OPPOSITION No B 2 320 060
Société Les Couscousseries du Sud CDS, Zone Industrielle Poudrière, 1, Sfax, Tunisia (opponent), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Alhoceima Import Export B.V., Jan van Galenstraat 4, 1051 KM Amsterdam, The Netherlands (applicant), represented by Landmark B.V., Drentsestraat 4, 3812 EH Amersfoort, The Netherlands (professional representative).
On 13/03/2017, the Opposition Division takes the following
1. Opposition No B 2 320 060 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 11 913 829 , namely against some of the goods in Class 30. The opposition is based on the following earlier rights:
- Spanish trade mark registration No 2 103 171
- Benelux trade mark registration No 631 962
- French trade mark registration No 97 675 121
- German trade mark registration No 39 756 478
The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition shall be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely, Spanish trade mark registration No 2 103 171, Benelux trade mark registration No 631 962, French trade mark registration No 97 675 121 and German trade mark registration No 39 756 478.
The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
On 16/09/2016, the opponent was given two months to file the requested proof of use which expired on 16/11/2016.
Apart from the clear provisions of the law (Article 42(2) and (3) EUTMR), the opponent was also specifically warned of the consequences of the absence of the evidence of use of the earlier marks by the Office’s letter of 16/09/2016. In particular, it was stated that the opposition will be rejected for any goods/services for which proof of use is not provided.
The opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
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
Carmen SANCHEZ PALOMARES
Ana MUÑIZ RODRÍGUEZ
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.