OPPOSITION No B 2 636 051

Maria Adelina Nunes & Miranda, Lda, Parque Industrial Silvares, Pinheiro Novo, 4620 – 686 Lousada, Portugal (opponent),

a g a i n s t

Gestión de activos Isorana, S.L., C/ Francisco Afonso Carrillo, N° 2, 38300 La Orotava, Santa Cruz de Tenerife, Spain (applicant), represented by Pons Patentes y Marcas Internaticional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 636 051 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 14 580 765 of the word mark ‘BRUEBECK’ namely all goods in Classes 18 and 24. The opposition is based on Portuguese trade mark registration No 355 307 of the word mark ‘BRUEBECK’ in relation to which the opponent invoked Articles 8(1)(a) and (b) EUTMR and on the Portuguese well-known word mark ‘BRUEBECK’ in relation to which the opponent invoked Article 8(2)(c) in conjunction with Articles 8(1)(a) and (b) EUTMR.

In spite of several absolute admissibility deficiencies, by letter of 25/04/2016 the Office informed the opponent that the opposition against European Union trade mark application No 14 580 765 had been found admissible at least insofar as it is based on the earlier Portuguese trade mark right No 355 307 and that pursuant to Article 58(2) EUTMR this decision may be appealed together with the final decision on the opposition.  

Against this background, the Opposition Division will proceed with the examination of the substantiation of the opposition.

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.

Furthermore, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.

On 25/04/2016 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 07/09/2016.

In the present case the evidence filed by the opponent consists of the following evidence:

• A registration certificate of Portuguese trade mark registration No 355 307   and its English translation.

• A letter dated 18/03/2011 addressed to the legal representation of the Bruebeck Brand coming from the judicial court of Santo Tirso with attached a decision of 17/03/2011 concerning the destruction of evidence. The documents are translated into English.

• A report coming from the Ministry of Justice concerning a search and seizure procedure of 20/04/2016. The document is translated into English.

• An extract from the Entrepreneur’s desk of the Ministry of Justice dated 04/01/2016, showing the Permanent Certificate of the opponent’s firm containing details about its management, legal nature, headquarters, etc. The document is translated into English.  

• An untranslated letter in Portuguese dated 28/09/2015 with the words MarquesMarcas in the header.

• A copy of an identity card.

• An untranslated bank transfer form in Portuguese.  

This evidence is not sufficient to substantiate the opponent’s earlier rights.

The certificate of the Portuguese trade mark registration No 355 307 does not prove the validity of this mark at the time of substantiation.

According to the certificate and its translation, the earlier Portuguese mark was registered on 27/11/2002. Considering that in Portugal trade marks laps ten years after their registration date, the earlier Portuguese mark would laps on 27/11/2012 unless renewed in time. However, the opponent submitted no evidence to prove the fact that the mark was renewed and thus continued to exist, since no renewal certificate or other evidence of its validity at the moment of substantiation of the mark was submitted.

It is also insufficient to prove that the earlier mark ‘BRUEBECK’ is well-known in Portugal in relation to clothing, footwear and headgear, since it makes no mention of the sign ‘BRUEBECK’ apart from the letter of 18/03/2011 which mentions it in the name of the addressee, that is, the legal representative of the Bruebeck Brand. Moreover part of the evidence is dated after the relevant date, that is, the filing date of the contested sign, 22/09/2015.

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

Boyana NAYDENOVA

Adriana VAN ROODEN

Benoit VLEMINCQ

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.