OPPOSITION No B 2 725 102

Bear Grylls Ventures LLP, 6th Floor, One London Wall, London  EC2Y 5EB, United Kingdom (opponent), represented by Carpmaels & Ransford LLP, One Southampton Row, London, City of London WC1B 5HA, United Kingdom (professional representative)

a g a i n s t

Glory Bright (HK) International Co., Limited, Unit 1006B 10/F Tower 2 South Seas CTR, 75 Mody Rd, TST East, Kowloon, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by NextMarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 18/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 102 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 15 213 051 for the figurative mark , namely against all the goods in Classes 14, 20 and 28. The opposition is based on international trade mark registration No 1 148 564 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

On 11/07/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended and finally expired on 16/01/2017.

By letter of 31/01/2017, in reply to the Office’s communication of 25/01/2017, by which it informed the opponent that it did not substantiate its earlier right, the opponent filed observations and submitted the required evidence.

The opponent claims that, by rejecting the opposition as unfounded, the Office makes an artificial distinction between EUTMs and ‘EUTMs arising from International Registrations (IRs)’, since the opponent does not have to submit any documents as far as the existence and validity of an earlier EUTM is concerned.

The opponent further claims that by imposing an additional requirement for EUTMs arising from IR designations, the Office is in breach of the principle of equal treatment of such rights and EUTMs, which is laid down in Article 4(1)(a) of the Madrid Protocol and in Article 151(1) EUTMR, which reads as follows:

‘An international registration designating the Union shall, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent designation of the Union pursuant to Article 3ter(2) of the Madrid Protocol, have the same effect as an application for an EU trade mark.’

According to the opponent, if an IR designating the EU is to have the same effect as an EUTM, such a right is in fact an EUTM, and no additional requirement of substantiation over and above that applied to direct EUTM filings may be imposed.

While the opponent acknowledges that no exception is provided to Rule 19(2)(a) EUTMR, it claims that it does not say anywhere that different standards apply to EUTMs arising from IRs.

What is more, the earlier right was filed in the language of the present proceedings. Therefore, the opponent does not deem it necessary to further substantiate or translate the specifications of that right.

Finally, the opponent finds it illogical that the Office accepts the WIPO publication, although the mark may subsequently have been refused protection, as well as TMView extracts, but not extracts from the EUIPO’s own database, which actually do substantiate that the earlier right exists and was granted protection, and from which TMView derives its EUTM data.

The opponent is of the opinion that the fact that the evidence to substantiate the earlier right was not submitted within the time limit does not mean that the rights on which the opposition is based were not substantiated, and that the opposition should be allowed to proceed also in the interest of procedural economy, that is, to avoid subsequent cancellation proceedings.

With regard to the opponent’s observations, it has to be pointed out that, while an international designation designating the EU, according to Article 151(1) EUTMR, has the same effect as an application for an EU trade mark, this does not mean that it is an EU trade mark. It remains an international registration designating the EU. Moreover, the requirements for the substantiation of international registrations remain unaffected by this provision.  

Rule 19(2)(a)(ii) EUTMIR clearly stipulates that, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide documents emanating from the administration by which the trade mark was registered to substantiate that earlier right.

There are, indeed, no exceptions to this rule, and in the case of an international registration, the administration by which the trade mark was registered is WIPO. Therefore, only a registration certificate or the most recent renewal certificate issued by WIPO, or an extract from WIPO’s ROMARIN database or from TMView, as far as it contains all the relevant data, constitutes valid evidence to substantiate an earlier international registration.

While it is true that TMView retrieves data concerning EUTMs from EUIPO, data concerning international registrations emanates from WIPO. Although the data is accessible via this centralized system, each Office (including WIPO) remains the owner of the data and continues to be responsible for its updating and maintenance.

Indeed, the Office accepts the first WIPO publication of the international registration as sufficient evidence of registration although, once registered, it can still be refused by national offices. The Office relies, in this regard, on the applicant to contest the protection of the mark in question in a given territory or for certain goods and services, in which case the opponent will have to provide evidence that the mark was not refused.

In the present case, the opponent submitted the required evidence only after the expiry of the abovementioned time limit.

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.

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

Plamen IVANOV

Natascha GALPERIN

Ana MUÑIZ RODRÍGUEZ

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.