OPPOSITION No B 2 827 171

Jeffrey Joshua Lawrence, The Manor Mousecroft Grange, Mousecroft Lane, Shrewsbury, Shropshire SY3 9DU, United Kingdom (opponent), represented by Angela Woolford, The Manor, Mousecroft Grange, Mousecroft Lane, Shrewsbury, Shropshire SY3 9DU, United Kingdom (employee representative)

a g a i n s t

Tigerlemon Produce SL, Calle Molinell 25 1º, 46010 Valencia, Spain (applicant).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 827 171 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods in Class 33 of European Union trade mark application No 15 986 631 .The opposition is based on the following earlier rights:

1. International trade mark registration No 1 287 051 designating the European Union for the mark ‘Tiger Gin’.

2. United Kingdom trade mark registration No 3 035 040 for the mark ‘Tiger Gin’.

3. United Kingdom trade mark registration No 3 140 526 for the mark ‘Tiger Spirits’.

4. United Kingdom trade mark registration No 3 141 544 for the mark ‘Blind Tiger’.

5. United Kingdom trade mark registration No 3 174 628 for the mark ‘Tiger Vodka’.

The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.

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.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 13/02/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 25/06/2017.

Apart from the clear provisions of the law (Rule 19(2)(a) EUTMIR), the opponent was  also specifically warned of the requirements of substantiating the earlier marks by the information sheet attached to the Office’s letter of 13/02/2017. In particular, it was stated that ‘all the information you need on how to substantiate your earlier rights can be found in the EUIPO Guidelines, available on our website. The Guidelines are the main point of reference for users of the European Union trade mark system, and they give the latest information on the EUIPO’s practice. To find more details about how to substantiate your earlier rights, please refer to the Guidelines (Part C, Opposition, Section 1, Procedural Matters) via the following link:

https://euipo.europa.eu/ohimportal/en/trade-mark-guidelines’.

On 30/05/2017, within the time limit set by the Office, the opponent submitted an extract from the UK Intellectual Property Office showing trade mark search results. This extract shows, as regards the invoked marks, the following information:

However, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks No 1 287 051 and No 3 035 040, because it does not contain all the necessary elements i.e., the list of goods and services for which they are registered, the date of registration or the name of the proprietor of those marks.

On 21/07/2017, the opponent requested an extension of the time limit, which was rejected by the Office. It also submitted a picture of a screen containing results of a search in the TM View database containing the words ‘Tiger Gin’ which retrieved results about two of the earlier marks invoked, namely No 1 287 051 and No 3 035 040. Moreover, an extract from WIPO-ROMARIN dated 21/07/2017 showing the registrations details of the earlier international trade mark registration No 1 287 051 was filed on the same day. However, these documents were submitted beyond the time limit set by the Office to substantiate its earlier marks.

Concerning earlier marks No 1 287 051 and No 3 035 040, 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.

As regards the remaining earlier marks, the opponent did not submit any evidence concerning the substantiation of those earlier trade marks.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Michaela SIMANDLOVA

Carmen SÁNCHEZ PALOMARES

Zuzanna STOJKOWICZ

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.