PM | Decision 2342288 – Philip Morris Brands Sàrl v. PM-International AG

OPPOSITION No B 2 342 288

Philip Morris Brands Sàrl, Quai Jeanrenaud 3, 2000 Neuchâtel, Switzerland (opponent), represented by Hoyng Rokh Monegier Spain LLP, Calle Ruiz de Alarcón, 7-2º Dcha, 28014 Madrid, Spain (professional representative)

a g a i n s t

Pm-International AG, Wäistrooss 15, 5445 Schengen, Luxembourg (applicant), represented by RAU Schneck & Hübner Patentanwälte Rechtsanwälte Partgmbb, Königstraße 2, 90402 Nürnberg, Germany (professional representative)

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 342 288 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 of European Union trade mark application No 12 313 557http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=105600513&key=62df760a0a8408037a774652cc5fb1ed. The opposition is based on the following earlier marks:

  • International trade mark registration No 861 924 designating the European Union, PM (word mark)
  • International trade mark registration No 1 035 386 designating the European Union, Magnify
  • International trade mark registration No 1 011 037 designating the European Union, Magnify
  • European Union trade mark registration No 9 488 784 Image representing the Mark
  • Non-registered trade mark claimed in relation to all the territories of the European Union .

The opponent invoked Article 8(5) EUTMR in relation to all the earlier registered marks, and Article 8(4) EUTMR in relation to the non-registered mark.

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 registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to the Office´s Guidelines for Examination in the Office, Part C, Opposition:

As regards international registrations, the following databases are accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994):

  • ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection)

  • TMview (as far as it contains all the relevant data, see above)

In the present case the evidence filed by the opponent in relation to the earlier International trade mark registrations consisted of extracts from the ‘eSearch’ database, as can be seen from the source of the website at the bottom of the page. According to the above, the evidence submitted is not sufficient to substantiate the opponent’s earlier International trade marks, because the database is not of an official nature.

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 these earlier marks.

The opposition will now proceed with the examination of Article 8(5) EUTMR in relation to the earlier European Union trade mark registration No 9 488 784 Image representing the Mark.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

  • The signs must be either identical or similar.

  • The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

  • Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The opposition will now proceed to assessment of the second requirement, namely, reputation of the earlier mark.

  1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 14/11/2013. However, the contested trade mark has a priority date of 20/09/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 34: Tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 04/09/2015, the opponent submitted the following evidence:

  • Annex 1. A printout from www.forbes.com containing a press article entitled ‘A closer look at Philip Morris´ Asia Opportunity’, dated 03/05/2013. The article is in English and contains information about the presence of the opponent company and brand in Asia. It shows a representation of a coat of arms depicted in red, white and brown, where the letters ‘PM’ are shown and the words ‘PHILIP MORRIS INTERNATIONAL’ are positioned below, contained within a band.

  • Annex 2 consists of a printout of a company overview of Philip Morris, carried out by www.threfis.com. Both the printing date of the document (24/06/2015), namely the time when the information was available online, and the date of the last update of the information contained in it (23/06/2015) fall out of the relevant period of time.

  • Annex 3 contains Philip Morris´s annual reports for all years between 2009 and 2013, inclusive. According to the opponent, they are available to the public, and to shareholders. These reports refer to the presence of the opposing company in different markets, such as the European Union, and to the different products marketed by the opponent (for instance, Marlboro cigarettes). The reports include representations of a complex mark, containing the letters “PM” in the middle, as follows:

 

The document contains pictures of packaging of some of the cigarettes sold by the opponent, such Marlboro. These seem to contain the representation of the  sign referred to in the previous paragraph. However, it is not possible to see the parts of the sign in detail, due to their small size.

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The report refers to the presence of the opposing company and the different cigarette brands it produces in the European market, including some highlights about specific countries, such as Germany. The figures of the company income by region show that Europe constitutes the most important market for the company in this regard, throughout the years covered by the report, and Marlboro and L&M are the most important brands of the company.

  • Annex 4 to 6 contain printouts showing the use of ‘PM’ as an acronym for ‘Philip Morris’.

  • Annex 7 contains printouts from the opponent´s homepage www.pmi.com where a sign consisting of a coat of arms containing, inter alia, letters ‘PM’, appears in the upper left side of the page. The document refers to the presence of the opposing company and products in different parts of the relevant territory. It is made clear in them that one of the most popular cigarette brands of the opponent in these markets is Marlboro. The printing date of these documents is 25/06/2015. Therefore, they can only serve to demonstrate that the information they contain was available online at the time of printing them (i.e. out of the relevant period of time), but not before or after then.

  • Annex 8. Printout from Wikipedia. The printing date of the document is 24/06/2015, being the last editing date 30/04/2015.  Therefore, they can only serve to demonstrate that the information they contain was available online at the time of printing them (i.e. out of the relevant period of time), but not before or after then.

  • Annex 9. Printout from www.brandsoftheworld.com containing an article regarding the opposing company. The article has, as the last editing date, 22/08/2012. It contains a representation of a coat of arms containing, inter alia, the letters ‘PM’, accompanied by the name of the opposing company.

  • Annex 10. Printout from www.financninoviny.cz (Czech website) containing an article published on 30/04/2015 where ‘Philip Morris’ is mentioned in the title and within the text. The document contains a picture of the entrance to a building. Next to the entrance door, in the wall, both the words ‘PHILIP MORRIS’ and a coat of arms with the same characteristics as the ones referred to in the previous annexes. However, the publication date falls out of the relevant period of time. This document can only serve to demonstrate that the information it contains was available after its publication, but not during the relevant period of time.

  • Annex 11. Printout from www.theguardian.com, containing an article published on 1/09/2011. The text is in English and refers to the opponent´s company and the presence of its products in the European market. One of the related topics at the end of the article is ‘tobacco industry’. This article is accompanied by the coat of arms referred to in Annex 10.

  • Annex 12. Printout from www.connexionfrance.com, containing an article published on 17/10/2011. The upper part of the page contains the title ‘The Connexion, France´s English-language newspaper’. The text refers to the prices of cigarettes and in particular to the price of what refers to as ‘the most popular brand, Marlboro’. The text explains the reasons for such increase and the impact on the French market. The text is accompanied by a picture showing the front part of a Marlboro pack, where a sign consisting of a coat of arms, with the abovementioned characteristics, is visible in the front part of the packaging.

  • Annex 13 contains a printout from www.news.bbc.co.uk, which according to the opponent is the online edition of the British broadcasting company BBC. The document consists of an article, published 20/04/2005 and refers to the Marlboro cigarettes, their price increase, and the consequences that this has had for the opposing company. The article is accompanied by a picture of Marlboro packs, where the same sign referred to in Annex 12 is visible.

  • Annex 14 contains a printout from www.temi.repubblica.it with a description of the Philip Morris International company, and indicating what they offer to the new employees they are looking for in Italy. The printing date of this document is 6/12/2015 and there is no additional date (e.g. publication date). Therefore, it can only demonstrate that the information it contains was available online at the time of printing (i.e. out of the relevant period of time), but not before or after then.

  • Annex 15 contains a printout from www.amcham.ee. It shows an entry from the American Chamber of Commerce in Estonia. According to the opponent, the entry is from 2012. Even if this entrance has 2012 as copyright date, the summary refers to ‘PAST’ events, and it is possible to choose between years 2010 to 2015, and therefore the printout shows information obtained, at least, in 2015. The document contains the depiction of a coat of arms with the same characteristics as that referred to in Annex 9 above, and a description of the Philip Morris Company, where it is indicated that it was established in Estonia in 1997. The document contains the following information ‘Members of the AMCham Estonia include both business and individuals from the United States, Estonia and neighbouring countries who are conducting business in or trade with Estonia’.

  • Annex 16 contains a printout from the Greek website www.greece.greekreporter.com, published on 28/02/2013. The article refers to the opposing company and its presence in Greece´s tobacco production. The document contains the depiction of a coat of arms with the same characteristics as described in previous annexes, accompanied by the name of the opposing company.

  • Annex 17 contains a printout from the Italian website www.newslavoro360.it. It contains different pictures showing a coat of arms as referred to in Annex 9. It also contains pictures of the Marlboro packs of cigarettes, and different news regarding the opposing company, containing the same pictures already referred to, that were published on different dates in 2014. The printing date of this document is 6/12/2015 and there is no additional date (e.g. publication date). Therefore, it can only demonstrate that the information it contains was available online at the time of printing them (i.e. out of the relevant period of time), but not before or after then.

  • Annex 18 contains a printout from the French website www.ma-cigarette.fr, dated 21/11/2013. The opponent is referred to as Philip Morris International and as ‘PMI’. The article contains a picture showing a coat of arms as referred to in Annex 9. At the end of the document, several data is shown about the article, such as the related tags (one of them being ‘cigarette’), and the number of times that it has been viewed/read (a total of 234 653 until 03/2015)

  • Annex 19 contains a printout from the website www.cigarettestime.com published on 28/06/2012. The opponent is referred to as Philip Morris International and as ‘PMI’. The article contains a picture showing a coat of arms as referred to in Annex 9, with a red background. It does not refer to the presence of the opponent in the relevant territory, and the figures referred to are expressed in US Dollars.

  • Annex 20 contains a printout from the British website www.clovercigarettes.co.uk, written in English. The printing date of this document is 6/12/2015 and there is no additional date (e.g. publication date). Therefore, it can only demonstrate that the information contained in it was available online at the time of printing it (i.e. out of the relevant period of time), but not before or after then.

  • Annex 21 contains a printout from the website www.leightonliterature.com, where a coat of arms, similar to the one described in Annex 9 (i.e. with the additional word ‘Slovakia’) is shown. The date of the article is 18/01/2015. Therefore, it can only demonstrate that the information contained in it was available online at the time of printing it (i.e. out of the relevant period of time), but not before or after then.

A significant part of the evidence submitted falls out of the relevant period of time and, in addition, it does not give useful information about the use of the mark in question in the market, during the relevant period of time.

The documents corresponding to the relevant period of time contain representations of coats of arms, consisting of two ramping animals (which could be seen as lions or horses) facing each other and separated by an oval shape containing the letters ‘PM’. These letters are sometimes written in the same typeface as the earlier EUTM, and in other documents in a different typeface (i.e. regular upper-case letters). The coats of arms contain a crown on top of the oval shape, and another one on the animal´s head, and a band underneath the oval. Within this band, other words such as ‘Philip Morris International’ are written. The coats of arms are depicted in different colours (e.g. red, blue, etc.).

The opponent has not submitted documents where the earlier mark as such is referred to or represented. Within the representations of coats of arms appearing in the documents, the letters ‘PM’ are not particularly outstanding or dominant. They are included in the coat of arms as one more element in it. Consumers cannot be expected to perceive the coats of arms referred to above, and to identify one of the elements in the coat of arms, which is not particularly outstanding within them, as an independent and reputed trade mark.

Therefore, even if the opponent has submitted evidence showing that the earlier EUTM appears included inside a more complex sign (i.e. coat of arms), the Opposition Division considers that the evidence submitted does not demonstrate the reputation of the earlier mark.

The Opposition Division concludes that the opponent failed to prove that its registered trade mark has a reputation in the relevant territory.

For the sake of completeness, the evidence submitted by the opponent for the purpose of Article 8(4) EUTMR (see the evidence listed and described in next section below) has also been taken into account for the purpose of Article 8(5) EUTMR. All of the submissions were made at the same time and they cannot be automatically excluded from the assessment of reputation.

However, the evidence submitted for the purpose of Article 8(4) EUTMR does not contribute to demonstrating the reputation of the earlier registered mark in the relevant territory. Even if the earlier mark appears in some of the documents, they are either dated out of the relevant period of time, and/or do not refer to the goods in relation to which reputation is claimed to exist. Therefore, even taking these documents into account, the Opposition Division concludes that the opponent failed to prove that its registered trade mark has a reputation in the relevant territory.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected under Article 8(5) EUTMR.

Consequently, the opposition is rejected as far as based on Article 8(5) EUTMR.

The opposition will now proceed on the basis of Article 8(4) EUTMR, in relation to the non-registered trade mark .

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

The opponent based the opposition on, inter alia, a non-registered trade mark alleged to exist in all Member States of the European Union in relation to tobacco products; smokers' articles; printed matter. However, later on the opponent focuses, for the purpose of procedural economy, on the territories of Poland and Germany, and evidence is submitted in relation to these territories only. Accordingly, the opposition under Article 8(4) EUTMR will now be examined in relation to the territories of Poland and Germany.

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 14/11/2013. However, the contested trade mark has a priority date of 20/09/2013. 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 the relevant territory prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for Tobacco products; smokers' articles; printed matter.

The opponent explains that, for economy of proceedings, focuses the analysis and evidence submitted in relation to Article 8(4) EUTMR on the territories of Germany and Poland.

Regarding the existence of the non-registered trade mark in Germany, on 04/09/2015 the opponent filed the following evidence:

  • Annex 22. Copy of the German Trademark Act, with an English translation.

  • Annex 23. Printout from www.pmi.com. The text is in English. The printing date of this document is 17/07/2015, and there is no additional date that could indicate that the information contained in it was made available during the relevant period of time(e.g. publication date). Therefore, this document can only demonstrate that the information it contains was available online at the time of printing (i.e. out of the relevant period of time), but not before or after then.

  • Annex 24. Printout from the website www.atlantic-times.com, published on April 2005. The text is in English. This document contains references to the opposing company Philip Morris and its products (e.g. cigarettes). There are also some references to places in Germany (e.g. Berlin). However, there is no representation of the non-registered mark.

  • Annex 25.Printout from the German version of the entry on the opponent at Wikipedia. This document contains a representation of the non-registered mark, being this the ‘version’ of it in 2008. The printing date is 17/07/2015. According to the opponent, the entry was created on 23/03/2008.

  • Annex 26. Printouts of news from the website www.presseportal.de, dated between 2007 and 2013 referring to Philip Morris. The text is in German. The non-registered mark appears in them, accompanied by the opponent´s name. In some of these documents depictions of the map of Germany are included, and references to the tobacco industry are made.

  • Annex 27. Printout from www.liquid-news.de containing an article written in German, published on 24/07/2014. The date of publication is out of the relevant period of time. It does not provide information about the use of the non-registered mark during the relevant period of time.

  • Annex 28. Printout from the website www.mtp.org showing an entry dated 1/04/2012, containing a text in German, and where the non-registered mark is shown, accompanied by the opponent´s name in big letters.

  • Annex 29. Printouts from the website www.wiwo.de. One of them shows an entry dated 27/05/2011, containing text in German, and where the
    non-registered mark is shown. Another printout shows an entry dated 16/07/2015, and therefore out of the relevant period of time. In addition, it does not provide information about the use of the non-registered mark during the relevant period of time.

  • Annex 30. Printout from www.wuermtal.net containing a text in German, and accompanied by a picture of the entrance to a building, where the non-registered mark and the opponent´s name are shown. The document contains the date 18/12/2013 (beginning of the text), and has the printing date of 17/07/2015, both out of the relevant period of time. In addition, the document  does not provide information about the use of the non-registered mark during the relevant period of time.

Part of the evidence submitted listed above is in German. In this regard, According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document. However, no such translation was received. According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. The opponent was informed of the following by letter of 17/04/2014, under the title “INFORMATION ABOUT EVIDENCE”.

In this case, the Opposition Division will take into account only the parts of the evidence that are understandable (e.g. parts of the text or references in English) or at least self-explanatory (e.g. images, representations of the marks, publication and printing dates, etc.)

The opponent has not submitted any documents which are not  website extracts (besides Annex 22), such as invoices, price lists, affidavits, etc. The documents consist mainly of printouts from different websites and, in this scenario, it would have been useful to submit some information about, for instance, the number of readers of those articles to understand the impact of these publications on the public.

A significant amount of the evidence is dated out of the relevant period of time, and does not even refer to the use of the non-registered sign during the relevant period of time. For the documents falling within the relevant period of time, one consists of an entry from Wikipedia. Wikipedia is a collective online encyclopaedia whose content can be amended at any time and, in certain cases, by any person, even anonymously; therefore, this information lacks reliability. The rest of the documents are not capable per se of giving a convincing picture of the use of the opponent´s sign at the moment of the priority date of the contested mark. Even if the documents falling out of the relevant period of time were taken into account, the information they contain does not change this finding.

The non-registered mark appears in the evidence submitted accompanying the text. The text refers to the opposing company, and sometimes to tobacco or cigarettes, or the tobacco industry. However, the evidence does not show use of the non-registered mark in relation to any particular goods or services.

According to the above, the Opposition Division considers that, while the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

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).

As explained above, the documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the non-registered mark in Germany.

Regarding the existence of the non-registered trade mark in Poland, on 04/09/2015 the opponent filed the following evidence:

  • Annex 31. Copy of the Polish Act on Industrial Property, accompanied by the English translation.

  • Annex 32.  Printout from www.pmi.com. The text refers to the presence of the opponent in Poland since 2005. The text is in English. The left side of the page contains, in the section ‘Careers’ references to several dates in 2015. However, the document does not contain a printing date or a publication date. Therefore, it is not possible to know when the information was in fact available online.

  • Annex 33. Printout from the website zlopiszkowice.ovh.org, published on 04/06/2014, and therefore out of the relevant period of time. The article contains the opposing sign, accompanied by the opponent´s company name. The text is in Polish.

  • Annex 34.  Printout from the website lkk.pl where the non-registered mark appears, accompanied by the words ‘PHILIP MORRIS POLSKA’. The document is in English. The printing date of this document is 02/07/2015, and therefore out of the relevant period of time. According to the opponent, the document was created in 2012. This corresponds with the copyright date at the bottom of the page. However, the document contains a section on the right side of the page, where references to dates in 2015 appear. It is therefore not possible to know which of the evidence was in fact available online during the relevant period of time.

  • Annex 35.  Printout from www.neo.krakow.pl. The document contains text in Polish. The printing date of these documents is 31/08/2015. However, the opponent argues that the document reports an event of 12/11/2013, which is also out of the relevant period of time. The document contains one picture that includes the non-registered mark, among other elements (e.g. a picture of people, maps, etc.)

This Annex also contains a printout from automatykab2.pl, with text in Polish, and which includes a picture of a building, together with the opponent´s company name and the representation of the non-registered sign. The document contains a reference to 2013 on what seems to be the date.

Lastly, this Annex contains a printout from the website trans-ziem.pl, with a ptinting date of 2/07/2015, and therefore out of the relevant period of time. The text is in Polish. The document contains a representation of the opponent´s sign, together with the words ‘PHILIP MORRIS POLSKA’.

The vast majority of the text in the documents submitted is in Polish. Following the same approach indicated in the examination of the evidence in relation to the territory of Germany, the Opposition Division will take into account only the parts of the evidence that are understandable (e.g. parts of the text or references in English) or at least self-explanatory (e.g. images, representations of the marks, publication and printing dates, etc.)

In this case, after examining the evidence listed above, the Opposition Division considers that the opponent has not submitted any evidence regarding use of the mark in relation to the goods in question. There are no references at all to the goods for which the non-registered mark was claimed to protect. Even if the text is in Polish, the use of the mark could have been clear from, for instance, pictures of packaging of the goods referred to bearing the mark, or if the text had contained at least some understandable references to said goods.

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the non-registered mark in Poland.

The opponent focused its arguments and the evidence submitted under Article 8(4) EUTMR on the territories of Poland and Germany, for the purpose of procedural economy. However, the evidence submitted under Article 8(5) EUTMR and listed in the previous section will also be taken into account under 8(4) EUTMR, for the sake of completeness.

The documents submitted under Article 8(5) refer to different countries of the relevant territory. However, as described in the previous section, they have a significant lack of information (see description of annexes and reasoning in the previous section) and cannot contribute to demonstrating the existence of the non-registered sign in the relevant territory.

 

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 goods 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

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Lucinda CARNEY

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.

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