OPPOSITION No B 2 490 509

Rába Járműipari Holding Nyrt., Martin u. 1, 9027 Győr, Hungary (opponent), represented by ABK – Dr. Krajnyák & Partner Law and Patent Office, Logodi u. 5-7, 1012 Budapest, Hungary (professional representative)

a g a i n s t

Yamaha Hatsudoki Kabushiki Kaisha, 2500 Shingai, Iwata-shi, Shizuoka-ken 438-8501, Japan (applicant), represented by Maucher Jenkins, 26 Caxton Street, London  SW1H 0RJ, United Kingdom (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 490 509 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 445 549, namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 7 089 378, covering goods in Class 12. The opponent invoked Article 8(1)(b) EUTMR.

Rába MAXS	RMAX
Earlier trade mark	Contested sign

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 the present case the notice of opposition was filed in the name of the company ‘Rába Járműipari Holding Nyrt.’, however the owner of European Union trade mark registration No 7 089 378 on which opposition is based is ‘Rába Futómű Kft’.

According to Article 41(1)(a) EUTMR, notices of opposition to the registration of a European Union trade mark may be given by the proprietors of earlier marks referred to in Article 8(2) EUTMR, as well as licensees authorised by the proprietors of those trade marks, in respect of Articles 8(1) and 8(5) EUTMR. Therefore, the opponent must be either the proprietor of the earlier mark, or a licensee duly authorised by the trade mark proprietor to file the opposition.

On 01/07/2015, at the request of both parties, the cooling-off period, before the start of the adversarial part of the opposition proceedings, has been extended by 22 months. The opponent was informed that the cooling-off period would expire on 03/05/2017 and it was given two months, commencing after the ending of this period, to provide any further facts, evidence or arguments which it considers necessary to support the opposition. This time limit expired on 03/07/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark. Thus, the opponent did not provide any evidence of a transfer of proprietorship of the earlier European Union trade mark to its name, nor did it file any documents to demonstrate that it had been authorised by the trade mark owner to file an opposition in its capacity as licensee.

It follows that the opponent failed to demonstrate its entitlement to file the opposition based on earlier European Union trade mark registration No 7 089 378.

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.

The Opposition Division

Janja FELC

Rasa BARAKAUSKIENE

Judit NÉMETH

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.