OPPOSITION DIVISION
OPPOSITION No B 1 844 896
The Robert Marley Foundation Ltd., 56 Hope Road, Kingston 6, Jamaica
(opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford’s Inn,
London EC4A 1BL, United Kingdom (professional representative)
a g a i n s t
Dexter Ricketts, 6 Chalgrove Road, London N17 0NP, United Kingdom (applicant),
represented by Forresters, Sherborne House, 119-121 Cannon Street, London
EC4N 5AT, United Kingdom (professional representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 844 896 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 services of European Union trade
mark application No 9 695 008, namely against arranging and conducting music
concerts in Class 41. The opposition is based on non-registered trade mark ‘ONE
LOVE’ (word), well-known in the European Union and used in the course of trade of
more than mere local significance. The opponent invoked Article 8(4) EUTMR.
ONE LOVE ONE LOVE FESTIVAL
Earlier trade mark Contested sign
Decision on Opposition No B 1 844 896 page: 2 of 4
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.
The ground for the present opposition was Article 8(4) EUTMR. The sole earlier right
invoked in this opposition is an earlier non-registered trade mark ‘ONE LOVE’ (word),
well-known in the European Union and used in the course of trade of more than mere
local significance.
However, non-registered trade marks (whether well-known or not) are not protected
at European Union level. Contrary to the Community Design Regulation which
acknowledges the category of ‘unregistered Community design’, the EUTMR does
not establish the category of unregistered European Union trade marks. According to
Article 6 EUTMR, an EU trade mark shall be obtained by registration.
As such, the opponent did not, and could not, substantiate such a non-existing right.
A ‘European Union non-registered trade mark’ is not an eligible basis for opposition.
However, even if the Opposition Division would interpret the ‘non-registered trade
mark, well-known in the European Union’ claimed by the opponent as referring to
non-registered trade mark in individual Member States of the European Union,
‘unregistered marks’ are only defined by the national trade mark legislations of those
Member States which recognize them. There are several Member States that do not
recognize them at all: Belgium, Bulgaria, Cyprus, Estonia, France, Latvia, Lithuania,
Poland, Romania and Spain.
Nonetheless, in order to comply with the condition set out by Article 8(4) EUTMR that
pursuant to the law of the Member State governing that sign, the sign must confer on
its proprietor the right to prohibit the use of a subsequent trade mark, it is also
required that in the actual case under consideration the conditions for obtaining such
injunctive relief, if the mark that is the subject of the opposed EUTM application were
used in the territory in question, are present. This can only be answered according to
each respective national law and in light of the evidence presented.
According to Article 95(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 (in the version in force at the time when the
adversarial part of the proceedings started), 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.
Decision on Opposition No B 1 844 896 page: 3 of 4
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.
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.
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 failed to provide sufficiently clear and precise
submissions that would have enabled the Opposition Division to rule on the
opposition as regards Article 8(4). The opponent did not indicate any information on
the legal protection granted to the type of trade sign invoked by the opponent,
namely non-registered trade mark, in any of the Member States, except for the
United Kingdom. However, even for the United Kingdom, in its observations of
23/12/2013, the opponent only briefly referred to the tort of passing off but did not
submit any relevant provisions, jurisprudence or other information on the applicable
law that would allow the Opposition Division to understand and apply the content of
that law, or the conditions for obtaining protection and the scope of this protection,
and, which is of vital importance, that would allow the applicant to exercise the right
of defence.
For these reasons, the opposition is not well founded under Article 8(4) EUTMR.
Decision on Opposition No B 1 844 896 page: 4 of 4
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
Begoña URIARTE
VALIENTE
Anna BAKALARZ Katarzyna ZANIECKA
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.