OPPOSITION No B 2 719 915

Shenzhen Ai Fei Yi Technology Co. Ltd. , B803 Huayi Tech. Plaza, 7 St. Ln. 8 Wuhe Avenue, Bantian, Long Gang District Yong Xiang Rd., Shenzen, People’s Republic of China (opponent), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 – 5ª planta, 28050 Madrid, Spain (professional representative)

a g a i n s t

Jawad Hussain Abdul Hamid, 41 Osborne Road south, Southampton, Hampshire so172fd, United Kingdom (applicant).

On 20/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 719 915 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods in Class 9 of European Union trade mark application No 15 206 279 for the word mark ‘iVoler’. The opposition is based on the well-known mark ‘ivoler’ and the non-registered trade mark ‘ivoler’. The opponent claimed that the relevant territories for the well-known mark are all the Member States of the European Union. As regards the non-registered trade mark, the opponent claimed that it has been used in the course of trade in all the Member States of the European Union. The opponent invoked Article 8(1)(a) and (b) and Article 8(4) EUTMR.

WELL-KNOWN TRADE MARK – ARTICLE 8(2)(c) EUTMR IN CONNECTION WITH

ARTICLE 8(1)(b) EUTMR

Based on Article 8(1)(b) in connection with Article 8(2)(c) EUTMR, the opponent invoked earlier well-known trade mark ‘ivoler’ for the goods on which the opposition is based, namely the following:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Substantiation

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 is 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 mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.

In the present case the evidence filed by the opponent on 03/01/2017 comprises the following:

• Annex 1:          17 pages of printouts taken from the website of a largely known on-line retailer in which some ‘ivoler’ goods are displayed for purchase. The goods referred to include protective films, magnetic supports for car telephone, external batteries, chargers.

• Annex 2:          9 pages containing printouts from the abovementioned webpage in which are displayed the sale volumes for several ‘ivoler’ items. The period mentioned is comprised between 22/12/2014 and 22/12/2016.

• Annex 3:          United States of America registration certificate for the mark ‘ivoler’.

• Annex 4:          5 undated pictures of items, packaging and labels displaying the word ‘ivoler’.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark.

Despite showing some use of the trade mark thanks to the information contained in Annexes 1 and Annex 2, the Opposition Division notes that the evidence submitted by the opponent does not provide any indication of the degree of recognition of the trade mark by the relevant public.

Annex 3 is clearly irrelevant for the sake of the present examination while Annex 4 does not provide any additional information on the well-known character of the mark, nor on the intensity, extent in time and territorial scope of the use and recognition of it.

Furthermore, the evidence does not give any indication regarding the market share of the trade marks or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks are well-known within the meaning of Article 8(2)(c) EUTMR in the relevant territories.

 

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier right.

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

The opposition is also based on the non-registered trade mark ‘ivoler’ which, according to the opponent, has been used in the course of trade in Estonia, The Netherlands, Czech Republic, Denmark, The United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland for the following goods:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

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.

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 mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark ‘ivoler’. 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.

Therefore, the opposition is not well founded under Article 8(4) EUTMR and must be rejected insofar as it is based on this ground.

For the sake of completeness, the Opposition Division notes that in its observations filed on 03/01/2017 the opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Also, on the same date the opponent claimed in its observations that its opposition is, inter alia, based on Article 8(5) EUTMR. However, this claim is considered to be inadmissible. This is due to the fact that the identification of the grounds is one of the absolute admissibility requirements which are indications and elements that must be present in the notice of opposition or submitted by the opponent on its own initiative within the opposition period, as laid down in Rule 15(1) and Rule 15(2)(a) to (c) EUTMIR, and Article 119(5) and (6) EUTMR. In view of the foregoing, also this last claim must be dismissed.  

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Orsola LAMBERTI

Andrea VALISA

Janja FELC

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.