorcycles; Trade of agriculture machines and equipments and those related with the trade, maintenance and repair of motor vehicles and motorcycles; Rental of motor vehicles, either for passengers or goods, with or without driver and other means of transportation; rental of agriculture machines and equipments; fabrication of motor vehicles, tows and semi-trailers and of components and accessories for motor vehicles and its engines; fabrication of motorcycles and bicycles and of other transport material; fabrication of machine tools, other machines and equipments, including those related with the trade, maintenance and repair of motor vehicles, motorcycles, bicycles and with agriculture machines and equipments.

On 01/02/2017 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Doc 1: A certificate of Incorporation of the company AUTO INDUSTRIAL S.A.
• Doc 2: An extract from the opponent’s website www.autoindustrial.pt showing the sign  and a picture of a Jeep Cherokee car.
• Doc 3: A copy of a database extract from the Portuguese Trademark and Patent Office for the National Establishment Name No. 41783 – “AUTO INDUSTRIAL”, filed on 09/01/1997 and registered on 22/10/1998.
• Doc 4: A copy from Portuguese database Portuguese showing that logotype  No. 2797 – , filed on 27/06/2000 was registered on 04/06/2001.
• Doc 5: A copy of the database extract from the Portuguese Trademark and Patent Office for the National Establishment Insignia No. 12661 for the figurative mark , filed on 09/10/1997 and registered on 12/10/1998.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 43).

The documents filed, namely the extracts from the Portuguese Trademark and Patent Office, one extract from the opponent’s website and a certificate of incorporation do not provide the Opposition Division with any information concerning the commercial volume, the duration, and the frequency of use of the signs. There is for example no information on sales and customers. In relation to Doc 2, the opponent did not provide information about the number of visitors to its website.

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

Fabian GARCIA QUINTO

Janja FELC

Francesca CANGERI SERRANO

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.