OPPOSITION No B 2 781 014

 

S.P.H. – Gerard Bertrand (Société par Actions Simplifiée), Domaine de l’Hospitalet, Route de Narbonne Plage, 11100 Narbonne, France (opponent), represented by Cabinet Plasseraud, Immeuble le Rhône Alpes, 235bis, cours Lafayette, 69006 Lyon, France (professional representative)

 

a g a i n s t

 

Consorzio Industriale Provinciale Nord Est Sardegna – Gallura, Via Zambia n. 7, Zona Industriale Sett. 1, 07026 Olbia, Italy (applicant), represented by Studio Legale Associato Cerino d’Angelo, Via Passariello n. 4, 80038 Pomigliano d’Arco, Italy (professional representative).

 

On 31/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 781 014 is rejected in its entirety.

 

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

 

 

REASONS:

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 597 479 for the figurative mark , namely against some of the goods in Class 32 and all the goods in Class 33. The opposition is based on international trade mark registration No 1 234 741 for the figurative sign  designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

 

 

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.

 

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

 

The earlier international registration invoked by the opponent designates the European Union. However, although an international registration designating the European Union has the same effect as a European Union trade mark registration within the meaning of Article 151(2) EUTMR, it is not a European Union trade mark.

 

As pointed out above, Rule 19 EUTMIR provides that, where an opposition is based on a right that is not a European Union trade mark, the opponent must submit evidence originating from the administration by which the mark was registered. In the present case, the earlier right was registered by WIPO. The competent administration for such an international registration, even when it designates the European Union, is WIPO and not the EUIPO.

 

Nothing in Rule 19 EUTMIR or in any article of the EUTMR relieves international registrations designating the European Union from the obligations regarding the requirement to file evidence of the existence and validity of the earlier trade mark on which the opposition is based.

 

On 10/10/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit further facts, evidence and arguments to substantiate its claims. This time limit expired on 15/02/2017.

 

On 22/02/2017, the Office informed the parties that, since the opponent had not substantiated the earlier right claimed as a basis of the opposition within the time limit, the Office would take a decision. Following that, on 03/03/2017, the opponent submitted its observations and attached a ROMARIN printout as evidence of the earlier right in question. However, those submissions were filed only after the expiry of the abovementioned time limit and, therefore, cannot be taken into account.

 

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, which have not been submitted 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.

 

 

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

 

 

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Benoît VLEMINCQ

 

 

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.