OPPOSITION No B 2 652 827

ROI Hunter a.s., Milady Horákové 1957/13, 60200  Brno, The Czech Republic (opponent), represented by Simona Hejdová, Koliště 13a, 602 00  Brno, The Czech Republic (professional representative)

a g a i n s t

Jaime Gianesella Mandelbaum, Haštalská 6, 110 00 Prague 1, The Czech Republic (applicant), represented by Michaela Seewald, Týnská 1053/21, 110 00  Prague 1, The Czech Republic (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 652 827 is upheld for all the contested services.

2.        European Union trade mark application No 14 533 806 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 533 806 ‘Roi Hunter’. The opposition is based on, inter alia, a non-registered trade mark ‘ROI Hunter’ used in the course of trade in the Czech Republic. The opponent invoked Article 8(4) EUTMR.

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

The opponent invoked, inter alia, a non-registered trade mark ‘ROI Hunter’ used in the course of trade in the Czech Republic for the following goods and services:

Class 9:         Hardware, software, data, databases and other information products on magnetic, electronic and optical media, operating systems, computers, technology platforms, advertising platforms.

Class 35:         Advertising, business management, commercial use of the internet relating to advertising and marketing, consultancy in the field of advertising and marketing, internet advertising, online advertising, business administration, office functions.

Class 38:         Telecommunications, communications by computer terminals and access to the internet, providing access to internet platforms and/or portals, providing user access to internet platforms, providing access to internet online trading platforms, providing access to databases. 

Class 42:         Platform as a service (PaaS), development and design of computer software, databases and applications, consultancy and providing information in the field of information technology, hardware and software, providing software, design, updating and maintenance of computer programs, computer programming, design, creation, hosting and maintenance of websites, technical project studies.

The Opposition Division finds it useful to start the assessment of the opposition with this earlier right.

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 07/09/2015 with a priority date of 18/05/2015. 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 Czech Republic prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the goods and services listed above.

The opponent filed voluminous evidence to prove use of its non-registered sign. Only the most relevant documents are listed below:

• A printout from a website presenting partners of Facebook describing ‘ROI Hunter’ as a platform enabling integration of Google analytics and XML product feeds in Facebook advertising.

• A copy of a document certifying that ‘ROI Hunter’ received an Internet Effectiveness Award in 2014 in the field of banking and finance; a document describing the IE Awards as awards for the most effective internet solutions on the Czech internet.

• A website printout of the Crystal Loupe awards 2014 (awards of the Czech internet) listing ‘Roihunter’ at 4th place in the category ‘E-commerce inspiration’.

• Copy of an article from the Czech edition of Forbes magazine dated in December 2014; the article is entirely dedicated to the opponent and mentions the ‘ROI Hunter’ Platform as a secret weapon of Facebook in its struggle against Google for advertising income.

• An article from www.lidovky.cz dated in 10/04/2015 describing the ‘ROI Hunter’ platform as software enabling its users to target their advertisement at specific consumers based on the information gathered about the consumers on Facebook, in a more efficient way than other software.

• Other articles including information about the ‘ROI Hunter’ platform and/or interviews with the owner of the opponent company.

• Numerous invoices issued by the opponent for services of use of the ‘ROI Hunter’ platform dated in the end of 2014 and in the first half of 2015 to different clients mainly in the Czech Republic but also in other EU countries such as Slovakia, Poland, Hungary etc.

The evidence shows that the sign was used at least in the Czech Republic.  This is apparent from the language of most of the documents (Czech), from the fact that the product obtained prizes awarded within the Czech internet business environment, from the fact that the articles refer to ‘a Czech product’ or ‘Czech company’ developing the product and also from the addresses of the majority of the clients as displayed in the invoices.

The majority of evidence is dated before the relevant date. Moreover, there are invoices up to October 2015. The opposition was filed on 09/02/2016 so the Opposition Division can safely conclude that it was sufficiently demonstrated that the use was continuous and ongoing also at the time of filing of the opposition.

The use was clearly of more than mere local significance. The product under the sign received awards, extensive articles in wide reaching media were dedicated solely to the opponent and its product, the opponent sold the product to numerous clients not only in the Czech Republic but also internationally and is used by entities such as Facebook. Although the evidence does not show use for an extended period of time, it is evident that the product became largely successful within a relatively short period and it has an economic impact that clearly goes beyond not only the local area of the opponent but also beyond the borders of the Czech Republic. The extent of use was thus sufficiently demonstrated.

The sign has been used in the word form or in slight stylization of typeface. Overall, it can be concluded that the sign was used as a word mark ‘ROI Hunter’. It is also clear that it was used in direct connection with the products and services of the opponent to identify their commercial origin and, thus, was used as a trade mark.

The evidence shows that the opponent’s sign has been used in the course of trade for a software platform that enables its users to effectively target consumers with specific advertisement based on information gathered about the consumers on the internet, in particular on social networks. From some of the articles (for example the article from www.babelguide.com) it becomes obvious that the opponent provides a wide range of services connected with the platform. It is explained for example that the opponent charges a fee that is proportionate to the clients advertising on Facebook and the more the client spends the more support services such as training and additional support in advertisement he is entitled to. Seen in connection with the goods and services for which the opponent claimed it had been using the mark, the Opposition Division considers that the non-registered sign was used for the following goods and services:

Class 9:         Software, data, databases and other information products on magnetic, electronic and optical media, operating systems, computers, technology platforms, advertising platforms.

Class 35:         Commercial use of the internet relating to advertising and marketing, consultancy in the field of advertising and marketing, internet advertising, online advertising.

Class 38:         Providing access to internet platforms and/or portals, providing user access to internet platforms.

Class 42:         Platform as a service (PaaS), providing software, design, updating and maintenance of computer programs.

Taking into account all the above, the Opposition Division concludes that the opponent’s sign was used in the course of trade of more than local significance in the Czech Republic for the goods and services listed above both before the filing and priority date of the contested trade mark.

2. The right under the applicable law

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

The opponent submitted, among other documents relating to the Czech national law, the Czech Trade Mark Act, and referred specifically to Section 7(1)(g) of this Act. Pursuant to this provision, the sign applied for shall not be registered in the register upon opposition filed by the proprietor of a non-registered sign or another sign used in the course of trade of more than mere local significance for identical or similar goods and services, if such a sign is identical with or similar to the sign applied for, if the rights to that sign were acquired prior to the date of the application for registration.

Article 8(4) EUTMR explicitly requires a right that confers on its proprietor the right to prohibit use of a subsequent mark. The Office, however, applies the provision broadly, based on an interpretation oriented by its purpose, meaning that an opposition based on provisions of national law on the prohibition of a later registration can also be accepted in some cases. In several cases the General Court and the Boards of Appeal accepted that a provision prohibiting registration of a subsequent trade mark can be validly invoked within the opposition pursuant to Article 8(4) EUTMR. For example in the decisions of 17/03/2011, R 1529/2010-1 (Gladiator) and of 09/07/2012, R 2100/2011-2 (Vodka 42) the Boards explicitly accepted the abovementioned provision of the Czech Trade Mark Act as a valid basis for opposition under Article 8(4) EUTMR.

3. The opponent’s right vis-à-vis the contested trade mark

The conditions laid down by the national law are the following:

• The right to the non-registered sign must be acquired before the filing of the opposed mark.
• The non-registered sign must have been used in the course of trade of more than mere local significance.
• The signs must be identical or similar.
• The goods or services of the signs’ must be identical or similar.

The first two conditions are fulfilled as becomes evident from the assessment carried out above. The assessment above was carried out with regard to EU criteria but in the present case, the same conclusions must be drawn with regard to the conditions of the national law. The sign was clearly used in the course of trade of more than mere local significance, as explained above, and the right to the sign was acquired prior to the date of application of the contested mark. Finally, it is also clear that the opponent is the proprietor of that sign as it is undoubtedly the entity that appears in the evidence as the one using and owning the sign.

The Opposition Division will proceed with the assessment of the remaining conditions.

1.        The goods and services

The opponent’s non-registered trade mark was used for:

Class 9:         Software, data, databases and other information products on magnetic, electronic and optical media, operating systems, computers, technology platforms, advertising platforms.

Class 35:         Commercial use of the internet relating to advertising and marketing, consultancy in the field of advertising and marketing, internet advertising, online advertising.

Class 38:         Providing access to internet platforms and/or portals, providing user access to internet platforms.

Class 42:         Platform as a service (PaaS), providing software, design, updating and maintenance of computer programs.

The opposition is directed against the following services of the contested sign:

Class 35:        Commercial use of the Internet relating to advertising and marketing; Advertising and business information via the Internet for business purposes; Promotional services and merchandising; Marketing; Marketing studies; Presentation of goods on communication media; Rental and sale of publicity material and advertising space; Marketing studies; Market analysis; Advertising agencies; Commercial advertising; Advertising via telephone; Business management; Consultancy in the field of advertising and marketing.

Class 42:        Consultancy in the field of computer technology (computer software consultancy); Designing internet presentations; Design, creation, hosting and maintenance of websites and the content thereof, for others.

Contested services in Class 35

The contested commercial use of the Internet relating to advertising and marketing; consultancy in the field of advertising and marketing are also services for which the earlier sign was used. These services are identical.

The contested advertising and business information via the internet for business purposes; promotional services and merchandising; marketing; marketing studies; presentation of goods on communication media; rental and sale of publicity material and advertising space; marketing studies; market analysis; advertising agencies; commercial advertising; advertising via telephone are all services closely related to advertising and marketing. The core and purpose of the services for which the earlier sign is used is also advertising, in particular the consultancy in the field of advertising and marketing. The services have the same nature and purpose and they are normally provided by the same entities. Therefore, these services are similar.

The contested business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Advertising is an essential tool in business management because it makes the business itself known in the market. The purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, these contested services are similar to a low degree to the consultancy in the field of advertising and marketing for which the earlier sign was used.

Contested services in Class 42

The contested services consultancy in the field of computer technology (computer software consultancy); designing internet presentations; design, creation, hosting and maintenance of websites and the content thereof, for others are all services connected to computer technology, software, websites and design thereof. There is a relevant connection between these services and the services for which the earlier sign was used, namely providing software, design, updating and maintenance of computer programs. These services have the same nature, require the same knowhow, they target the same relevant public and are often provided by the same entities. Therefore, these services are considered to be similar.

2.        The signs

ROI Hunter	Roi Hunter
Earlier sign	Contested sign

The contested sign is a word mark and, as stated above, the earlier non-registered mark was also used as a word mark. Therefore, the differences caused by the use of upper or lower case letters are irrelevant and, since the marks consist of the same two word elements in the same order, they are identical.

Global assessment of the conditions under the applicable law

As seen above, the relevant provision of the Czech Trade Mark Act does not explicitly contain the requirement of likelihood of confusion. The Boards, in the decisions above mentioned considered that, despite of this fact, the condition of likelihood of confusion must be also considered as an implicit requirement because any other interpretation would result in non-registered trade marks having broader protection than registered trade marks (decision of 17/03/2011, R 1529/2010-1 ‘Gladiator’, § 37 and decision of 09/07/2012, R 2100/2011-2, Vodka 42, § 64).

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

In the present case, in is evident that the likelihood of confusion exists (in addition to ‘double identity’ as regards some of the services) as the signs are identical and the services are identical, similar and similar to a low degree.

Consequently, all the conditions required by the Czech national law are fulfilled.

4. Conclusion

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier sign. Therefore, the contested trade mark must be rejected for all the contested services.

As the opposition is entirely successful on the basis of the Czech non-registered trade mark ‘ROI Hunter’, it is not necessary to examine the remaining earlier rights on which the opposition is based.

The applicant argues that it had genuinely used the sign ‘ROI Hunter’ in the past. It does not explain how this is relevant for the assessment of the present opposition. In any case, regardless of whether or not the previous use of the applicant could have any effect on the present case, the Opposition Division notes that all the evidence (with one exception, see below) submitted to this effect by the applicant relates to territories other than the Czech Republic (mainly Brazil) and thus, such use could not influence the outcome of this decision which reflects merely the situation in the territory of the Czech Republic. The abovementioned exception is a printout from two websites in which an address in the Czech Republic appears for one of the branches of ROI HUNTER. First, it is not clear that those websites are operated by the applicant. Second, this document provides no indications of any actual use of the sign within the Czech Republic. Therefore, this argument of the applicant must be dismissed.

Moreover, the applicant claims that he is the author of the sign. Although this issue could have relevance in some type of invalidity proceedings against a registered EUTM, in the present opposition proceedings based on Article 8(4) EUTMR, it cannot in any way affect the outcome of the decision.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Pierluigi M. VILLANI

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.