OPPOSITION DIVISION
OPPOSITION No B 2 690 595
Stone Fashion Group B.V., Tokyostraat 7-11, 1175 RB Lijnden, Netherlands
(opponent), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX
Weesp, Netherlands (professional representative)
a g a i n s t
Ralf Schellenberger, Bayernstr. 6, 63939 Wörth, Germany (applicant), represented
by Kohler Schmid Möbus Patentanwälte Partg mbB, Kaiserstr. 85, 72764
Reutlingen, Germany (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 690 595 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 14 944 607, namely against all the goods in
Classes 18 and 25. The opposition is based on Benelux trade mark application
No 1 322 190, , Benelux trade mark application No 1 322 191,
and Benelux trade mark application No 1 322 192, . The opponent
invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 690 595 page: 2 of 3
SUBSTANTIATION
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(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 submitted 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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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 (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence 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 trade mark that is not yet registered, the
opposing party must submit a copy of the relevant filing certificate or an equivalent
document emanating from the administration with which the trade mark application
was filed (except in the case of a European Union trade mark application) –
Rule 19(2)(a)(i) EUTMIR in the version in force at the time of commencement of the
adversarial part).
In the present case, the opponent did not provide any evidence of the earlier trade
mark applications, on which the opposition is based, being registered within the time
limit given by the Office.
On 13/02/2017 the opponent was given two months (after opting out from an
extension of the cooling-off period), commencing after the ending of the cooling-off
period, to submit the abovementioned material. This time limit expired on 04/05/2017.
On 03/05/2016 the opponent submitted extracts from the Benelux national office of
the three earlier marks on which the opposition was based. The extracts showed that
the marks were pending registrations.
On 08/11/2017, the Office requested the opponent an update on the status of the
earlier trade marks. The opponent submitted the required evidence on the following
day, namely on 09/11/2017. The updated extracts show that the three earlier rights
were all registered in the Benelux on 20/10/2016. Therefore, they were registered
within the period the opponent was given to substantiate its earlier rights, namely
until 04/05/2017. Consequently, this late evidence cannot be taken into account by
the Opposition Division to prove the existence, validity and scope of protection of the
earlier rights.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
Decision on Opposition No B 2 690 595 page: 3 of 3
adversarial part), 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 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.
The Opposition Division
Sandra IBAÑEZ Christian RUUD Begoña URIARTE
VALIENTE
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.