OPPOSITION No B 2 423 443

E-Plus Mobilfunk GmbH, E-Plus-Str. 1, 40472 Düsseldorf, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Fanmode Labs International Limited, Unit 5, 2nd Floor, the Courtyard, Carmanhall Road, Sandyford Industrial Estate, Dublin 18, Ireland (applicant).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 423 443 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 13 000 252, namely against all the goods and services in Classes 9, 38 and 41. The opposition is based on German trade mark registrations No 30 658 294 and 30 647 552. The opponent invoked Article 8(1)(b) EUTMR.

vybe German trade mark registration No 30 658 294	VIBECAST
vybemobile German trade mark registration No 30 647 552
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 14/10/2014 (i.e. along with the notice of opposition), the opponent submitted the evidence in relation to the earlier marks on which the opposition is based. The evidence consists of extracts from the German trade mark database.

According to the evidence, the ‘date of expiry of term of protection’ in relation to German trade mark No 30 658 294 is 30/09/2016, and in relation to German trade mark No 30 647 552 it is 31/08/2016.

On 23/10/2014, the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate the earlier rights and submit further material. At the request of both parties, the cooling-off period was extended. Accordingly, on 07/01/2015, the Office informed the parties that the new time limit for the opponent to substantiate its claims was until 28/12/2016. The Office reminded to the opponent that the evidence to substantiate the earlier marks must show that the term of protection extended beyond the time limit to complete the opposition (Rule 19(1), (2)(a)(ii) CTMR).

On 12/12/2016, within the abovementioned time limit, the opponent submitted some observations in support of the opposition. These submissions did not contain any further evidence in relation to the earlier rights mentioned previously.

By letters of 05/04/2017, the Office informed the parties that, since the opponent did not substantiate the earlier rights claimed as basis of the opposition, the adversarial part of the proceedings was closed.

On 07/04/2017, the opponent communicated to the Office that its observations were submitted in a timely manner, attaching copies of the said documents and a fax report only.

The evidence submitted by the opponent is not sufficient to substantiate the opponent’s earlier rights, given that the term of protection of the two earlier German trade mark registrations expired before the end of the substantiation period and there is no evidence of renewal. The opponent should have submitted renewal certificates in order to prove that the term of protection of the earlier trade marks extended beyond the time limit for substantiation.

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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.

The Opposition Division

Solveiga BIEZA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.