OPPOSITION DIVISION
OPPOSITION No B 2 769 308
Luna International Limited, Prince Albert House, 2 Kingsmill Terrace, London NW8
6AA, United Kingdom (opponent), represented by Marshall Law, Vineyard Cottage,
St Julians, Sevenoaks, Kent TN15 0RX, United Kingdom (professional
representative)
a g a i n s t
Rubis SAS, 7 square Lamartine, 75116 Paris, France (applicant), represented by
Brandstock Legal Rechtsanwaltsgesellschaft MBH, Rückertstr. 1, 80336
München, Germany (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 769 308 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 436 066 for the figurative sign , namely against
all the goods in Class 32. The opposition is based on European Union trade mark
registration No 3 540 846 for the figurative mark . The opponent
invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
Decision on Opposition No B 2 769 308 page: 2 of 3
filing or, where applicable, the date of priority of the contested trade mark, the earlier
trade mark has been put to genuine use in the territories in which it is protected in
connection with the goods or services for which it is registered and which the
opponent cites as justification for its opposition, or that there are proper reasons for
non-use. The earlier mark is subject to the use obligation if, at that date, it has been
registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of European Union
trade mark registration No 3 540 846 on which the opposition is based.
The request was filed in due time and is admissible given that the earlier trade mark
was registered more than five years prior to the relevant date mentioned above.
On 16/06/2017 the opponent was given two months to file the requested proof of use.
The opponent did not submit any evidence concerning the use of the earlier trade
mark on which the opposition is based. It did not argue that there were proper
reasons for non-use either.
According to Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use), if the opposing party does not provide such proof before the
time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
use).
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 769 308 page: 3 of 3
The Opposition Division
Boyana NAYDENOVA Frédérique SULPICE Cindy BAREL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.