OPPOSITION No B 2 042 573
Sport Direct Holding B.V., Teugseweg 42, 7418 AM Deventer, The Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative)
a g a i n s t
Sportsdirect.com Retail Limited, Unit A, Brook Park East, Shirebrook NG20 8RY, United Kingdom (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative).
On 28/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 042 573 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 in Classes 3, 5, 9, 14, 16, 18, 20, 21, 22, 28, 32, 35, 39 of European Union trade mark application No 10 746 791, ‘SPORTS DIRECT’. The opposition is based on the Dutch trade name/company name ‘Sport Direct B.V.’. The other sign on which the opposition is based is not represented in the notice of opposition. The opponent invoked Article 8(4) EUTMR.
Admissibility
According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely, where the opposition is based on an earlier right within the meaning of Article 8(4), an indication of its kind of nature, a representation of the earlier right, and an indication of its kind of nature, a representation of the earlier right and an indication of whether this earlier right exists in the whole Community or in one or more Member States, and if so, an indication of the Member States.
According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) CTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
In the notice of opposition of 02/07/2012, the opponent did not provide any representation of one of the signs, a Dutch trade name/company name on which the opposition is based. Therefore, only the trade name/company name ‘Sport Direct B.V.’, on which the opposition is based, will be taken into account in the further examinations.
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.
- 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 of that right.
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.
In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked, namely Dutch trade name/company name.
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.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.
In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely Dutch trade names/company names. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in the Netherlands mentioned by the opponent, as the paragraph concerning Prior Trade names/Company names is missing in the Notice of Opposition.
Moreover, the opponent did not put forward a cogent line of arguments on the conditions of legal protection and the scope of protection of the invoked right is not sufficient.
It is clear from case law that the opponent has the responsibility not only to provide the relevant national law but also to show that it would succeed under that national law in preventing use of the later mark (see judgment of 29/03/2011, C-96/09 P, ‘BUD’, §§ 188-190). It is not upon the Opposition Division to make the case for the opposing party and it cannot be reasonably expected that the Opposition Division conducts an ex officio assessment of the Dutch law in order to determine which would be the legal provisions that govern the sign in question, which are the requirements of protection of the applicable law (for example if Dutch trade names/company names are protected against subsequent marks according to the same criteria that apply to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods/services and the presence of a likelihood of confusion) and if the earlier sign invoked confers upon the opponent the right to prohibit use.
Since the abovementioned requirements for the application of Article 8(4) EUTMR are cumulative, and in the present case at least one of them is not satisfied, the opposition based on the existence of Dutch trade name/company name ‘‘Sport Direct B.V.’, claimed under this Article, cannot succeed.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
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
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Plamen IVANOV
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Lena FRANKENBERG GLANTZ |
Janja FELC
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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.