OPPOSITION No B 2 768 714

Budgetlens, Ravelstraat 12, 2807 PW Gouda, the Netherlands (opponent), represented by Center Tone Consultancy-International Trademark Protection,  Hertzstraat 2, 2652 XX Berkel en Rodenrijs, the Netherlands (professional representative)

a g a i n s t

François Malchaire, Rue de la Halte 16, 8715 Everlange, Luxembourg (applicant), represented by Hucke & Schubert, Waidmarkt 11, 50676 Köln, Germany (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 768 714 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 499 636, namely against all the goods and services in Classes 5, 9 and 35. The opposition is based on Benelux trade mark registration No 832 878 for goods and services in Classes 9, 16, 35 and 44 and international trade mark registration No 1 069 009, designating the Benelux and Germany, for goods and services in Classes 9, 16, 35 and 44. The opponent invoked Article 8(1)(b) EUTMR.

          (IR No 1 069 009)

(BX No 832 878)
Earlier trade marks	Contested sign

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 registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 26/09/2016, the opponent was given a time limit of two months after the expiry of the cooling-off period to submit 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. This time limit expired on 01/02/2017.

In the present case, on 30/01/2017, within the deadline, the opponent filed some evidence consisting of several sheets in Dutch and English of the particulars of earlier Benelux trade mark registration No 832 878 and international trade mark registration No 1 069 009. However, a close examination of these documents shows that they do not contain any indication of the source from which they emanate.

Apart from the clear provisions of the law (Rule 19(2)(a) EUTMIR), the opponent was also specifically informed of the requirements of substantiating the earlier marks by the information sheet attached to the Office’s letter of 26/09/2016. In particular, it was stated in the section ‘Particulars to be proven: What to prove’ that, for an earlier registration or trade mark (other than a CTM [now EUTM]), all the formal and substantive particulars must be shown. Under point a) ‘the issuing authority’ had to be shown.

Extracts from databases or registration certificates are accepted only if they are from an official source. The unaltered electronic image of an online database extract reproduced on a separate sheet is acceptable as long as it contains an official identification of the authority or database from which it originates. In the present case, the lack of identification of the known official source renders it impossible to determine whether or not the evidence is official in nature.

The opponent failed to substantiate, in a satisfactory manner, the existence, validity and scope of protection of its earlier rights. 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 his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

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

Saida CRABBE

Chantal VAN RIEL

Vit MAHELKA

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.