Using Oppositions to Protect Your Brand
Tactical Advice and Trends - Important Board of Appeal Decisions
F. Peter Müller; Müller, Schupfner & Gauger; Munich; www.propat.de; Germany July 31, 2000
Abstract: This article gives a brief overview and some guidelines of how to succeed in opposing a Community trade mark (hereinafter CTM). The author has mainly concentrated on relative grounds of refusal (older registered trademarks and non-registered earlier rights like non-registered trademarks and other signs used in the course of trade), and which facts are taken into consideration by the Opposition Divisions when examining the file. This article does not consider formality questions. This advice may help in assessing the chances to oppose a CTM trademark, and which facts are crucial to protect your brand in Europe.
1. General Issues
EXAMINATION OF THE FILE (Extract from the official guidelines)
CTMR 43(5)
When the Office has received, within the time limits specified, all the
observations of the parties and, where necessary, proof of use of the
earlier trade mark, it will decide on the opposition after examining the
file.
CTMR 74(2)
There is no provision that the Office must inform the parties of a date
for the `closure' of the written proceedings, after which no additional
observations will be accepted. In the case of a single exchange of observations
between the parties, the written proceedings are deemed to be closed on
expiry of the time limit given to the opposing party to reply to the applicant's
observations. If, however, the Office considers that the file is incomplete
or if the parties so request, it may extend the exchange by giving the
parties a new time limit for response, after which the written proceedings
will be deemed to be closed.
CTMR 74(1)
Decisions are therefore always based only on the information submitted
by the parties, without taking into account other facts.
GENERAL ADVICE
The Office for Harmonization in the Internal Market (hereinafter OHIM or Office) in Alicante received more than 26.000 oppositions against CTM applications until May 2000. Hence, about every fourth CTM application is opposed.
Each opponent has to be very careful in order not to forget any requirements of the Rules, e.g. Rules 16 and 22, and to file the necessary documents in the correct language in due course.
In the first step OHIM checks whether or not the Notice of Opposition is admissable according to Rule 18. It does not yet examine the opponent's arguments, attached documents and special requests.
During the following cooling-off period the Office merely exchanges petitions and documents between both parties in order to completely inform them about the other party's position. OHIM does not yet examine the opponent's arguments, documents and special requests.
The cooling-off period can be extended upon requests by both parties or if one party shows exceptional reasons for postponing. This period allows the parties to seek for amicable agreements.
The opposition proceedings commence after the end of the cooling-off period. In the event that the applicant contends in sufficient commercial use of the opponent's trademark within the territory of the older mark during the previous 5 years before the publication of the CTM application, the opponent has to be careful to refer to all aspects (place, time, extent and nature) of the use of the trademark. German trademark owners as well as their attorneys and agents are very experienced in this matter because of a very similar practice in Germany. For instance, it is necessary that the trademark in question has been mentioned on respective invoices, showing that the goods or services in question were sold in the territory of the earlier mark.
It is also important to use the working language of the opposition proceedings and to prepare translations of all relevant passages of documents which are in another language. If a document is filed in another language and no translation is submitted, such document will not be considered for the decision. It is considered as not on file.
Furthermore, in case of confusingly similar trademarks, the applicant should consider to limit the list of goods and services, in order to avoid that identical or similar goods or services with regard to the opponent's trademark registration are maintained. OHIM is not obliged to make proposals.
2. Opposition based on Earlier Trade Mark Rights - Article 8 (1) (2) of the CTMR
2.1 Kinds of Opposition Trademarks
Trademarks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, the priorities claimed in respect of those trade marks, may be used to file an opposition:
- Community trade marks;
- Trademarks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade Mark Office;
- Trademarks registered under international arrangements which have effect in a Member State (Madrid Agreement and Protocol to the Madrid Agreement);
- Applications for the trade marks referred to above, subject to their registration;
- Trademarks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words well-known are used in Article 6bis of the Paris Convention.
2.2 Proof of Use of Opposition Trademark
Article 43 CTMR: Examination of opposition
Rule 22 IR: Proof of use
(1) Where, pursuant to Article 43 (2) or (3)
of the Regulation, the opposing party has to furnish proof of use or show
that there are proper reasons for non-use, the Office shall invite him
to provide the proof required within such period as it shall specify.
If the opposing party does not provide such proof before the time limit
expires, the Office shall reject the opposition.
(2) The indications and evidence for the furnishing of proof of use shall
consist of indications concerning the place, time, extent and nature
of use of the opposing trade mark for the goods and services in respect
of which it is registered and on which the opposition is based, and evidence
in support of these indications in accordance with paragraph 3.
(3) The evidence shall, in principle, be confined to the submission of
supporting documents and items such as packages, labels, price lists,
catalogues, invoices, photographs, newspaper advertisements, and statements
in writing as referred to in Article 76 (1) (f) of the Regulation.
(4) Where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not
in the language of the opposition proceedings, the Office may require
the opposing party to submit a translation of that evidence in that language,
within a period specified by the Office.
Article 76 CTMR: Taking of evidence
(a) hearing the parties;
(b) requests for information;
(c) the production of documents and items of evidence;
(d) hearing witnesses;
(e) opinions by experts;
(f) statements in writing sworn or affirmed or having a similar effect
under the law of the State in which the statement is drawn up.
The Office also considers that when evidence of use is required to prove use of a national trade mark in Community trade mark opposition proceedings, the applicable law is the Community Trade Mark Regulation and not national law.
Well-known trade marks
For well-known trade marks (not registered), the opponent must show that
such an earlier trademark has become well-known in the relevant territory,
for the goods and services on which the opposition is based.
The Office considers that in order to prove the existence of an earlier
right in the sense of Article 8(2)(c), particulars should demonstrate
that the opposing mark has acquired notoriety and become well-known in
the sense of Article 6bis of the Paris Convention in the European Union.
Particulars concerning place and extent of knowledge shall indicate the
territory where the trade mark is known and should comprise figures for
sales, advertising expenditure etc in order to established the degree
of knowledge of the mark (see also chapter 5).
2.3 Identity of signs and goods/services
Article 8(1)(a) of the CTMR stipulates that a trade mark shall not be registered upon opposition by the proprietor of an earlier trade mark if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.
This provision is clear: Once the trademarks and the goods/services are identical, the CTM will be rejected for these goods/services.
2.4 Similarity of signs and goods/services
According to Article 8(1)(b) of the CTMR, upon opposition by the proprietor of an earlier trade mark the trade mark applied for shall not be registered:
If because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
In most opposition cases Article 8 (1) (b) of the CTMR is the most frequently used ground of opposition since many earlier national or international (Madrid system) trademarks are similar to the CTM and the goods and services of the earlier national or international trademarks are similar to the claimed goods and services of the CTM application.
Therefore, the opposition divisions of OHIM conduct the following steps of assessment which are identical to the common practice of the opposition divisions of the German Patent and Trade Mark Office. These steps are the following:
- Comparison of goods and services
- Comparison of signs
- Conclusion
2.4.1 Comparison of goods and services
In assessing the similarity of the goods and services, all relevant factors relating to those goods and services themselves should be taken into account. Those factors include, inter alia,
- their nature
- their producers,
- their end users,
- their distribution channels,
- their method of use, and
- whether they are in competition with each other or are complementary.
Additional factors are the prices of the goods and services and at which places the goods and services are sold to which customers. These factors are of particular relevance within the pharmaceutical market since their distribution via pharmacies upon the prescription of physicians/doctors may require less distance between the goods and services of both trade marks to refuse the opposition (cf. judgment of the Court of Justice of September 29, 1998 in Case C-39/97, Canon Kabushiki Kaisha vs. Metro Goldwyn-Mayer, Inc., OJ OHIM, No. 12/1998, p. 1419, para. 23).
2.4.2 Comparison of signs
In determining the existence of likelihood of confusion trade marks have to be compared by making an overall assessment of the
- visual,
- phonetic and
- conceptual similarities
between the marks.The comparison must be based on the overall impression given by the marks bearing in mind, in particular, their distinctive and dominant component. Therefore, a comparison of both trade marks comprises at least a three-step-procedure. If trade marks shall not be similar, all three assessments must be negative.
In assessing the conceptual similarity it should be noted that such assessment is restricted to the concerned public of that member states of the European Union from which the opposition trade mark originates. Since the conceptual similarity and sometimes also the phonetical similarity is assessed differently with respect to the perception of the concerned public of each of the member states of the European Union, an opposition should be based on as many trade marks as possible in order not to fail during such stage of the opposition proceedings.
2.4.3 Conclusion
Persuant to Article 8 (1) (b) of the CTMR the similarity of goods is a prerequisite for the ascertainment of likelihood of confusion. According to the case-law of the European Court of Justice, "there can be no likelihood of confusion where the public does not think that the goods come from the same undertaking" (cf. judgment of the Court of Justice of September 29, 1998 in Case C-39/97, Canon Kabushiki Kaisha vs. Metro Goldwyn-Mayer, Inc., OJ OHIM, No. 12/1998, p. 1419, para. 23).
Once there exists a similarity of goods the similarity of signs will be assessed in comparison with the similarity of goods and services. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods. The less the goods and services are similar the more the signs have to be similar in order to come to the conclusion that there exists a likelihood of confusion. The less the signs are similar the more the goods and services must be similar in order to come to the conclusion that there is an existence of likelihood of confusion.
If there is no similarity of goods and services, Article 8 (5) of the CTMR has to be considered (see chapter 5 for details).
2.5 Example (Decision of an Opposition Devision)
| Opposition Trademark (spanish): BRIDGE "Stockings, socks and tights" in class 25. |
BRIDGE | ||
| Opposed CTM application: "Clothing and footwear" in class 25 |
 |
During the course of the proceedings the applicant amended his list of goods in class 25 to read as follows:
"Outer clothing, namely sweaters, sweat shirts, jackets, .........; footwear".
The opponent maintained his opposition.
The use of the opposition trademark had been proved.
a. Comparison of goods
The applicant's goods "Outer clothing, namely sweaters, sweat shirts,
jackets, ......" are identical or at least very similar to the opponent's
goods "stockings, tights and socks", because their nature is the same
and they serve the same purpose which is to cover the human body for utilitarian
or aesthetic purposes. They are manufactured by the same enterprises,
they are distributed and sold through the same trade channels.
The applicant's "footwear" is considered similar to the opponent's "stockings, tights and socks" because the opponent's goods are complementary to those of the applicant's. Furthermore they serve the same purpose and are targeted at the same wide circle of consumers. They may also be distributed and sold through the same trade channels.
b. Comparison of signs
The two marks show a common visual feature as they both include
the word "BRIDGE". The CTM application is a figurative trade mark, which
includes the word "WAYFARER" and a compass rose (both represented in a
much smaller font than the words "THE BRIDGE"). The CTM application thus
possesses more special features to catch the eye, nevertheless, the words
"THE BRIDGE" of this sign are the most dominant part from a visual point
of view. Since the word "THE" is the definite article in English and is
only used in connection with a noun, it does not carry any distinctive
weight in this context. The fact that the word "BRIDGE" in the CTM application
occupies the most prominent position of the sign, as well as being represented
in a bigger manner, makes it the most distinctive element of the CTM application
as is also true in the earlier trade mark which only consists of the word
"BRIDGE".
From a phonetic point of view, again, the dominant and distinctive element of the two trade marks, is the word "BRIDGE". This is particularly true for cases where the average consumer, when confronted with signs in a language he cannot fully understand, (in this case Spanish speaking consumers confronted with signs in English) let alone pronounce, limits himself in pronouncing only the most obvious part of the sign, in this case the words "THE BRIDGE".
The English word "BRIDGE" means "structure of wood, stone, brickwork, steel, concrete etc., providing a way across a river, canal, railway etc.". "WAYFARER" means "a traveler by road especially one who travels on foot". The earlier trade mark is registered in Spain, where the average consumer will not know the meaning of either of the above words. The semantic content of the conflicting marks does not provide any means to avoid or cause likelihood of confusion.
In an overall assessment of the visual and phonetic similarities between the marks, bearing in mind, in particular, their distinctive and dominant components, the Office concludes that the marks are similar to a certain extent.
c. Conclusion
A global assessment of the likelihood of confusion implies some interdependence
between the relevant factors, and in particular a similarity between the
trade marks and between the goods or services. A lesser degree of similarity
between the marks may be offset by a greater degree of similarity between
the goods or services.
The contested goods of the CTM application are partly identical and partly similar to the goods for which the earlier mark is used.
As mentioned above, the marks are identical as far as the word "BRIDGE" is concerned. The differentiating element consists in the word "WAYFARER" and the accompanying device in the CTM application. Still it has been found that these additional features are of secondary importance both in the visual and phonetic appreciation of the sign. As a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, it is considered that the marks, when used for identical or highly similar goods, are similar enough that the public might believe that such goods sold under the CTM application have the same origin as the same goods sold under the earlier mark "BRIDGE".
In view of the fact that there are visual and phonetic similarities between the two marks, and that the goods of the CTM application "Outer clothing, namely sweaters, sweat shirts, jackets, blouses, shirts, trousers, waistcoats, skirts, dresses, men's suits, raincoats, coats, overcoats, overalls, belts, gloves, scarves, shawls, neckties; footwear" are considered identical or similar to goods for which the opponent uses his earlier right, there is a likelihood of confusion on the part of the public in Spain where the earlier trade mark is registered.
3. Opposition based on Agent Marks - Article 8 (3) of the CTMR
Upon opposition by the proprietor of the trademark, a trademark shall not be registered where an agent or representative of the proprietor of the trademark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action.
Article 11 CTMR prohibits the use of a Community trademark registered in the name of an agent or representative. Article 18 CTMR stipulates the transfer of a trade mark registered in the name of an agent.
The EU-Directive does not contain an identical provision. However, the
First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks stipulates:
Article 4 - Further grounds for refusal or
invalidity concerning conflicts with earlier rights
.......
4. Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
.......
g. the trade mark is liable to be confused with a mark which was in use abroad on the filing date of the application and which is still in use there, provided that at the date of the application the applicant was acting in bad faith.
The wording of Article 8(3) CTMR imposes the following requirements which must be satisfied for this provision to be applicable:
- the opponent must be the proprietor of the trademark;
- the opponent must use the trademark;
- the applicant is an agent or representative of the opponent;
- the applicant filed the trademark without the proprietor's consent,
- the applicant cannot justify his action (bad faith).
This provision complies with Art. 6septies of the Paris Convention. The opponent must be the proprietor of the trademark in a member state of the Paris Convention and must use such trademark on the day of application of the CTM and at least until the decision of the opposition.
The opponent must prove the capacity of the applicant as an agent or representative of the opponent by agent or sale contracts, exclusive or non-exclusive license contracts, or other means like employment or cooperation contracts. These contracts or other agreements between the opponent and the applicant must at least implicitly include the right of the applicant to use the trademark. If the applicant merely buys respective goods, he will not be considered as an agent or representative.
The applicant may have the right to use the trademark but he must not have the right to file a Community trade mark application. Once the applicant terminates any relationship with the opponent prior to the filing date of the CTM, there may still exist certain provisions by law or by contract stipulating rules of conduct after the termination of the status as an agent.
If the applicant filed the trademark as an agent without the proprietor's consent the applicant will have to provide evidence to justify his action. Without such evidence the Office will presumably accept bad faith (no decision has yet been published on Art. 8 (3) CTMR, up to the authors knowledge).
4. Opposition based on Earlier National or Regional Rights - Article 8 (4) of the CTMR
According to Article 8(4) of the CTMR (Council
Regulation No 40/94), upon opposition by the proprietor of a non-registered
trademark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for shall not be registered:
where and to the extent that, pursuant to the 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 Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
In contrast to Article 8 (4) CTMR, specific other earlier rights cannot be invoked by lodging a notice of opposition. Rather, they can be invoked, after registration of the CTM concerned, by filing a request for a declaration of invalidity. Article 52 (2) CTMR contains such a provision which may also be lodged as a counterclaim during infringement proceedings, wherein the use of the CTM may be prohibited pursuant to the national law governing the protection of any other earlier right, in particular:
- a right to a name;
- a right of personal portrayal;
- a copyright;
- an industrial property right (design).
4.1 Requirements
The wording of Article 8(4) CTMR imposes the following requirements which must be satisfied for this provision to be applicable:
- the earlier right must be a non-registered trade mark or a similar kind of sign (national law!);
- the sign must be used in the course of trade (CTMR!);
- the use must be of more than mere local significance (CTMR!);
- the right must be acquired prior to the filing date of the contested mark (national law!);
- the proprietor of the sign must have the right under the terms of the national law governing this right to prohibit the use of the contested mark (national law!).
4.2 The earlier right must be a non-registered trade mark or a similar kind of sign;
The types of rights provided for in Article 8(4) CTMR are unregistered trade marks and other exclusive rights of a similar character to trade marks, referred to as "another sign" in the article, used in the course of trade. The common characteristics of these rights are that they are based on use rather than on registration, but they are trade or business-related and thus outside the sphere of mere individual or personal rights (Article 52 (2) CTMR is applicable for these rights).
Non-registered trademarks
Non-registered trademarks exist in almost all Member States. The rules
and conditions governing acquisition of rights under the relevant national
law vary, from simple use to use having established a reputation. Their
scope of protection is also not uniform, although generally quite similar
to the rules found in the CTMR as concerns registered trademarks.
Other signs
In general, to be qualified as business identifiers within the meaning
of Article 8(4) CTMR the "sign" must be business-related. Where, for instance,
national law vests rights in a specific proprietor with respect to specific
"signs" or symbols, which have no relation to trade marks or business
identifiers in general, such signs would be considered sui generis and
would be excluded from the application of Article 8(4) CTMR. Signs accepted
within the meaning of Article 8(4) CTMR are, for example,
- trade names (enterprise identifiers, not necessarily identical with corporate name, see Article 8 of the Paris Convention),
- company names (corporate names, in most cases registered on the respective national commercial register),
- other business designations like establishment or store names,
- titles of publications or similar works, n geographical indications, n any other similar exclusive right falling within the same category or type of right (domain names !?).
However, the Office must also assess in each specific case if the sign on which the opposition is based also fulfils the other requirements of Article 8(4) CTMR.
National law applies to determine whether a particular right is provided for under the national law and what the conditions are for the existence of the right. However, further criteria are examined. For instance, where the respective national law considers "titles" as "other industrial property rights" (which is the wording of Article 52 (2) CTMR) but allows an opposition to be based on such titles, they will be considered as a sign within the meaning of Article 8 (4) CTMR.
Geographical indications owe their protection either to a registration or similar recognition system or to their use in the course of trade. In addition to protection at the national level, there are geographical indications protected at Community level, e.g. pursuant to EC Regulation 2081/92 (not applicable for Article 8 (4) CTMR). Further, some member states are party to the Lisbon Agreement to the Protection of Appellations of Origin and their International Registration of 1958 (revised at Stockholm 1976, amended on September 28, 1979); applicable for Article 8 (4) CTMR. Under some legal systems, geographical indications are not business signs within the meaning of Article 8 (4) CTMR, but fall under unfair competition law. An example of lex specialis is the German Regulation (1994) governing the use of the name "Solingen" (for cutleries). Geographical indications of such nature cannot be invoked under Article 8 (4) CTMR.
Collective marks consisting of a geographical indication (like wine labels) registered in the name of an association constitute a registered trademark which can be invoked under Article 8 (2) CTMR.
4.3 The sign must be used in the course of trade
Article 8(4) CTMR states that the earlier sign must be "used in the course of trade". This is a specific European requirement, independent of any national requirements. This means that even an earlier registered national sign which is not under use obligation according to national law can only form a valid basis in opposition proceedings when it is actually used in the relevant territory. In the absence of evidence of use a notice of opposition based on Article 8(4) CTMR will be rejected.
4.4 The use must be of more than mere local significance
Rights covered by Article 8(4) CTMR may only be invoked if they are of more than "mere local significance". This requirement applies to all the rights, i.e. non-registered trademark rights and all other signs within the scope of Article 8(4) CTMR. The question of whether an unregistered trade mark or a sign is of more than local significance must be answered by applying a uniform European standard.
"Local" in the context of Community standards covers a wider scope than it might have under national law. An individual assessment must be made on the particularities of each case. In general, neither the territory of a city alone, even a big one, nor the territory of a regional district or province is of more than local significance.
Where national law gives the holder of a mark or another sign a 'nationwide' right to prohibit a subsequent trade mark even if the business identifier is established on a local or regional basis only, such sign does not automatically qualify as an earlier right within the meaning of Article 8(4) CTMR. It will do so only if the European criteria relating to 'more than local significance' are complied with.
Such an assessment cannot be based on geographical criteria alone. For example, an important and decisive element is the intensity of the marketing. However, the special features of the business in question must be taken into account. Criteria for a specialist business such as sale of musical instruments must be different from for mass consumption goods such as foodstuffs. The age of the earlier sign could be relevant too. For example, a corporate name of a relatively recently incorporated company cannot reasonably be expected to have same the market share as a company established in the 1950's. An individual assessment must be made depending on the particularities of the case.
4.5 The right must be acquired prior to the filing date of the contested mark.
In order to oppose a CTM application successfully under Article 8(4) CTMR, the unregistered trade mark or other exclusive right must have been obtained "earlier" than the filing date of the contested CTM application, or where applicable, its claimed priority date. Hence, any evidence of use like brochures, invoices, certificates, data printouts, extract of records and others (see item 4.3) should carry the dates of publication. Here, the relevant date of acquisition of exclusive rights under the national law is decisive, be it on the mere use or on recognition in the trade.
4.6 The proprietor of the sign must have the right under the terms of the national law governing this right, to prohibit the use of the contested mark.
Earlier rights within the scope of Article 8(4) CTMR are protected only if they confer on their proprietors, under the applicable national law, the right to prohibit the use of a later trade mark. This last provision does not require to have rights to cancel the Community trade mark. Only the use of the CTM within the respective country must be prohibited. Such provision refers to the applicable national law of the respective member state, that the right is enforceable by means of an injunction vis-à-vis later marks. In general, the same criteria as outlined under topic 2 may be used for such assessment. If, however, the national law grants protection to unregistered marks also for dissimilar goods and services, such national rules apply under Article 8 (4) CTMR.
4.7 National Law versus European Law
There are disputes whether or not the opponent is under an obligation to prove how an earlier right enjoys protection which confers on its proprietor the right to prohibit the use of a subsequent trade mark under national law.
Article 74(1) CTMR states that in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought from a procedural point of view. European legal systems draw a distinction between facts and law: on the one hand facts are subject to proof and the party relying on a fact bears the burden of proof, particularly when the existence of a fact is disputed. On the other hand the court is supposed to know the law and apply it on its own initiative.
In cases falling within the scope of Article 8(4) the principle of Article 74(1) is clearly applicable to the facts, such as use of the sign in the course of trade. According to Article 8(4) the national law of the country, where the right is supposed to be protected, determines whether the right is exclusive, whether it is valid and its scope of protection. The body of law that the Office principally applies is the Regulations governing CTMs.
The national laws of the Member States are legal systems separate from that of the Regulations governing CTMs. Since special protection granted by the national law is a requirement for applicability of Article 8(4), the Office will have to treat the applicable rules and provisions of national law as facts - the party relying on the national law is liable to provide the necessary elements for the Office to take a decision.
The party seeking to rely on a particular national law is free to choose the way of demonstrating the applicable rules of the national law. This may be done by filing copies of the relevant parts of national statutes or literature or cases witnessing the jurisprudence. Similar cases already decided by competent national authorities may suffice to demonstrate the existence of the right and its scope of protection.
Consequently, the Office generally rules: national law is a matter of fact and the party relying on it has to prove it. Thus it is necessary to assess whether the opponent has proved the existence of his earlier right and its scope of protection under national law.
According to Rule 16(2) IR the notice of opposition based on any other earlier right than a registered right shall in principle be accompanied by appropriate evidence on the acquisition and scope of protection of that right. The opponent has to submit any evidence on the provisions of the national law relating to protection of earlier non-registered rights on a general level, such as extracts of the relevant national laws. The question then arises whether the opponent has in other ways proved the existence and the scope of protection of his earlier right.
5. Opposition based on Marks with Reputation - Article 8 (5) of the CTMR
"Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of § 2 (Article 8 of the CTMR) the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier community trade mark the trade mark has a reputation in the community and, 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 trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."
The wording of Article 8 (5) of the CTMR imposes the following requirements which must be satisfied for this provision to be applicable:
- The CTM application must be identical with, or confusingly similar to the earlier mark.
- The earlier registration (CTM or national) must enjoy a reputation in the relevant territory.
- The use of the sign applied for must be capable of taking an unfair advantage, or being detrimental to, the repute or the distinctiveness of the earlier mark.
- Such use must additionally be without due cause.
These conditions must be discussed in the light of the case-law of the European Court of Justice which has pointed out that the application of Article 8 (5) CTMR basically requires a sufficient degree of knowledge of the earlier registration, that could make possible an association between the two signs, capable of detrimentally affecting the earlier mark (cf. judgment of the Court of Justice in Case C-375/97, General Motors vs. Yplon S.A., § 23 and 30).
5.1 Similarity of Signs
The above outlined comparison of signs (item 2.4) must lead to an existence of likelihood of confusion by assessing the visual, phonetic and conceptual similarities between the trade marks. Thereafter, the reputation of the earlier trade mark must be assessed; an identity or similarity of goods and services is not required.
Furthermore, the European Court of Justice made clear that a likelihood of confusion is not relevant for the purposes of Article 5 (2) of the Trade Mark Directive (which is almost identical with Article 8 (5) of the CTMR) as it is not a condition for its application (cf. judgment of the Court of Justice in Case C-251/95, Sabel vs. Puma), and added in relation of marks with reputation, that a possible association of the two signs enhanced by the reputation of the earlier mark, may suffice for its distinctiveness or repute to be detrimentally affected (cf. judgment of the Court of Justice in Case C-375/97, General Motors vs. Yplon S.A., § 23 and 30).
5.2 Reputation
In making the assessment of the degree of reputation of a trade mark account should be taken of various factors, in particular:
- The distinctiveness of the mark
- The market share held by the mark
- How intensive, geographically widespread and longstanding use of the mark has been
- The amount invested by the undertaking in promoting the mark
- The proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking.
- Statements from chambers of commerce and industry or other trade and professional associations.
The Office requires that the opposer show proof of the reputation of the earlier mark. Once the reputation has been demonstrated for specific goods or services, the rejection of the opposed trademark is not automatic but will depend on whether the opposer has demonstrated that as a result of such reputation, the use of the new Community trade mark for dissimilar goods or services without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier trademark.
The European Court of Justice held more particularly that the earlier mark enjoys sufficient reputation, if it is known by a significant part of the public concerned by the products or services which it covers, in the territory in which it is registered or in a substantial part of it. The Court added that, in examining whether this condition is fulfilled, all the relevant factors of the case must be considered and, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use and the size of investment made by the undertaking in promoting it (cf. judgment of the Court of Justice in Case C-375/97, General Motors vs. Yplon S.A., § 23 and 30).
Hence, in assessing whether the condition of reputation is met, it is necessary to establish that a significant part of the relevant public is familiar with the mark in the territory concerned. For such purpose it is necessary to file all proofs like registration certificates, list of goods and services, excerpts from national trade mark acts, issues of brochures, magazines and newspapers, reports on the reputation of the earlier mark from marketing research institutes, affidavits, statutory declarations, figures relating to the sale and marketing expenses and all other documents in the language of the proceedings.
In accordance with Rule 16 (3), Rule 17 (2) and Rule 20 (2) of the Implementing Regulation the Office will request from the opponent to file evidence of reputation of the earlier mark wherein such evidence must be in the language of the proceedings. It should be noted that any evidence which is not filed in the language of the proceedings will not be considered by the Office. Opinion polls are a good means to prove reputation.
If the opponent reserves the right to supply further translations of documents to prove the reputation of the earlier mark, if it should be requested by the Office such reservation will not be considered by the Office once the Office requested to file the proof for reputation in the language of the opposition proceedings. The Office is not obliged to further request the opponent to translate any documents which have not been filed in the language of the opposition proceedings. Furthermore, it should be noted that explanations of the opponent referring to documents of proof will not be considered as translations. These explanations are merely descriptions and are not considered as sufficient proof of usage or proof of reputation.
If the evidence emanates from the opponent himself, it should be taken into account that further "independent" evidence is necessary to prove the reputation of the earlier mark. However, if the evidence was compiled for reasons other than the opposition proceedings and mainly includes objectively verifiable data such as accounts of facts and statements made in public by third parties, such evidence will be considered by the Office as reliable and will be taken into account as a basis for the decision.
As to the territorial extent of the reputation it must be born in mind that reputation must be principally established in the territory where the earlier mark is protected. Thus, any international reputation of the earlier trade mark may also extend to the territory where the mark is protected.
5.3 Unfair advantage - detriment to distinctiveness or repute
According to the Court of Justice the other main condition for the application of Article 8 (5) of the CTMR is that use of the mark applied for would cause detriment to, or take unfair advantage of, the distinctiveness or repute of the earlier mark. The court also pointed out that the stronger the earlier mark's distinctive character and reputation, the easier it will be to accept that the detriment has been caused to it (cf. judgement of the Court of Justice in Case C-375/97, General Motors vs. Yplon S.A., § 23 and 30).
5.4 Use without due cause
The absence of a due cause on the part of the applicants seems to be a condition for the application of this provision. However, if the evidence filed by the opponent is sufficient to establish an unfair use without any apparent justification by the applicant, the absence of due cause must be generally presumed.
The applicant may avail himself of the possibility of rebutting such a presumption, if he proves that he is entitled in law to act in this particular manner. If the applicant fails to submit these observations or evidence pointing to a legally valid reason for his usage, this final condition of the application of Article 8 (5) of the CTMR is deemed to have been met.
5.5 Costs
According to Article 81 (1) of the CTMR, the losing party in opposition proceedings shall bear the fees incurred by the other party as well as all costs incurred by him essential to the proceedings.
According to Rule 94 (1) of the Implementing Regulation apportionment of costs shall be dealt with in the decision on the opposition.
It should be noted that the question of costs is important in the early preparation of the filing of the opposition. If the opposition is extended to goods and services which are (at least partially) not similar with the goods and services of the opposition trade mark and if a reputation of the opposition trade mark cannot be proved, the opposition will be (at least partially) rejected and the opponent must carry (at least partially) the costs of the applicant.
6. Important Board of Appeal Decisions
There will be a handout on this chapter during the seminar to reflect the most recent decisions.