CANCELLATION No 13 305 C (INVALIDITY)

Comercial del Motor, S.A., Polígono Neisa Sur Av. Edison, 12, 28021 Madrid, Spain (applicant), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Finimpianti S.R.L., Via Aldo Moro, 9, 10080 Oglianico, Italy (EUTM proprietor).

On 25/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is rejected in its entirety.

2.        The applicant bears the costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 14 902 472 ‘TARABUSI’, namely goods in Classes 7 and 12. The application is based on international trade mark No 334 852 designating Portugal ‘TARABUSI’, Spanish trade mark registrations No 136 086 and No 2 693 354 ‘TARABUSI’ and No 1 086 057 and No 1 086 058 ‘ORIGINAL AT TARABUSI’. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are identical and the goods protected by the marks are identical or similar.

The EUTM proprietor in reaction to the invalidity request filed a total surrender of the contested mark.

The applicant insists on the proceedings to continue and decision on substance to be taken in order to prevent the contested mark from conversion to Spain and Portugal.

SUBSTANTIATION OF THE EARLIER RIGHTS

According to Article 53(1) EUTMR a European Union trade mark shall be declared invalid on application to the Office when, inter alia, there is an earlier trade mark as referred to in Article 8(2) EUTMR.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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 applicant does not submit appropriate evidence.

According to Rule 37(b)(ii) EUTMIR in order for such an application to be admissible it must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. Pursuant to Rule 37(b)(iv) EUTMIR, an application for cancellation must also contain an indication of the facts, evidence and arguments presented in support of the cancellation grounds.

In the application for cancellation, the applicant indicated some particulars of the earlier rights on which the cancellation application is based. These indications were deemed sufficient for fulfilling admissibility requirements. In the letter of 28/07/2016 by which the Office notified the applicant of the decision on admissibility, the applicant was explicitly informed that ‘the documents and/or translations that you may have submitted so far with a view to completing the admissibility of the application may not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right/s) as a whole. This will be examined when a decision on the substance on the case is taken’.

Although in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, this does not mean that there is no distinction between admissibility and substantiation requirements. Applying by analogy Rule 19(2)(a)(ii) EUTMIR, if the application for invalidity is based on a registered trade mark which is not a European Union trade mark, the applicant must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered.

In the present case, the application is based on an international trade mark designating Portugal and on four Spanish trade marks.

As regards the Spanish marks, the applicant submitted documents that it entitles ‘situation of the Spanish marks’ and that are documents in English containing information about the marks without any indication as to the source of these documents. As regards proof of validity and scope of protection of the earlier marks, the Office can only accept evidence originating from official sources, namely from authorities that registered the marks. In the present case, the source of the information given in the documents is unknown and, therefore, the Cancellation Division cannot consider the existence, validity and scope of protection of the earlier Spanish marks as duly demonstrated. For the sake of completeness, the Cancellation Division notes that these documents cannot be considered to be translations as there are no original documents on file in Spanish or in any other language to which the English documents could be considered translations.

As regards the international trade mark designating Portugal, the applicant submitted an extract from Romarin regarding the mark No 334 852.

Pursuant to Article 56(1)(b) EUTMR, applications for invalidity based on Article 53(1) EUTMR in conjunction with Article 8(1) EUTMR may only be filed by the persons mentioned in Article 41(1) EUTMR, namely by the proprietors of earlier trade marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks.

According to the extract submitted by the applicant, the owner of the international trade mark No 334 852 is not the applicant but the EUTM proprietor. The extract also includes information about partial assignment in 2013 regarding Portugal but no further information is given about this assignment, in particular any information about the new owner of the Portuguese designation is missing. Moreover, according to the extract, the number of the assigned part of the international registration is 334 852A. The applicant did not invoke trade mark No 334 852A but No 334 852. In any case, the applicant did not provide the Cancellation Division with any document that would prove the applicant’s ownership of either the invoked mark No 334 852 or the assigned Portuguese designation No 334 852A, neither did it claim or prove that it was an authorized licensee. Consequently, the applicant failed to prove that it was entitled to file the invalidity request based on the international trade mark registration No 334 852 designating Portugal.

In view of Article 76(1) EUTMR mentioned above, it was up to the applicant to submit evidence proving the existence, validity and scope of protection of the earlier rights and its entitlement to them. Since it failed to do so, the application must be rejected as unfounded in its entirety.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the EUTM proprietor did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore it did not incur representation costs.

The Cancellation Division

María Belén  IBARRA DE DIEGO

Michaela  SIMANDLOVA

Elisa  ZAERA CUADRADO

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.