OPPOSITION DIVISION
OPPOSITION No B 2 497 876
Petróleos de Portugal-Petrogal, S.A., Rua Tomás da Fonseca, Torre C, Edifício
GALP, 1600-209 Lisboa, Portugal (opponent), represented by C/M/S Rui Pena,
Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal
(professional representative)
a g a i n s t
Public Joint Stock Company Gazprom Neft, Galernaya street, 5, lit A, St.
Petersburg 190000, Russian Federation (holder), represented by TBK, Bavariaring
4-6, 80336 München, Germany (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 497 876 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 international registration
designating the European Union No 11 051 437 for the figurative mark
, namely against all the goods in Classes 1 and 4. The opposition is
based on Portuguese trade mark registration No 420 331 for the figurative mark
. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now 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 publication 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
Decision on Opposition No B 2 497 876 page: 2 of 3
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.
For international registrations designating the European Union, the ‘date of
publication’ of the contested mark within the meaning of Article 42(2) EUTMR (in the
version in force at the time of filing of the opposition, now Article 47(2) EUTMR), that
is to say for the purposes of establishing the five-year period of use obligation for the
earlier mark, is considered to be six months after the first republication of the
international registration, which corresponds to the beginning of the opposition period
(Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at
the time of filing of the opposition, now Article 196 EUTMR in conjunction with
Article 190 EUTMR). The earlier mark is subject to the use obligation if, at that date, it
has been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely Portuguese trade mark No 420 331.
The request was filed in due time and is admissible as the earlier trade mark was
registered more than five years prior to the relevant date (first republication of the
contested IR + 6 months i.e. 20/12/2014).
On 09/03/2016 the opponent was given two months to file the requested proof of use.
After an extension of the period for the opponent to submit observations in reply and
evidence as proof of use, and following a suspension of the proceedings, this time
limit expired on 04/09/2017.
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 holder 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
holder are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
Decision on Opposition No B 2 497 876 page: 3 of 3
The Opposition Division
Elena NICOLÁS GÓMEZ Riccardo RAPONI Lucinda CARNEY
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.