OPPOSITION No B 2 777 061

Gold Drop Sp. z o.o., Rzeczna 11d, 34-600 Limanowa Poland (opponent), represented by Arkadiusz Michalak, Ul. Masarska 9/6, 31-539 Kraków, Poland (professional representative)

a g a i n s t

Reckitt Benckiser Laundry Detergents (No. 1) B.V., Siriusdreef 14, 2132WT Hoofddorp, the Netherlands (applicant), represented by Reckitt Benckiser Corporate Services Limited, Dansom Lane, Hull HU8 7DS, United Kingdom (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 777 061 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 15 663 206 in classes 3 and 5. The opposition is based on Polish trade mark registration No 168 725. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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, 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 opponent filed a certificate of registration of the earlier Polish trade mark on which the opposition is based. According to the certificate the earlier mark was filed on 10/01/2004 and registered on 15/11/2005.

Furthermore, the opponent filed a certificate of renewal of another trade mark, i.e.  international trade mark registration No 905 925, that however was not claimed as basis of the opposition within the opposition period and which therefore is inadmissible. It is noted, that the contested trade mark application was published on 03/08/2016 and the three month opposition period ended therefore on 03/11/2016. The opponent cannot extend the basis of the opposition after the expiry of the opposition period.  

On 07/11/2016 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 12/03/2017.

The opponent did not submit the certificate of renewal of the earlier trade mark on which the opposition is based before the expiry of the time limit for substantiation. If the registration is due to expire before the expiry of the time limit for substantiation, it must file a renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof has been given to it to substantiate its opposition.

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

María Clara IBÁÑEZ FIORILLO

Francesca CANGERI SERRANO

Erkki MÜNTER

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.