OPPOSITION No B 2 793 050

2XU Pty Ltd, 243 Burwood Road, Hawthorn VIC 3122, Australia (opponent), represented by Harrison IP Limited, 3 Ebor House, Millfield Lane, Nether Poppleton, York YO26 6QY, United Kingdom (professional representative)

a g a i n s t

2xO Group Pty Ltd, 4/21 Martins Avenue, Bondi New South Wales 2026, Australia (applicant), represented by Olaf Kretzschmar, Untere Querstraße 1, 23730 Neustadt in Holstein, Germany (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 793 050 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 686 082, namely against all the goods in Class 18. According to the Notice of Opposition, the opposition is based on international trade mark registration No 853 952 designating European Union, international trade mark registration No 1 074 982 designating European Union, international trade mark registration No 1 165 665 designating European Union all of them for the word mark ‘2XU’ and non-registered trade mark ‘2XU’, in France, Germany, Austria United Kingdom, Spain, Italy. The opponent invoked Article 8(1)(b) EUTMR in relation to the first three earlier rights, Article 8(5) EUTMR in relation to the first earlier right and Article 8(4) EUTMR in relation to the last one.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 08/11/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension on 13/05/2017.

The opponent submitted a part of the required evidence on 15/06/2017, consisting of extracts from the WIPO data base in relation to international trade mark registration No 853 952 and No 1 074 982 both designating European Union and for the word mark ‘2XU’, that is, only after the expiry of the abovementioned time limit. Regarding international trade mark registration No 1 165 665 designating European Union for the word mark ‘2XU’ no evidence was submitted.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, in as far as the grounds Article 8(1)(b) and 8(5) EUTM are concerned, and as far as it is based on the three earlier international marks.

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

The opponent also based its opposition on a non-registered trade mark ‘2XU’ used in the course of trade in France, Germany, Austria, United Kingdom, Spain and Italy for bags and holdalls, back packs, rucksacks, sport bags.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

Reference is once again made to Article 76(1) EUTMR as set out previously and it follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence. Reference is also made to the relevant time-frames as set out under Rule 19(1) EUTMIR and Rule 19(2) EUTMIR (set out above). However, in the present case the opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Edith Elisabeth VAN DEN EEDE	María Clara  IBÁÑEZ FIORILLO	Francesca CANGERI SERRANO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.