OPPOSITION No B 2 648 890

Aglukon Spezialdünger GmbH & Co. KG, Heerder Landstr. 199, 40549 Düsseldorf, Germany (opponent), represented by Rafael Freitag, Zur Frankenfurt 111, 60529 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Trade Corporation International S.A., Unipersonal, Alcalá 498, planta 2, 28027 Madrid, Spain (applicant) represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq. 3º Izq., 28020 Madrid, Spain (professional representative).

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 648 890 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 and services of European Union trade mark application No 14 611 206, namely against the goods in Class 1.

The opposition is based on international trade mark registration (IR) No 1 033 537 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

ASCOFOL	ASCOTOP
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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark (EUTM), 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 mark on which the opposition is based.

On 15/02/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Further to an extension, this time limit expired on 29/06/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

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.

Based on the above, the Office informed the opponent on 05/07/2017 that the opposition was to be rejected due to failure to substantiate the earlier mark, the opponent responded on 07/07/2017 and questioned this approach. The opponent argued that the online facilities, namely the e-opposition form, do not differentiate between EUTMs and IRs designating the EU, since in neither case must it be indicated whether ‘evidence’ or ‘translation’ should follow, as is the case for national marks. The opponent therefore submits that this leads to an inference that for such marks, substantiation is not required and as such there is a breach of the law.

The question of the Office’s online platform in this regard has already been tackled by the Boards of Appeal in its decision of 28/06/2017, R 2117/2016-2 and whilst recognising that for national marks, ‘to follow’ and ‘attached’ are options included after the ‘grounds of opposition’, this is not the case for IRs designating the EU. However, the Boards found that this does not constitute ‘a legitimate expectation for the opponent not to have to substantiate its earlier right’. The Board reasoned that further to payment, the opponent is given the possibility to file further facts, evidence and arguments with the notice of opposition. Such materials include evidence to substantiate the earlier mark.

Though it may be that the substantiation of EUTM’s is carried out ex officio with respect to the data contained in the Office’s database, IRs, even those designating the EU, have to be substantiated via furnishing evidence of filing or registration such as certificates, extracts from official databases or official bulletins. Not following this approach would contravene Rule 19(2)(a) EUTMIR and no exceptions to this rule have been provided.

In view of the circumstances set out, 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

Martin MITURA

Vanessa PAGE

Ric WASLEY

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.