OPPOSITION No B 2 612 326

Distribuidora Latinoandina S.L., Av. Manoteras 38, Bloque B, Of. 408, 28050 Madrid, Spain (opponent), represented by Marks & US, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Manfred Görg, Wiesenstraße 22, 56412 Niederelbert, Germany (applicant), represented by Zirngibl Rechtsanwälte Partnerschaft mbB, Brienner Str. 9, 80333 München, Germany (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        The decision taken by the Opposition Division on 15/02/2017 on opposition No 2 612 326 is hereby revoked and replaced by the present decision.

2.        Opposition No B 2 612 326 is rejected in its entirety.

3.        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 14 419 808 for the word mark ‘COCO KING’, namely against all the goods in Classes 29, 30 and 31. The opposition is based on Spanish trade mark registration No 3 100 172 for the figurative mark ‘’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DECISION ON REVOCATION – Article 80 EUTMR

According to Article 80 EUTMR:

‘1. Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party.

2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. Cancellation or revocation shall be determined within six months from the date on which the entry was made in the Register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the EU trade mark in question that are entered in the Register.

3. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility, under the procedures and conditions laid down by the Implementing Regulation, of correcting any linguistic errors or errors of transcription and obvious errors in the Office's decisions or errors attributable to the Office in registering the trade mark or in publishing its registration.’

 

On 02/03/2017 the applicant informed the Office that the proceedings that led to the decision of 15/02/2017 contained an obvious procedural error attributable to the Office, namely that it had overlooked the fact that the opposition should have had been considered not substantiated.

The official extract submitted by the opponent in support of the earlier Spanish trade mark is not fully in the language of the proceedings (English) to the extent that the colour claim indication (provided in Spanish) has not been translated.

On 03/04/2017 the Office informed the parties of its intention to revoke the decision dated 15/02/2017 and gave them one month to submit observations.

The opponent replied to the Office on 04/04/2017 arguing that the revocation is unfounded because the application for trade mark No 14 419 808, against which the opposition has been filed, is a word mark.

Consequently, according to the opponent, the colour claimed for the earlier mark is irrelevant.

The applicant submitted its observations on 03/05/2017, claiming that the opposition should be rejected as unfounded because the documents submitted by the opponent did not meet the formal requirements which need to be fulfilled regardless of the type of the contested sign.

According to the applicant the figurative element of the earlier mark cannot be disregarded as all the relevant factors need to be assessed, including the similarity of signs and the degree of distinctiveness of the earlier mark. In view of this, all information, including the colours claimed, shall be translated into the language of proceedings.

REASONS

Contrary to what the opponent claims, the indication of the colours claimed for the earlier mark is essential in order to assess the scope of protection of the earlier mark on which the opposition proceedings under Article 8(1)(b) EUTMR are based. This is because the assessment of a likelihood of confusion depends on the appreciation of several factors, including the similarity of signs and distinctiveness of the earlier mark.

All the elements of the marks, including colours, are taken into account in the comparison of signs for the purposes of establishing whether they are similar.

Furthermore, the colours or their combination, together with other elements, may contribute to a greater or lesser extent to establish the degree of distinctiveness necessary for the purposes of assessing whether there is a likelihood of confusion. This is particularly true for the trade marks composed of verbal elements which are non-distinctive for given goods or services.

Therefore, even if the extract from TMview may prove that the Spanish mark at issue is registered and valid, the fact remains that the doubts caused by the absence of translation of the colour claims cannot be dispelled.

In addition, it is indicated in the notice of opposition that the earlier mark is a word mark, while the representation of the mark in the submitted extract shows a figurative sign. Therefore, there is a contradiction between the representation of the sign as registered and the one claimed in the notice of opposition.

Rule 17(3) CTMIR (currently Rule 17(3) EUTMR) to which the opponent refers, concerns the translation of the opposition notice and not the translation of the evidence of trade mark registration which is governed by Rules 19(3) and (4), 20(1) and 98(1) EUTMIR. According to these provisions, the submissions, documents, or parts thereof, that have not been translated into the language of the proceedings, within the time limit specified for submitting the originals, are not taken into account. However, if documents proving the existence, validity and scope of protection of the earlier right have not been translated, the opposition must be refused as unfounded straight away.

Consequently, the decision adopted by the Opposition Division on 15/02/2017 is hereby revoked and is replaced by the present decision.

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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case the evidence filed by the opponent is not in the language of the proceedings.

On 20/11/2015, together with the notice of opposition, the opponent filed an extract from TMview in the language of the proceedings containing data concerning the trade mark on which the opposition is based. However, such document does not meet the requirements set forth in Rule 98(1) EUTMIR.

The entire original document is in the language of the proceedings (English) except for the list of goods which have been translated separately in the documents attached to the notice of opposition.

However, apart from the list of goods, some other information has not been translated into the language of the proceedings, namely the colours claimed.

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.

In addition, there is a contradiction between the representation of the earlier mark as registered, which appears as a figurative mark in the TMview extract, and the one in the notice of opposition, indicated as a word mark ‘COCO KING’.

It follows that the evidence filed by the opponent cannot be taken into account.

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

Katarzyna ZANIECKA

Justyna GBYL

Begoña URIARTE VALIENTE

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.