OPPOSITION No B 2 609 918

Ewa Pawlicka, Brzezińska 19/21, 95-041 Gałków Mały, Poland (opponent), represented by Rumpel Spółka Komandytowa, Częstochowska 1 a, 93-115 Łódź, Poland (professional representative)

a g a i n s t

Bolesław Pawlicki, ul. Wojska Polskiego 23, 95041 Gałków Mały, Poland (applicant).

On 08/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 609 918 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 095 021, namely against all the goods in Classes 18 and 25. The opposition is based on the following rights:

(i)        the non-registered trade mark ‘RASTER’, used in the course of trade of more than mere local significance in Poland, the United Kingdom, the Czech Republic, Slovakia, Latvia, Lithuania, Ireland, Estonia and Germany for goods in Classes 18 and 25, in relation to which the opponent invoked Article 8(4) EUTMR;

(ii)        the trade name ‘RASTER’, used in the course of trade of more than mere local significance in Poland, the United Kingdom, the Czech Republic, Slovakia, Latvia, Lithuania, Ireland, Estonia and Germany for goods in Classes 18 and 25, in relation to which the opponent invoked Article 8(4) EUTMR;

(iii)        the company name ‘RASTER’, used in the course of trade of more than mere local significance in Poland, the United Kingdom, the Czech Republic, Slovakia, Latvia, Lithuania, Ireland, Estonia and Germany for goods in Classes 18 and 25, in relation to which the opponent invoked Article 8(4) EUTMR;

(iv)        the non-registered trade mark ‘RASTER’, well known in Lithuania, Estonia, Germany, Latvia, the Czech Republic, Ukraine, Poland, Slovakia, Ireland and Russia for goods in Classes 18 and 25, in relation to which the opponent invoked Article 8(3) EUTMR.

I        PRELIMINARY REMARKS

1. Admissibility issues

According to Rule 15(2)(f) EUTMIR, the notice of opposition must indicate the goods and services on which the opposition is based.

In the notice of opposition, the opponent did not indicate the particular goods on which the opposition was based for any of the earlier rights invoked. In a letter dated 26/11/2015, the Office informed the opponent of this deficiency and invited the opponent to specify the goods on which the opposition was based within two months.

On 14/12/2015, the opponent submitted a response to the Office’s letter specifying that ‘the opposition is based on the earlier trade name and non-registered trade mark used for goods in class 25, that is berets; caps; coats; collars; hats; headbands; headgear for wear; jackets; knitwear; leggings [trousers]; neck scarves; muffler; neckties; overcoats/topcoats; visors; scarves [headscarf]; hoods; headgear; ear muffs; gloves; scarves; jersey; chimneys.’

The response clearly identifies the goods on which the opposition is based only in relation to the earlier trade name and non-registered trade mark. No information is provided by the opponent in relation to the goods for which the earlier company name on which the opposition is also based is used. Therefore, the deficiency was not remedied in relation to this earlier right. The opposition must, therefore, be rejected as inadmissible as far as it is based on the company name ‘RASTER’.

2. Alleged bad faith on the part of the applicant

Some of the opponent’s submissions concern alleged bad faith on the part of the applicant. In the context of Article 8 EUTMR, bad faith cannot be a basis for the opposition. The motives and earlier conduct of the applicant do not affect the scope of the tasks to be performed by the Opposition Division in examining the grounds laid down in Article 8 EUTMR and invoked by the opponent in the current case as the bases of the opposition. Therefore, this point raised by the opponent will not be addressed further in the examination.

II        ASSESSMENT OF THE EVIDENCE SUBMITTED

The outcome of the opposition as far as it is based on the well-known/non-registered trade mark ‘RASTER’ on the grounds of Article 8(3) and (4) EUTMR and on the trade name ‘RASTER’ on the grounds of Article 8(4) EUTMR depends to a great extent on the conclusions reached in relation to the evidence submitted by the opponent in order to prove the well-known character and the use in the course of trade of more than mere local significance of the earlier rights. Therefore, in this section the Opposition Division will first list the evidence submitted in its entirety and will then determine whether or not the sign ‘RASTER’ qualifies as an earlier well-known mark and whether or not it has been used in the course of trade of more than mere local significance.

On 20/05/2016 and 23/05/2016, within the time limit, the opponent submitted the following evidence:

Appendix 1        An extract from the Polish CEIDG (Central Registry and Information of Business Activity), in Polish, accompanied by a translation into English showing that the company name ‘EWA OGONOWSKA ‘RASTER’ LODZ RODAKOWSKIEGO HENRYKA 1’ is registered in the name of Ewa Ogonowska. According to the extract, business activity under the name commenced on 01/06/1998 and ceased on 10/03/2000. The registration was cancelled from the register on 03/01/2013.

Appendix 2        A marriage certificate in Polish, accompanied by a translation into English, recording the marriage of Ewa Ogonowska and Tomasz Pawlicki, dated 10/11/1999.

Appendix 3        A notary deed for withdrawal of a power of attorney issued to Tomasz Pawlicki.

Appendix 4        An extract from the CEIDG, in Polish, accompanied by a translation into English, showing that the company name ‘RASTER EWA PAWLICKA’ is registered in the name of Ewa Pawlicka. According to the extract, business activity under the name commenced on 10/03/2000.

Appendix 5        Letters of thanks to the ‘RASTER’ company from PULSE (an association for the elderly and disabled), from Kindergarten No 214 in Lodz, from the organisers of XIII Days of Galkowek in 2010 and from the President of the Pabianice tennis cup in 2010.

Appendix 6        Employment contracts and certificates of employment signed between Ewa Pawlicka (employer) and Boleslaw Pawlicki (employee).

Appendix 7        An extract from the Polish Patent Office register, dated 30/09/2015, regarding the status of an application for registration of the trade mark ‘RASTER’, filed on 13/04/2000. According to the extract and the opponent’s explanations, the application proceedings have been discontinued.

Appendix 8        A summons to a hearing to be held on 18/09/2015 at the District Court in Lodz in a civil matter (divorce); the case was brought by Tomasz Pawlicki against Ewa Pawlicka.

Appendix 9         Examples of various kinds of tags and labels bearing the sign ‘Raster’ in stylised form and in combination with figurative elements; and invoices issued by producers of tags and labels to the opponent during the period 01/01/2001-21/10/2015.

Appendix 10        A provision of the Polish tax law, presented on a blank sheet of paper, with a translation into English, referring to the expiration of tax liability.

Appendix 11-18        Catalogues for 2007 and for each year from 2010 to 2015, showing various kinds of headgear accompanied by the sign , in various colours and sometimes followed by the symbol ®.

Appendix 19        Examples of various kinds of headgear displaying the sign ‘Raster’, usually in a stylised form and in combination with figurative elements.

Appendix 20        A map that, according to the opponent, shows cities where ‘RASTER’ clothes are sold.

Appendix 21        A list of domain names, with invoices for the purchase of the domain names and for hosting them.

Appendix 22        Lists of the opponent’s clients.

Appendix 23-27        Invoices to clients in Slovenia, the Czech Republic, Lithuania, Ireland, Germany, Italy, Estonia, Belarus, Ukraine and Poland issued during 2002-2015 for hats. The prices vary from a few hundred to a few thousand euros or zlotys.

1. General assessment of the probative value of the evidence

The evidence submitted originates from the opponent. Although it cannot be completely disregarded, the fact remains that the probative value of evidence coming from the opponent and not from independent third parties is in general rather low.

This is particularly true in relation to items of evidence such as the map of cities where ‘RASTER’ clothes are sold (Appendix 20) and the lists of clients (Appendix 22).

A significant proportion of the evidence (e.g. Appendices 1-4 and 6-8, Appendix 10 and Appendix 21) is of such a nature that it gives no information about the use of the sign ‘RASTER’ at all.

In relation to the catalogues, which represent another significant proportion of the evidence, the opponent did not submit any information about their distribution (national, regional or local) or the reach or circulation figures of the publications in question.

2. Assessment of the evidence on its substance

It is evident that the sign ‘RASTER’ has been used in the context of commercial activity with a view to economic advantage prior to the filing of the contested trade mark, and that such use was continuous and took place throughout the whole territory of Poland and also in at least some neighbouring countries, such as Estonia, Lithuania, Germany and the Czech Republic, thus qualifying as use of more than mere local significance.

However, the evidence gives no information about the level of recognition of the earlier sign among the relevant public that could allow the Opposition Division to draw a conclusion in relation to its allegedly well-known character.

In the absence of any evidence that could clearly prove the extent of recognition among the relevant public — such as a survey on the sign’s recognition, opinion polls or other means of evidence such as sworn or affirmed statements, facts and figures originating from independent sources such as auditors or chambers of commerce, or decisions of courts or administrative bodies — and bearing in mind the analysis of the documents submitted as a whole, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier sign is known by such a significant part of the relevant public that it reaches the quantitative threshold necessary for a finding of well-known character.

III        UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER – ARTICLE 8(3) EUTMR

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.

Based on the above provisions and taking into account the conclusions reached after examining the evidence submitted, namely that the well-known character of the earlier sign ‘RASTER’ has not been proven, the opposition is rejected at this stage of the examination as far as it is based on the following right:

(i)         the non-registered trade mark ‘RASTER’, well known in Lithuania, Estonia, Germany, Latvia, the Czech Republic, Ukraine, Poland, Slovakia, Ireland and Russia for berets; caps; coats; collars; hats; headbands; headgear for wear; jackets; knitwear; leggings [trousers]; neck scarves; muffler; neckties; overcoats/topcoats; visors; scarves [headscarf]; hoods; headgear; ear muffs; gloves; scarves; jersey; chimneys in Class 25, in relation to which the opponent invoked Article 8(3) EUTMR.

The examination proceeds in relation to the remaining two earlier rights invoked by the opponent as bases of the opposition, namely:

(i)        the non-registered trade mark ‘RASTER’, used in the course of trade of more than mere local significance in Poland, the United Kingdom, the Czech Republic, Slovakia, Latvia, Lithuania, Ireland, Estonia and Germany for berets; caps; coats; collars; hats; headbands; headgear for wear; jackets; knitwear; leggings [trousers]; neck scarves; muffler; neckties; overcoats/topcoats; visors; scarves [headscarf]; hoods; headgear; ear muffs; gloves; scarves; jersey; chimneys in Class 25, in relation to which the opponent invoked Article 8(4) EUTMR;

(ii)        the trade name ‘RASTER’, used in the course of trade of more than mere local significance in Poland, the United Kingdom, the Czech Republic, Slovakia, Latvia, Lithuania, Ireland, Estonia and Germany for berets; caps; coats; collars; hats; headbands; headgear for wear; jackets; knitwear; leggings [trousers]; neck scarves; muffler; neckties; overcoats/topcoats; visors; scarves [headscarf]; hoods; headgear; ear muffs; gloves; scarves; jersey; chimneys in Class 25, in relation to which the opponent invoked Article 8(4) EUTMR.

IV        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.

1. 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.

In the present case, the opponent did not submit any information on the legal conditions for the acquisition of the non-registered trade mark and the trade name ‘RASTER’.

It is not clear, first, whether or not non-registered trade marks are protected in Poland at all. Moreover, if they are protected, the opponent did not refer to a legal provision that specifies whether or not any particular requirements or conditions must be met for such a sign to be protected, such as well-known character, reputation, etc.

The same applies to the other sign used in the course of trade of more than mere local significance, namely the trade name ‘RASTER’: no information has been submitted in relation to the requirements for its acquisition. It is true that, pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. However, this does not mean that contracting parties are not allowed to impose an obligation for registration in their national legislation. If this is the case, such a provision will not be applicable by virtue of Article 8 of the Paris Convention with respect to trade names held by a national of another contracting party to the Paris Convention. It will, however, be applicable to nationals of the country whose legislation requires trade names to be registered. The opponent did not provide any information in this regard. Moreover, there is no information about whether or not requirements other than registration must be met to acquire the right to a trade name, such as a certain amount (commercial scale) of use, well-known character, etc.

The Opposition Division has the impression that the opponent uses the term ‘trade name’ as a synonym for ‘company name’ and/or ‘non-registered trade mark’. The opponent does not explain the different nature of this right, which it explicitly invokes as a separate basis of the opposition, or the requirements for its acquisition.

Item 21 of the opponent’s submissions makes it even more difficult for the Opposition Division to identify and understand the nature of the trade name as a right under Polish law capable of being invoked under Article 8(4) EUTMR and/or the requirements for its acquisition. In that item, the opponent states that the sign ‘RASTER’ is used, inter alia, as a trade name, and in brackets a reference is made to Appendix 7. Appendix 7 is the extract from the Polish Patent Office register, dated 30/09/2015, regarding the status of an application for registration of the trade mark ‘RASTER’, filed on 13/04/2000. In the absence of any further explanation, the Opposition Division cannot perceive the connection between the trade name and this trade mark application. It may mean that the opponent is using the term ‘trade name’ as a synonym for ‘non-registered trade mark’. It may also mean that trade names must be registered with the Polish Patent Office, which is not uncommon in some EU Member States, such as Spain. Even if this were known to be the case also in Poland, the processing of this application was discontinued, so it was never registered. In any case, the Opposition Division cannot base its assessment on assumptions and speculation regarding the legal framework governing trade names in Poland.

In conclusion, the opponent did not provide information on the acquisition and ownership of the trade name ‘RASTER’, and it is impossible for the Opposition Division to carry on the examination based on speculation regarding its nature and the requirements for its acquisition.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

V        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, she 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.

The Opposition Division

Liliya YORDANOVA

Plamen IVANOV

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.