OPPOSITION No B 2 669 581
Kwaï, Société par actions simplifiée, 32, Rue Du Temple, 75004 Paris, France (opponent), represented by Fidal, 4-6 avenue d’Alsace, 92982 Paris La Défense, France (professional representative)
a g a i n s t
Reach Best Technologies Co. Ltd., Nº 2022, 2nd Floor, Building 1, Cuiwei Road, Haidian District, Bejing, People’s Republic of China (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).
On 28/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 669 581 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 14 956 023, ‘kwai’, namely the goods and services in Classes 9, 35, 38, 41, 42 and 45. The opposition is based on signs used in the course of trade, namely the French company name and French trade name ‘KWAÏ’. The opponent invoked Article 8(4) 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.
- 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, within its observations, dated 15/12/2016, the opponent submitted the following information:
A company name and trade name could potentially constitute prior rights enforceable against other trademarks.
Pursuant to article L. 711-4 of the French Intellectual Property Code:
´Signs may not be adopted as marks where they infringe earlier rights, particularly: (…)
b)The company or business name, where there is a risk of confusion in the public mind;
c) a trade name or a sign known throughout the authority’s jurisdiction, where there exists a risk of confusion in the public’s mind (…)´.
Rights in a trade name and company name are acquired from its first use in trade and provided that the sign is known throughout the French national territory.
Regarding the scope of protection, the owner of the trade name or company name may prohibit the use of a subsequent trade mark where there is a risk of confusion in the mind of the public.
The opponent did not submit any further information regarding the applicable national law.
However, the information submitted by the opponent is not sufficient for the acquisition, existence and/or the scope of legal protection of the earlier rights to be proven, as it does not provide sufficient indication of the applicable law. Even though, pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement, it is still necessary for the opponent to prove the scope of protection (under the applicable law) of the trade name on which the opposition is based.
As far as the company name on which the opposition is based is concerned, there is no provision of the legal text governing the acquisition of this earlier right. The opponent must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision. In its observations, however, the opponent only states that the right on a company name is ‘acquired from its first use in trade and provided that the sign is known throughout the French national territory’. The opponent submitted neither per se the provisions of the legal text stating the conditions governing the acquisition of this right nor a translation thereof.
Furthermore, it did not submit the original French text of the law governing the scope of protection of both earlier rights. As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language, which is French in the case at issue. 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. In the case at issue, the opponent submitted an excerpt in English from Article L. 711-4 of the French Intellectual Property Code, but not the original text in French. However, pursuant to Rule 19(2)(d) EUTMIR, a mere translation of the applicable law does not itself constitute proof and cannot substitute for the original; therefore, the translation alone is not considered sufficient to prove the law invoked.
It follows from the above that the opponent did not succeed in proving the rights under the applicable law.
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
|
André Gerd Günther BOSSE |
Irina SOTIROVA |
Judit NÉMETH |
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.