OPPOSITION No B 2 750 548
Chaim Pereg, 4 Sderot Yitzhak Rabin, ap. 47 Be’er Ya’akov, Israel (opponent), represented by Wegnerpartner, Georgenstr. 24, 10117 Berlin, Germany (professional representative)
a g a i n s t
Flowene OÜ, Pilvetee tn 6, 12618 Tallinn, Estonia (applicant), represented by Patendibüroo Käosaar Oü, Tähe 94, 50107 Tartu, Estonia, (professional representative).
On 10/02/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 750 548 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 15 152 507, namely against all the goods in Class 32. The opposition is based on international trade mark registration No 1 286 525, designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.
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Earlier trade mark |
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.
It is reminded that Rule 19(2)(a) EUTMIR specifically only exempts European Union trade marks from the obligation to submit evidence of registration. An analogy cannot be drawn with international trade marks designating the European Union because the registration authority for international trade marks is the World Intellectual Property Organization, which is thus the original source of information about the existence, validity and scope of protection of international trade marks. International trade mark registrations are not in the register of EU trade marks kept by the EUIPO according to Article 87 EUTMR.
This approach was confirmed by the General Court when it held that since EUIPO is not responsible for managing international registrations and is not the administration by which the international trade mark was registered, for the purposes of Rule 19(2)(a)(ii) EUTMIR, an extract from the EUIPO database regarding an international trade mark designating the EU does not constitute proof of the existence, validity and scope of protection of the international trade mark (see judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28).
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 24/08/2016 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 29/12/2016.
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 shall 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
| Zuzanna STOJKOWICZ | José Antonio GARRIDO OTAOLA | Michaela SIMANDLOVA |
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.