OPPOSITION No B 2 771 270

Finanzauto SA., Avenida de Madrid, 43, 28500 Arganda del Rey, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)

a g a i n s t

Star Micronics CO. LTD., 20-10 Nakayoshida, Suruga-Ku, Shizuoka-shi, Shizuoka  422-8654, Japan (holder), represented by Durán – Corretjer S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative).

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 270 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 international registration designating the European Union No 1 303 100. The opposition is based on Spanish trade mark registration No 3 064 142. The opponent invoked Article 8(1)(b) EUTMR.

	STAR CLOUD
Earlier Spanish trade mark registered for services in Class 42	Contested IR for goods and services in Classes 9 and 42

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 on 15/09/2016, within the substantiation period, consists of an extract from a Spanish Patent and Trade Mark Office (SITADEX) data base regarding national trade mark registration No 3 064 142.

Together with this evidence the opponent filed a document 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 in Rule 98(1) EUTMIR as it is an incomplete translation.

The evidence mentioned above, per se, is not sufficient to substantiate the opponent’s earlier trade mark.

In this context the Opposition Division notes that the document submitted by the opponent does not contain all the relevant data of the print out from the official database, such as translation of the colours claimed of the representation of the trade mark in question and granting date of the resolution (registration date). It also indicates an incorrect number of trade mark registration in question, that is 364 142, instead of correct registration number, 3 064 142 as indicated in the notice of opposition. Hence, said document does not reproduce the structure and contents of the evidence to be translated.

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.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI SERRANO

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.