Trade mark guidelines, Part C Opposition, Section 4 Non-registered trade marks and other signs used in the course of trade (Article 8(4) EUTMR)

Part C Opposition Section 4

1 Introduction

The relationship between the European Union trade mark system and national law is characterised by the principle of coexistence. This means that both the European Union trade mark system and the national laws exist and operate side by side. The same sign can be protected by the same proprietor as an EUTM and as a national trade mark in one (or all) of the Member States. The principle of coexistence further implies that the EUTM system actively acknowledges the relevance of national rights and their scope of protection. Where conflicts arise between EUTMs and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority. If the respective requirements are met, earlier national trade marks or other earlier national rights can prevent registration of, or invalidate a later EUTM. Although Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks and the directives that preceded it have harmonised the laws relating to registered trade marks, no such harmonisation has taken place on an EU scale with regard to non-registered trade marks nor for most other earlier rights of a similar nature. These unharmonised rights remain completely governed by national laws. Furthermore, there are rights other than trade marks whose acquisition and/or scope of protection is governed by EU law. Article 8(4) EUTMR is the ground for opposition against an EUTM application based on an earlier non-registered trade mark or other sign used in the course of trade protected under EU law or the laws of the Member States, subject to the conditions of that provision.

Article 8(4) EUTMR reads: 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 shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

1. rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark;

2. that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. Article 8(4) EUTMR means that in addition to the earlier trade marks specified in Article 8(2) EUTMR, non-registered trade marks and other signs protected at EU or Member State level used in the course of trade of more than mere local significance

can be invoked in an opposition provided that such rights confer on their proprietors the right to prohibit the use of a subsequent trade mark. Article 8(4) EUTMR does not expressly or exhaustively enumerate the particular rights that can be invoked under this provision, but rather outlines a broad spectrum of rights that might serve as a basis for an opposition against an EUTM application. Therefore, Article 8(4) EUTMR can be regarded as a general ‘catch-all provision’ for oppositions based on non-registered trade marks and other signs used in the course of trade. Nevertheless, the broad scope of earlier rights to be relied upon in opposition proceedings under Article 8(4) EUTMR is subject to a number of restrictive conditions: these rights must confer an entitlement to the proprietor to exercise them, they must be of more than local significance, they must be protected by the applicable law governing them against the use of a subsequent trade mark and the rights must have been acquired prior to the EUTM application under the applicable law governing that sign. The ‘more than mere local significance’ requirement aims to restrict the number of potential opposing non-registered rights, thus avoiding the risk of a collapse or paralysis of the EUTM system by being flooded with opposing, relatively insignificant rights. The ‘national protection’ requirement is deemed necessary as the non-registered national rights are not easily identifiable and their protection is not harmonised on an EU level. Consequently, only national law governing the earlier signs may define the scope of their protection. While the requirements of ‘use in the course of trade’ and ‘use of more than mere local significance’ are to be interpreted in the context of EU law (European standard), national law applies when determining whether a particular right is recognised and protected under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark, and what conditions need to be met under national law for the right to be successfully exercised. As a consequence of this dualism, the Office must apply both the relevant provisions of the EUTMR and the national law governing the earlier opposing right. In view of the two-tier examination to be applied under Article 8(4) EUTMR, this provision, as the link between EU and national law, displays a somewhat ‘hybrid’ nature.

The conditions for successfully invoking Article 8(4) EUTMR are: 1. the opponent must be the proprietor of a non-registered trade mark or of another sign used in the course of trade or a person authorised under the applicable law to exercise such a right (see paragraphs 3.1 and 3.2 below); 2. use in the course of trade of more than mere local significance (see paragraph 3.3 below);

3. acquisition prior to the EUTM application under the applicable law governing that sign (see paragraph 3.4 below);

4. right to prohibit the use of a subsequent trade mark under the applicable law governing that sign (see paragraph 3.5 below). These four conditions are cumulative (11/12/2023, T-753/22, Gartenlux / GARTENLUX et al., EU:T:2023:810, § 20-21, 27; 11/12/2023, T-754/22, GARTENLÜX / GARTENLUX et al., EU:T:2023:817, § 21-22, 28). The first two requirements relating to the use of the sign of more than local significance are interpreted in light of European Union law, while the remaining requirements are assessed in accordance with the law which governs the earlier sign (07/02/2019, T-287/17, Swemac, EU:T:2019:69, § 36).

3.1 Entitlement: direct right conferred on the opponent

Article 46(1)(c) EUTMR provides that oppositions may be filed only by the proprietors of earlier marks or signs referred to in Article 8(4) EUTMR and by persons authorised under the relevant national law to exercise these rights. In other words, only persons having an interest directly recognised by law in initiating proceedings are entitled to file an opposition within the meaning of Article 8(4) EUTMR . The legal systems of the EU Member States provide various means of preventing the use of later marks on the basis of earlier signs used in the course of trade. However, in order to come within the meaning of Article 8(4) EUTMR, the earlier right must be vested in a particular owner or a precise class of user that has a quasi-proprietorial interest over it, in the sense that it can exclude or prevent others from unlawfully using the sign (18/01/2012, T‑304/09, BASmALI (fig.) / BASMATI, EU:T:2012:13, § 17). For example, in some Member States, the use of a sign may be prohibited if it results in unfair or misleading business practices. In such cases, if the earlier right lacks any ‘proprietorial quality’, it will not fall within Article 8(4) EUTMR . It does not matter whether these signs are protected against misleading or unfair use under trade mark law, the law relating to unfair competition, or any other set of provisions. In assessing the proprietorship of a sign used in the course of trade, the Office must analyse specifically whether the opponent has acquired rights over the sign ‘in accordance with the national law’ (18/01/2012, T-304/09 , BASmALI (fig.) / BASMATI, EU:T:2012:13, § 22).

3.2.1 Introduction

‘other signs used in the course of trade’ such as:

○ trade names

○ company names ○ titles of publications or similar works ○ domain names. The category of ‘other signs used in the course of trade’ within the meaning of Article 8(4) EUTMR mainly covers non-registered signs. However, the fact that a sign is also registered in accordance with the requirements of the respective national law does not bar it from being invoked under Article 8(4) EUTMR. When assessing which kind of intellectual property rights can be invoked under Article 8(4) EUTMR and which cannot, a European standard applies. The distinction follows from the scheme of the EUTMR and, in particular, from the differentiation made between the kinds of earlier signs upon which an opposition may be based under Article 8(4) EUTMR and the types of further rights that may be the basis for invalidity under Article 60(2) EUTMR. While Article 8(4) EUTMR refers to signs (‘non-registered trade mark or … another sign’), Article 60(2) EUTMR refers to a broader set of rights: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; and (d) an industrial property right. Therefore, although the signs covered by Article 8(4) EUTMR fall within the broad category of ‘industrial property rights’, not all industrial property rights are ‘signs’ for the purposes of Article 8(4) EUTMR. Since this distinction is contained in the EUTMR, the classification of a right under the respective national law is not decisive, and it is immaterial whether the national law governing the respective sign or industrial property right treats both types of rights in one and the same law.

3.2.2 Non-registered trade marks

Non-registered use-based trade marks exist in a number of the Member States, albeit not in all of them ( ), and are signs that indicate the commercial origin of a product or service. Therefore, they are signs that function as a trade mark. The rules and conditions governing acquisition of rights under the relevant national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the EUTMR concerning registered trade marks. Article 8(4) EUTMR reflects the existence of such rights in Member States and grants the proprietors of non-registered marks the possibility of preventing the registration of an EUTM application where they would succeed in preventing use of that EUTM application under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later EUTM are satisfied and the other conditions of Article 8(4) EUTMR are met. As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition.

Example: 14/01/2025, R 1540/2023-5, Feder mobile (fig.) / FEDER, where a nonregistered trade mark in Italy was invoked and the opposition was partially upheld based on that basis; 17/03/2011, R 1529/2010-1, GLADIATOR / GLADIATOR, where a non-registered trade mark in the Czech Republic was invoked and the opposition upheld on that basis; 05/11/2007, R 1446/2006-4, RM2000T / RM2000T, where a non-registered trade mark in Belgium was invoked and the opposition rejected as unfounded because non-registered trade marks are not protected in Belgium.

3.2.3 Other signs used in the course of trade

‘Other signs used in the course of trade’ is a broad category that is not enumerated in Article 8(4) EUTMR. In order for such signs to come within the ambit of Article 8(4) EUTMR, they must have an identifying function as to commercial origin, that is to say, they must serve to identify an economic activity engaged in by their proprietor (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 149). Article 8(4) EUTMR does not cover other types of intellectual property rights that are not ‘commercial signs’ — such as patents, copyrights or design rights that do not have a primarily identifying function but protect technical or artistic achievements or the ‘appearance’ of something. Some examples of cases dealing with whether a right is a ‘sign’ for the purposes of Article 8(4) EUTMR are set out below.

3.2.3.1 Trade names

Trade names are the names used to identify businesses, as distinguished from trade marks that identify goods or services as produced or marketed by a particular undertaking.

A trade name is not necessarily identical with the corporate name or commercial name entered in a commercial or similar register as trade names can cover other non-registered names such as a sign that identifies and distinguishes a certain establishment. Trade names are protected as exclusive rights in all Member States.

Pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. If national legislation requires registration for national trade names, the respective provision is not 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. This applies as well in respect of nationals of a member of the WTO Agreement. As regards the application of Article 8(4) EUTMR to trade names, where the trade name is invoked on the basis of the law of one of the Member States where a registration is a condition for the enforcement of rights in a trade name, the Office will apply this requirement where the Member State and the nationality of the opponent are the same, but will not apply this requirement in all other cases, since this would violate the provisions of Article 8 of the Paris Convention. Examples: 10/01/2024, T-504/22, where the trade name ‘FANTASIA HOTELES’ was invoked.

3.2.3.2 Company names

A company name is the official designation of an undertaking, in most cases registered in the respective national commercial register. Article 8(4) EUTMR requires that actual use be shown, even if national law vests in the holder of such a name the right to prohibit the use of a subsequent trade mark on the basis of registration alone. However, if under national law registration is a prerequisite for protection, registration must be demonstrated as well. Otherwise, there would be no national right that the opponent could invoke. Examples: 07/02/2019, T-287/17 SWEMAC, EU:T:2019:69, where a Swedish company name was invoked; 14/09/2011, T-485/07, O-live, EU:T:2011:467, where the Spanish commercial name ‘OLIVE LINE’ was invoked; and 26/07/2023, T-67/22, EU:t:2023:436, where the trade name ‘X-trade brokers’ was invoked.

3.2.3.3 Domain names

A domain name is a combination of typographical characters corresponding to one or several numeric IP addresses that are used to identify a particular web page or set of web pages on the internet. As such, a domain name functions as an ‘address’ used to refer to a specific location on the internet (euipo.europa.eu) or an email address (@euipo.europa.eu). Domain names are registered with organisations or commercial entities called ‘domain name registrars’. Although a domain name is unique and may be a valuable commercial asset, a domain name registration per se is not an intellectual property right. Such registrations do not create any form of exclusive right. Instead, ‘registration’ in this context refers to a contractual agreement between a domain name registrant and the domain name registrar.

However, the use of a domain name may give rise to rights that can be the basis for an opposition under Article 8(4) EUTMR. This can occur if through the use of the domain name it acquires protection as a non-registered trade mark or a trade sign identifying commercial origin under the applicable national law. Examples: 27/02/2025, R 140/2024-5, Manu’s / Manutea, where rights on the use of the Czech domain name ‘manutea.cz’ were invoked; 07/12/2011, R 275/2011-1, where rights based on the use of the German domain name ‘lucky-pet.de’ were invoked; B 1 719 379, where rights based on the use of the French domain name ‘Helloresto.fr’ were invoked; 14/05/2013, T-321/11 & T-322/11, Partito della libertà, EU:T:2013:240, where rights based on the use of the Italian domain name ‘partidodellaliberta.it’ were invoked and the Court considered that references to this site in the Italian press did not in themselves substantiate its use in the context of a commercial activity.

3.2.3.4 Titles

Titles of magazines and other publications, or titles of similar categories of works such as films, television series, etc. fall under Article 8(4) EUTMR only if, under the applicable national law, they are protected as a trade sign identifying commercial origin. The fact that the copyright in a title of a work can be invoked under the respective national law against a subsequent trade mark is not material for the purposes of Article 8(4) EUTMR. As set out above, whilst a right in copyright may be used to invalidate an EUTM under Article 60(2) EUTMR, it is only where a title has an ‘identifying’ function and acts as a trade sign identifying commercial origin that it comes within the scope of Article 8(4) EUTMR. Therefore, for such signs to be relied on under Article 8(4) EUTMR in the context of opposition proceedings, the national law must envisage a protection that is independent from that recognised by copyright law (30/06/2009, T-435/05, Dr. No, EU:T:2009:226, § 41-43.) As with all rights under Article 8(4) EUTMR, the title must have been used in the course of trade. This will normally require that the work to which the title relates must have been placed on the market. Where the title relates to a service (such as a television programme), the service must have been made available. However, there will be circumstances where pre-use advertising may be sufficient to create rights, and where such advertising will constitute ‘use’ within the meaning of Article 8(4) EUTMR. In all cases, the title must have been used as an indicator of the commercial origin of the goods and services in question. Where a title is used only to indicate the artistic origin of a work, such use falls outside the scope of Article 8(4) EUTMR (30/06/2009, T-435/05, Dr. No, EU:T:2009:226, § 25-31). Example: 26/10/2018, R 1841/2017-4, ARTvergnuegen (fig.), where the opposition was also based on the right of a title of work based on German trade mark law, although unsuccessful; 12/01/2012, R 181/2011-1, where the magazine title ‘ART’ was invoked.

3.3 Use requirements

In order to successfully invoke Article 8(4) EUTMR in opposition proceedings, the earlier rights must be used. There are two different use requirement standards which must be taken into account: national standard

European standard.

The two use requirement standards, however, clearly overlap. They must not be viewed in isolation but have to be assessed together. This applies, in particular, to the ‘intensity of use’ under the national standard and ‘use in trade of more than mere local significance’ under the European standard.

3.3.1 National standard

The national standard is relevant as it defines the scope of protection of the earlier rights, which are often not easily identifiable, all the more so since their protection is not harmonised on an EU level (see paragraph 3.5.2 below on the scope of protection). This standard determines the existence of the national right and the conditions of protection (16/10/2024, T-506/23, Neuschwanstein III, EU:T:2024:701, § 32 and 43). For non-registered trade marks and other trade signs identifying commercial origin that do not require registration, use constitutes the only factual premise justifying the existence of the right, including ascertainment of the beginning of its existence. The national standard also prescribes the intensity of use under the relevant national law.

3.3.2 European standard — use in the course of trade of more than mere local significance

Under Article 8(4) EUTMR, the existence of an earlier non-registered trade mark or of another sign gives good grounds for opposition if the sign satisfies, inter alia, the following conditions: it must be used in the course of trade and the use must be of more than mere local significance. The above two conditions are apparent from the very wording of Article 8(4) EUTMR (reiterated in Article 7(2)(d) EUTMDR), and must, therefore, be interpreted in the light of EU law. The common purpose of the two conditions laid down in Article 8(4) EUTMR is to limit conflicts between signs by preventing an earlier right that 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 which actually have a real presence on their relevant market (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157).

3.3.2.1 Use in the course of trade

The notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 47(2) and (3) EUTMR (30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 24-27). The aims and conditions connected with proof of genuine use of registered European Union or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) EUTMR (09/07/2010, T-430/08, Grain Millers, EU:T:2010:304, § 26; 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 143). Therefore, use must be interpreted according to the particular type of right at issue. The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) EUTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (12/11/2002, C-206/01, Arsenal, EU:C:2002:651, § 40; 25/01/2007, C-48/05, Opel, EU:C:2007:55, § 18; 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 17). However, the Court of Justice also ruled that deliveries made without charge may be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade has been met, since those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 152). As far as the time of use of the sign is concerned, an opponent must prove that use took place before the filing of the EUTM application or the priority date if relevant (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 166-168).

Moreover, it must be clear from the evidence that the use continues on the date of the filing of the opposition. In this context, Article 7(2)(d) EUTMDR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent must provide evidence of its acquisition, continued existence (emphasis added) and scope of protection of that right.

The following is an example of an inter partes case relating to invalidity proceedings. The reasoning and the findings also apply to oppositions, given that Article 8(4) EUTMR is a ground that can be invoked both in opposition and in invalidity.

The requirement that the sign be used in the course of trade must, as stated above, be interpreted in the light of EU law. It must be distinguished from the requirements provided for under the applicable national laws that might set specific requirements as far as the intensity of the use is concerned.

The European Union use requirement as prescribed by Article 8(4) EUTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a sign alone, that is, without any requirement relating to use. The following is an example where the opponent relied on the registration, at national level, of a trade name, but failed to prove that the sign was used in trade.

Depending on the applicable national law, an opponent might have to prove not only that the sign relied on is used in the course of trade (this being, as stated, a requirement under EU law), but also that it has been registered with the competent national authorities. It would not be sufficient that the European Union requirement of ‘use in trade’ is met if the registration requirement is not fulfilled. However, under certain national laws, rights in a company name may be invoked, as long as the company name has been used, prior to the registration of the entity in the companies register. The following is an example where the opponent invoked prior rights in a company name used in the course of trade in Germany that was not registered at the time of filing the contested EUTM application.

A sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter.

Therefore, the Office will reject an opposition in the absence of actual use of the invoked sign. The following are examples where the opponent failed to meet this basic requirement.

The following is an example where the opponent met this requirement.

The following are examples where the opponent failed to meet this basic requirement.

3.3.2.2 Use of more than mere local significance

Rights falling under Article 8(4) EUTMR may only be invoked if their use is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) EUTMR, that is, both to unregistered trade marks and to other trade signs identifying commercial origin. The proprietors of rights the use of which is of mere local significance retain their exclusive rights under the applicable national law pursuant to Article 138 EUTMR.

The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (18/04/2013, T-506/11 & T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48).

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken of the following dimensions:

The geographical dimension of the sign’s significance. This relates to the territory

in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. The Court of Justice clarified that the significance of a sign cannot be determined solely by the geographical extent of its protection. If that were the case, a sign whose protection is not merely local could, by that fact alone, prevent registration of an EUTM, even if it was only used to a very limited extent in the course of trade. Rather, the sign must be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local. This implies that, where the territory in which that sign is protected may be regarded as more than local, it must be used in a substantial part of that territory (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 158-159). However, it is not possible to establish a priori, in an abstract manner, which part of a territory must be used to prove that the use of a sign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be made in concreto, according to the circumstances of each case. The economic dimension of the sign's significance. The economic dimension is

assessed in view of the length of time the sign has fulfilled its function in the course of trade, the extent of its use and the group of addressees among whom it has become known as a distinctive element (e.g. consumers, competitors or even suppliers). It also takes into account the exposure of the sign, for example, through advertising or on the internet (24/03/2009, T-318/06- T-321/06, General Optica, EU:T:2009:77 § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19). Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements: 1. the intensity of use (sales made under the sign); 2. the length of use; 3. the spread of the goods (location of the customers); 4. the advertising under the sign and the media used for that advertising, including the distribution of the advertising. In the following examples, both the geographic and the economic dimension of use of the sign were found to meet the standards.

As far as the geographical dimension is concerned, in general, neither the territory of a city alone, even a large one, nor a regional district or province, is of more than mere local significance. It will depend on the circumstances of the case (see examples below). The leading judgment in this respect is the one rendered by the General Court in the General Óptica case, where use of the sign was confined to a specific locality and was, therefore, insufficient to meet the prescribed requirements.

The notion that the use in trade of the sign relied on must be proven in the territory of the Member State/s where protection is sought is not incompatible with use of the sign in connection with cross-border commercial transactions.

The following are examples where the opponent failed to prove that the economic dimension of the use of the signs concerned was sufficient to meet the prescribed legal requirements.

3.3.2.3 Nature of the use

Use of a sign relied on under Article 8(4) EUTMR must be made in accordance with the essential function of such a sign. This means that if an opponent relies on a non-registered trade mark, proof of use of the sign as a company name would not be sufficient to substantiate the earlier right.

The following is an example where the evidence shows use of a sign whose function does not correspond to that of the sign relied on.

The requirement that the sign must be used in trade for its own particular economic function does not exclude that the same sign might be used for several purposes.

It is common market practice to also use company or trade names as trade marks, either alone, or together with other product identifiers. This is the case when use of a ‘house mark’ is concerned, that is, an indication which usually coincides with the manufacturer’s company or trade name and which not only identifies the product or service as such, but also provides a direct link between one or more product/service lines and a specific undertaking.

Therefore, depending on the specific circumstances of the case, in a case where an opponent relies on a non-registered trade mark, the use of the same sign as a company name or trade name may well also accomplish the function of indicating the origin of the goods/services concerned (thus, a trade mark function), as long as the sign is used in such a way that a link is established between the sign that constitutes the company or trade name and the goods marketed or the services provided (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 22-23). As Article 8(4) EUTMR continues to apply to oppositions based on geographical indications filed before the entry into force on 23/03/2016 of Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009 on the Community trade mark, the opponent is still required to prove that the geographical indication is used in the course of trade of more than mere local significance. Use must be made in accordance with the essential function of such a sign, namely to guarantee

to consumers in the course of trade the geographical origin of the goods and

the special qualities inherent in them (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 147, 149). Therefore, documents mentioning a geographical indication exclusively in a non-trade context are not sufficient for the purposes of Article 8(4) EUTMR.

3.4 Earlier right

The right invoked under Article 8(4) EUTMR must be earlier than the EUTM application. In order to determine which of the conflicting rights is earlier, the relevant dates on which the rights were obtained must be compared. For the EUTM application, this is the filing date or any priority date validly claimed

(EUTM date). Seniority claims, even if they relate to the Member State where the other earlier right is claimed to exist, are not relevant. As regards the right falling under Article 8(4) EUTMR, the relevant date of

acquisition of exclusive rights under the national law is decisive, where the Court confirmed the Board’s rejection of evidence submitted by the invalidity applicant, which related to periods subsequent to the owner’s application for the EUTM (07/05/2013, T-579/10, makro, EU:T:2013:232, § 70). Where mere use is sufficient under the national law, this must have begun before the EUTM date. Where recognition in the trade or reputation is required, this must have been acquired before the EUTM date. Where these conditions are fulfilled only after the EUTM date, the opposition will have to be rejected.

3.5 Right to prohibit the use of a subsequent trade mark under the applicable law

Earlier rights falling under Article 8(4) EUTMR are protected if they confer on their proprietors under the applicable law the right to prohibit use of a later trade mark.

This requires, firstly, a finding that under the applicable law, rights of the type involved, in the abstract, are exclusive rights enforceable by means of an injunction vis-à-vis later marks and, secondly, a finding that in the actual case under consideration the conditions for obtaining such injunctive relief, if the mark that is the subject of the opposed EUTM application were used in the territory in question, are present (scope of protection) (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 190). Both questions have to be answered in accordance with the applicable law.

3.5.1 The right of prohibiting use

Article 8(4) EUTMR requires a right that confers on its proprietor the right to prohibit use of a subsequent mark. Therefore, the opponent should invoke and submit those provisions of law that could be relied on in an action for infringement to prevent unauthorised use. The opponent must establish that it has the right to prohibit use of a subsequent trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 190). However, provisions of law prohibiting or invalidating the registration of a later sign may also be accepted. The right to oppose the registration of a later sign, implicitly, encompasses the right to oppose use of that sign. By opposing the registration of a later mark, the proprietor of the earlier right seeks effective protection against any future use of that mark. The concept of ‘the right to prohibit the use of a subsequent trade mark’ encompasses the case in which the owner of a sign has, under the applicable law, the power to prevent that use through an invalidity action against a subsequent trade mark (21/10/2014, T-453/11, Laguiole, EU:T:2014:901, § 37; 24/10/2018, T-435/12, 42 BELOW (FIG. MARK) / VODKA 42 (FIG. MARK), EU:T:2018:715, § 103; 19/04/2018, C-75/17P, PALLADIUM PALACE IBIZA RESORT & SPA (fig.), EU:C:2018:269, § 60). In addition, the opponent must provide the criteria which need to be fulfilled to prohibit the use of the later mark under national law. The information on the applicable law must allow the Office to understand and apply the conditions for obtaining the right to oppose use of the subsequent sign. Furthermore, when the EUTM applicant exercises its right of defence, it can submit evidence of any applicable exceptions to rebut the opponent’s right to prohibit use. In this regard, the Office is required to perform an exhaustive examination of the criteria under national law referred to by the parties, including whether the relevant provisions establish any exceptions that would exclude the opponent’s right to prohibit the use of the contested mark under national law (12/07/2023, T-694/21, Atmos / Atmos, EU:T:2023:395, § 42; 13/05/2020, T‑443/18, Vogue Peek & Cloppenburg / Peek & Cloppenburg, EU:T:2020:184, § 66-69).

3.5.2 Scope of protection

For many, if not most of the rights falling under Article 8(4) EUTMR, the prerequisites of national regulations are quite similar to those applied in conflicts between trade marks, namely, likelihood of confusion, or damage to reputation or distinctiveness.

For example, unregistered marks are generally protected against subsequent marks in the event of a likelihood of confusion and, thus, in accordance with the same criteria that are applicable to conflicts between registered marks, namely, identity or similarity of the signs, identity or similarity of the goods or services, etc. In these cases, the criteria developed by the courts and by the Office for applying Article 8(1) EUTMR may easily be transported into Article 8(4) EUTMR, unless the party claims that the relevant case-law of the national courts follows a different approach. Where the applicable national law provides protection for unregistered trade marks that is different from that found in Article 8(1) EUTMR, the scope of protection of the earlier right invoked follows from national law. If, for example, the applicable national law also grants protection to unregistered marks for dissimilar goods and services under certain conditions, the same protection will be granted under Article 8(4) EUTMR.

4 Proof of the Applicable Law Governing the Sign

4.1 The burden of proof

According to Article 95(1) EUTMR, in all inter partes cases, the burden is on the party making a particular claim or allegation to provide the Office with the necessary facts and arguments in order to substantiate the claim. Unlike other grounds in Article 8 EUTMR, Article 8(4) EUTMR does not specify the conditions governing the acquisition and scope of protection of the earlier right invoked. It is a framework provision where the particulars of the applicable law must be provided by the opponent. Article 7(2)(d) EUTMDR provides that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the contents of the national law relied upon by adducing publications of the relevant provisions or jurisprudence. It follows from the law and it has been interpreted by the Court that the opponent must provide the content of the relevant national law and show that it would succeed under that national law in preventing the use of a subsequent trade mark. In that regard, it should be observed that Article 8(4)(b) of Regulation No 40/94 [now Article 8(4)(b) EUTMR] lays down the condition that, pursuant to the law of the Member State governing the sign relied on under Article 8(4), that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. Furthermore, in accordance with Article 74(1) of Regulation No 40/94 [now Article 95(1) EUTMR], the burden of proving that that condition is met lies with the opponent before the Office. In that context and in relation to the earlier rights relied on … regard must be had, in particular, to the national rules advanced in support of the opposition and to the

judicial decisions delivered in the Member State concerned and that, on that basis, the opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited. (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 188-190.) The Court held that in applications for a declaration of invalidity brought under Article 52(2) of Regulation No 40/94 [now Article 60(2) EUTMR], it is for the party who seeks to rely on an earlier right protected under national law to provide the Office not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law. (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50; 27/03/2014, C‑530/12 P, Mano, EU:C:2014:186, § 34.) Although these judgments referred to invalidity proceedings under Article 52(2) of Regulation No 40/94 [now Article 60(2) EUTMR], since Article 8(4) EUTMR also concerns the application of earlier rights protected under European Union legislation or under the law of the Member State governing the sign at issue, the cited case-law also applies to oppositions brought under Article 8(4) EUTMR. The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence. It may also be particularly useful to submit evidence of relevant case-law and/or jurisprudence interpreting the law invoked. The Office must effectively assess the applicability of the ground for refusal invoked. In order to ensure the correct application of the law invoked, the Office has the power to verify, by whatever means it deems appropriate, the content, the conditions governing the application and the scope of the provisions of the applicable law relied upon by the opponent (27/03/2014, C‑530/12 P, Mano, EU:C:2014:186, § 44-46), while respecting the parties’ right to be heard. If, after verifying the evidence submitted, the Office is of the opinion that the parties’ proposed interpretation or application of the law invoked was inaccurate, it can introduce new and/or additional elements, or request clarification or supplementary evidence to that effect from the opponent (25/11/2020, T‑57/20, GROUP Company TOURISM & TRAVEL (fig.) / GROUP Company TOURISM & TRAVEL (fig.) et al., ECLI:EU:T:2020:559, § 34). In order to respect the parties’ rights to be heard, the Office will invite the parties to comment on these elements, where appropriate. This power of verification is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (02/12/2020, T‑35/20, DEVICE OF CLAW- LIKE SCRATCH (fig.) / DEVICE OF A CLAW-LIKE SCRATCH (fig.), EU:T:2020:579, § 79-85; 28/04/2021, T‑284/20, HB Harley Benton (fig.) / HB et al., EU:T:2021:218, § 139-144).

4.2 Means of evidence and standard of proof

4.2.1 National law

As regards national law, the opponent must provide: 1. the provisions of the applicable law: ○ on the conditions governing acquisition of rights (whether there is a requirement of use and, if so, the standard of use required; whether there is a registration requirement, etc.); and ○ on the scope of protection of the right (whether it confers the right of prohibition of use; the injury against which protection is provided, e.g. likelihood of confusion, misrepresentation, unfair advantage, evocation). 2. particulars proving fulfilment of the conditions: ○ of acquisition (entitlement; earlier acquisition; whether it is in force; evidence of use if use-based; evidence of registration if registration-based, etc.); and ○ of the scope of protection (facts, evidence and/or arguments that the requirements laid down by the applicable law for a prohibition of use are met, e.g. the nature of the goods, services or business activity protected by the earlier right and their relation with the contested goods or services; a cogent argument showing that there is a risk of injury). First, as regards the provisions of the applicable law (see paragraph 4.2.1 a), the opponent must provide a clear identification of the contents of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2) (d) EUTMDR). The opponent must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR) (see the Guidelines, Part C, Opposition, Section 1, Opposition proceedings, paragraph 4.2.4.3). A mere reference to the case-law on which the applicant intends to rely in support of its argument in order to demonstrate the content of the legislation and the applicable case-law is insufficient to fulfil the obligations arising from Article 7(2)(d) EUTMDR (02/12/2020, T‑35/20, DEVICE OF CLAW-LIKE SCRATCH (fig.) / DEVICE OF A CLAW-LIKE SCRATCH (fig.), EU:T:2020:579, § 81).

As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation (Article 7(4) EUTMDR, first sentence). However, a mere translation of the applicable law does not itself constitute proof and cannot substitute the original; therefore, the translation alone is not considered sufficient to prove the law invoked. Article 7(4) EUTMDR requires any provisions of the applicable national law governing the acquisition of the rights and their scope of protection, including evidence accessible online to be submitted in the language of the proceedings or accompanied by a translation into that language, which must be submitted within the time limit specified for submitting the original document. The same rules apply where the opponent provides the content of the relevant national law by making reference to a relevant online source recognised by the Office. Where the opponent seeks to rely on national case-law or jurisprudence interpreting the law invoked, it must provide the relevant information in sufficient detail (e.g. a copy of the decision invoked or excerpts from the legal literature). The translation rules apply equally to that evidence, including cases when the opponent provides such evidence by making reference to a relevant online source recognised by the Office.

Second, as regards the particulars proving fulfilment of the conditions of the

applicable law (see paragraph 4.2.1 b), apart from providing appropriate evidence of acquisition of the right invoked, the opponent must submit evidence that the conditions of protection vis-à-vis the contested mark are actually met and, in particular, put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the applicable law. Merely providing the applicable law itself is not considered sufficient, as it is not up to the Office to make the relevant argument on behalf of the opponent. Furthermore, in an opposition under Article 8(4) EUTMR, what matters is whether the relevant provisions of the law conferring on the opponent the right to prohibit the use of a subsequent trade mark would apply to the contested mark in the abstract, and not whether the use of the contested mark could actually be prevented. Therefore, the applicant’s argument in defence that the opponent had not hitherto invoked or had not hitherto been able to prevent the actual use of the contested mark in the relevant territory cannot succeed (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 191, 193). Based on the above, the Office will reject the opposition if: the opponent invokes a right but does not include a reference to any specific

national law and/or legal provision protecting that right (e.g. the opponent only indicates that the opposition is based on a commercial designation in Germany or that the opposition based on a commercial designation in Germany is protected under DE-TMA); or the opponent provides a reference to the applicable national law and legal

provision(s) but the reference is not complete: the legal provision only indicates the conditions governing the acquisition of the right but not the scope of protection of the right (or vice versa) (e.g. the opponent indicates that the opposition is based on

a commercial designation in Germany protected under Article 5 DE-TMA, which establishes the conditions for acquisition of the right, but the reference to the conditions governing the scope of protection, Article 15 DE-TMA, is missing); or the opponent provides the reference to the relevant legal provision but does not

provide the content (text) of the legal provision (e.g. the opponent’s submission refers to the DE-TMA but does not include the content of the law); or the opponent provides the content of the legal provision only in the language of the

proceedings but not in the original language (e.g. the language of the proceedings is English but the text of the DE-TMA is submitted only in English, not in German); or the opponent does not provide any or sufficient evidence of the acquisition of the

right invoked or does not provide arguments as to why it fulfils the conditions governing the scope of protection (e.g. the opponent refers to the relevant legal provisions and provides their content both in the original language and translated into the language of the proceedings, but does not provide any or sufficient evidence of the acquisition of protection or does not state whether it fulfils the conditions of the scope of protection).

4.2.2 European Union law

The above requirements also apply to European Union law, except that the opponent is not obliged to provide the content (text) of the law invoked. However, the opponent has to provide particulars proving the fulfilment of the conditions under the relevant provisions of European Union law (paragraph 4.2.1. b) above).