OPPOSITION DIVISION
OPPOSITION No B 2 769 803
Infiauto, S.A., Calle Josep Irla I Bosch, 1-3, 08034 Barcelona, Spain (opponent),
represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120,
08008 Barcelona, Spain (professional representative)
a g a i n s t
Ålö AB, Brännland 300, 901 37 Umeå, Sweden (applicant), represented by Zacco
Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional
representative).
On 17/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 769 803 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 15 489 131, for the figurative mark , namely against all
the goods in Classes 7 and 12. The opposition is based on European Union trade
mark registration No 5 424 163 for the figurative mark and on Spanish
trade mark registration No 2 048 183 for the figurative mark
Decision on Opposition No B 2 769 803 page: 2 of 3
. 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
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 the trade marks on
which the opposition is based, namely on European Union trade mark registration No
5 424 163 and on Spanish trade mark registration No 2 048 183.
The request was filed in due time and is admissible given that the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
Indeed, the contested application was filed on 30/05/2016. The earlier European
Union trade mark registration No 5 424 163 was registered on 05/06/2010. For
Spanish trade mark registrations the relevant date for calculating the five-year grace
period is the date of publication of the registration, which, in case of the earlier
Spanish trade mark No 2 048 183, is 01/02/1998.
On 11/04/2017 the opponent was given two months to file the requested proof of use.
After an extension of the period for the opponent to reply to the observations of the
applicant and submit the requested proof of use, this time limit expired on
16/08/2017.
The opponent did not submit any evidence concerning the use of the earlier trade
marks 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.
The opposition must therefore be rejected pursuant to Article 47(2) EUTMR in
conjunction with Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use) as regards the earlier EUTM and pursuant to Article 47(2)
and (3) EUTMR and Rule 22(2) EUTMIR (in the version in force at the time of filing
the request for proof of use) as regards the earlier Spanish mark.
Decision on Opposition No B 2 769 803 page: 3 of 3
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
Jakub MROZOWSKI Elena NICOLÁS GÓMEZ 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.