OPPOSITION No B 2 754 722

Avalon Natural Products, Inc., 1111 Marcus Avenue, Lake Success, New York NY 11042, United States of America (opponent), represented by Stone King LLP, 16 St. John's Lane, London  EC1M 4BS, United Kingdom (professional representative)

a g a i n s t

Alba Thyment Sp. z o.o., ul. Szkolna 98, 62 002 Suchy Las, Poland (applicant), represented by Poraj Kancelaria Prawno-Patentowa Sp. Z O.O. , ul. Słowackiego 31/33, lok.1, 60-824 Poznań, Poland (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 722 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 and services of European Union trade mark application No 13 318 142, namely against  all the goods in Class 3 and some of the goods and services in Classes 5 and 35.The opposition is based on International trade mark registration No 1 062 883 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

ALBA BOTANICA
Earlier trade mark	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.

In the present case, the evidence filed by the opponent consists of an extract from a database, namely the eSearch plus database provided by the EUIPO. The Office’s guidelines (Part C: Opposition: Section 1: Procedural Matters) specifically sets out that extracts from databases are only accepted if their origin is an official database. As concerns International Registrations, only extracts from Romarin and TMView are acceptable providing that all the relevant data is contained ((judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994). Further, it is also stated that printouts from eSearch plus for International Registrations designating the EU are not accepted as this approach contravenes Rule 19(2)(a) EUTMIR and there are no exceptions to this rule. Consequently, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark.

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

Martin MITURA

Vanessa PAGE

Lucinda CARNEY

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.