OPPOSITION No B 2 364 605

Schneider (Société par Actions Simplifiée), 10, rue de l'Energie, 67720 Hoerdt, France (opponent), represented by Cabinet Nuss, 10, rue Jacques Kablé,  67080 Strasbourg Cédex, France (professional representative)

a g a i n s t

Baltic Wild, "Pupoli"-17, Slampes pag., Tukuma nov., Slampe, 3119 Latvia  (applicant), represented by Rūta Olmane, P.O. Box 49, Riga, 1006 Latvia (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 364 605 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 481 222, namely against some of the goods in Class 29.  The opposition is based on French trade mark registrations No 1 279 602 and No 93 462 326. The opponent invoked Article 8(1)(a) and (b) EUTMR.

Earlier mark 1: French Reg. No 1 279 602 Earlier mark 2: French Reg. No 93 462 326
Earlier trade marks	Contested sign

SUBSTANTIATION

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 opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall 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 shall 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 last renewal of the earlier trade marks on which the opposition is based. On 25/06/2014 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 06/11/2014. Within this time limit, the opponent submitted the here below listed evidence but however did not submit sufficient evidence concerning the renewals of the earlier trade marks.

In the present case the evidence filed by the opponent by fax on 05/06/2014 (with a confirmation copy by post received by the Office on 10/06/2014) as regards earlier mark 1 (French trade mark registration No 1 279 602) comprises the following:

• A copy of the certificate, issued by the French trade mark office, of the application for trade mark registration filed on 19/07/1984 and its English translation;

• A copy of the confirmation of recordal of the change of legal form and change of address of the owner, filed on 22/02/1993 with the French trade mark office, and its corresponding English translation;

• A copy of the confirmation of recordal of the correction of clerical error in the name of the owner, filed on 23/02/1993 with the French trade mark office, and its corresponding English translation;

• A copy of the (first) renewal certificate, the request for which was filed on 30/03/1993 with the French trade mark office, and its corresponding English translation;

• A copy of the (second) renewal certificate issued by the French trade mark office on 04/03/2003, and its corresponding English translation.  

However, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark 1 because the most recent (third) renewal certificate showing the validity of the earlier mark (due to renewal by 19/7/2014) beyond the time limit that was given to the opponent to substantiate its opposition (i.e. 06/11/2014), was not provided for by the opponent.

Since there is no proper evidence of renewal, the earlier trade mark registration 1 is not substantiated and will not be taken into account. The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The evidence filed by the opponent as regards earlier mark 2 (French trade mark registration No 93 462 326) comprises the following:

• A copy of the trade mark registration certificate issued by the French trade mark office, of the application filed on 30/03/1993 and its English translation;

• A copy of the (first) renewal certificate issued by the French trade mark office on 04/03/2003, and its corresponding English translation;  

• A copy of the request for recordal of a total transfer of ownership to the opponent, filed with the French trade mark office on 01/04/2010, and its corresponding English translation;

• A copy of the request for recordal of a change of name and legal form of the owner, filed with the French trade mark office on 01/04/2010, and its corresponding English translation;  

The evidence mentioned above is not sufficient to substantiate this opponent’s earlier trade mark 2, because the most recent (second) renewal certificate showing the validity of this earlier mark (due to renewal by 30/03/2013) beyond the time limit that was given to the opponent to substantiate its opposition (i.e. 06/11/2014), was not provided for by the opponent.

Since there is no proper evidence of renewal, earlier trade mark 2 is not substantiated and can neither be taken into account.

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 marks or earlier rights, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

In light of the foregoing, the opposition must therefore be rejected in its entirety 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

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.