OUR PRICE | Decision 2565458 – Palm Green Capital Limited v. Our Price Records Ltd

013000000 - 013999999, 013636998, 02, 2017, Date, Decision Type, Involved Parties, March-2017, O-company, O-trademark, OPPOSITION, OUR PRICE, Our Price Records Ltd, P-company, Palm Green Capital Limited, Trademark, Trademark number

OPPOSITION No B 2 565 458

HMV (Brands) Limited, 7 River Court, Brighouse Business Village, Brighouse Road, Middlesbrough TS2 1RT, United Kingdom (opponent), represented by Williams Powell, Staple Court, 11 Staple Inn Buildings, London WC1V 7QH, United Kingdom (professional representative)

a g a i n s t

Our Price Records Ltd, 152 City Road, London EC1V 2NX, United Kingdom (applicant), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative).

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 565 458 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 13 636 998 of the figurative mark http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=115828015&key=7e54726a0a840803398a1cf15e202559 in Classes 9, 35 and 38. The opposition is based on the UK non-registered trade marks ‘OUR PRICE’ and  used in the course of trade in relation to: Retail of musical recordings, audio-visual recordings and other electronic entertainment goods. 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 shall 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 13/01/2015. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for retail of musical recordings, audio-visual recordings and other electronic entertainment goods.

On 18/02/2016 the opponent filed the following evidence:

  • A witness statement of the opponent’s European Trade mark Attorney indicating that:

From the 1970s until 2002, OUR PRICE was a market-leading brand in connection with the retail of electronic entertainment products, with approximately 300 high-profile stores in cities and towns throughout the United Kingdom. The turnover of the OUR PRICE business from 1996 to 2002 was as follows:

Year

Turnover

1996

£ 266,160,000

1997

£ 228,758,000

1998

£ 219,027,000

To 30/01/1999

£ 148,680,000

2000

£ 192,288,000

To 27/01/2001

£ 187,562,000

To 13/10/2001

£ 34,196,000

To 29/06/2002

£ 40,087,000

During this period the OUR PRICE brand was extensively promoted to retail consumers in the United Kingdom as shown by the attached televised advertisements of Our Price Record Shops of the years 1983, 1985, 1988, 1989, 1990.  

  • Reports and financial statements of 1997, 1998, 1999, 2000, 2001, 2002.

  • Three deeds of assignments concerning subsequent assignments of ‘OUR PRICE’ trade marks.

  • Online article from BBC news of 1998 in which it is mentioned that Richard Branson’s Virgin group has regained control of the Virgin Our Price chain of record shops.

  • Online article from BBC news of 2013 stating that the likely demise of HMV (owner of Our Price), the last major music retailer on the High Street, is a sad reminder for those who began buying music in the 80s or 90s that life will never be the same.

  • Online article from the Guardian of 2001 mentioning that the Our Price record chain is set to disappear the next year – 30 years after it was founded.

  • Online article from Wikipedia extracted from internet on 23/07/2015 mentioning the history of Our Price including its demise in the beginning of the 20th century and closure in 2004 as a music retailer and its current use as a brand for an online comparison website.

  • Online article from the Daily Mail of 2013 mentioning ‘These pictures show a collection of 1970s shopping bags from some of the biggest record stores in Britain – many of which are sadly no longer in existence’. It also shows an image of a shopping bag with underneath the text: ‘Our Price was a prominent chain of record stores seen on all High Streets. It was founded in 1971 but went to the wall in 2004’.

  • Blog posted on www.urban75.org on 09/02/2012 titled ‘The death of Our Price records, Brixton Road, Brixton’. It further mentions: ‘It almost seems like a distant memory now, but it wasn’t that long ago that you’d find big name record shops on most High Streets around the land  – like this view of Our Price Records on Brixton Road in September 2000 […] By the end of the 1980’s, rival store HMV had overtaken Our Price for sales, and after some big-business buyout shenanigans involving WH Smith and Virgin, the brand name started to vanish, with stores being renamed as VShops’.

  • Tweet: ‘With HMV nearly gone, who remembers the Our Price and Virgin Megastore record shops in Brixton?’ on the Twitter account of Brixton Buzz posted on 15/01/2013.

  • Comments on Facebook account of Bygone Croydon regarding the question: ‘Who remembers Our Price? Where did you shop for music in Croydon?’ posted on 16/01/2014.

  • Search results for ‘our price’ on www.musicweek.com showing results dated from the years 2002 – 2005.

  • Interim report made by Farncombe International titled: ‘Use of trade mark OUR PRICE’ dated 26/05/2009 about the ownership of the Our Price trade marks. It concluded inter alia the following:

In 1984 Our Price was floated on the London Stock Exchange and in 1986 it was acquired by WH Smith. WH Smith later bought a majority interest in Richard Branson’s Virgin Music retail chain and then a few years later it sold Virgin, along with Our Price to a division of the Virgin group of companies. After this takeover, the Our Price name began to be dropped in favour of the Virgin name or Vshop.

In 2001 Virgin Groups sold the VShops and the remaining stores still under the Our Price brand to Brazin Limited, a major Australian music retailer.

In 2002 Brazin announced a plan to trade in the United Kingdom under two names, their current one Sanity and a re-launch of the Our Price name, but this never happened.

The remainder of the Sanity/Our Price chain was sold to a private investor (owner of Prism Leisure) in October 2003 but this business entered administration in December 2003. In January 2004, the administrators closed all stores within two weeks.

The remaining annexes concern the use by the applicant of the contested mark in order to prove its alleged misappropriation of the signs and are not relevant for assessing the use in the course of trade of the earlier signs.

Has the opponent succeeded in proving prior use in the course of trade of more than

mere local significance of the earlier non-registered trade marks?

As mentioned above, the opponent claims to have unregistered trade marks in the United Kingdom. It is therefore appropriate to examine, whether the evidence provided by the opponent is sufficient to show use in the course of trade of these rights of more than mere local significance in the United Kingdom until the filing dated of the contested sign, that is 13/01/2015.

It must be noted that for non-registered trade marks and business identifiers which do not require registration, use constitutes the only factual premise justifying the existence of the right, including the ascertainment of the beginning of its existence. In the case of unregistered signs, the use must be continuous and uninterrupted, since otherwise there is no certainty that the rights in the unregistered sign have not lapsed. In this context, Rule 19(2)(d) EUTMIR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence  and scope of protection of that right. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded (Rule 20(1) EUTMIR). This use requirement applies irrespective of the requirements met under national law in order to acquire exclusive rights.

However, in the present case there is no evidence that shows current use of the brand. The picture painted by the evidence filed is one of a company set up several decades ago in the United Kingdom which until 2002 was successful in the retail of electronic entertainment products. However, it also confirms its demise in the beginning of the 20th century and closure in 2004. The fact that the comments on social media sites show that some people still remember the brand may confirm its former prominent use, however, it does not show an actual presence on the relevant market in relation to the services claimed, which would justify basing an opposition on the ground of article 8(4) EUTMR. Rather to the contrary, these comments show that the public is aware of the fact that the mark is no longer in use in relation to a record shop.

Considering all the above, it must be concluded that the evidence submitted by the opponent is insufficient to prove that the earlier rights actually have a real presence on their relevant market (judgment of 29/03/2011, C-96/09 P, ‘BUD’, EU:C:2011:189, § 157), because it has not been proven that the earlier rights were used in the course of trade of more than local significance in connection with the services and business activities on which the opposition was based before the relevant date and in the relevant territory, the United Kingdom.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

For the sake of completeness, the Opposition Division would like to note that even if the opponent had met the requirement of  prior use in the course of trade of more than mere local significance, still the opposition would not be successful on the ground of Article 8(4) EUTMR since the opponent did not 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). The opponent is reminded that he/she has to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application (see 05/07/2011, C 263/09 P, Elio Fiorucci, EU:C:2011:452, § 50 and Rule 19(2)(d) EUTMIR).

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

Boyana NAYDENOVA

Adriana VAN ROODEN

Frédérique SULPICE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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