OPPOSITION No B 2 614 744

Ecolab USA Inc., 370 Wabasha Street North, St Paul, Minnesota 55102, United States of America (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative)

a g a i n s t

LLC Grinkosmetiks, Leninsky prospekt 4, build 1A, Moscow 119049, Russian Federation (holder), represented by Petersona Patents, 2, Ausekla Street, Suite 2, Riga, 1010, Latvia (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 614 744 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 14 223 127, namely against the goods in Class 3. The opposition is based on international trade mark registrations No 1 180 255 (for the goods and services in Classes 1, 3, 5, 21 and 44), No 1 005 780 (for the goods and services in Classes 1, 3, 5, 21 and 35) and No 1 008 102 (for the goods and services in Classes 1, 3, 5, 21 and 35), all designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

ECOLAB IRs No 1 180 255 and No 1 005 780
IR No 1 008 102
Earlier trade marks	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 evidence submitted by the opponent on 20/11/2015 with the notice of opposition consists of extracts from the eSearch plus database regarding the earlier international trade marks. The opponent did not submit any other evidence concerning the substantiation of its earlier international trade mark registrations within the time limit given by the Office, which expired on 30/03/2016.

The Office’s Guidelines (Part C, Opposition, Section 1, Procedural Matters) specifically set out that extracts from databases are accepted only if their origin is an official database, that is to say, the official database of one of the national offices or WIPO, and if they are equivalent to a certificate of registration or last renewal.

Apart from the clear provisions of the law (Rule 19(2)(a) EUTMIR), the opponent was also informed specifically of the requirements of substantiating the earlier marks by the information sheet attached to the Office’s letter of 25/11/2015. In particular, it was stated in the section ‘Particulars to be proven (What to prove)’ that, for an earlier registration or trade mark (other than a CTM [now EUTM]), all the formal and substantive particulars must be shown. Under point a) ‘the issuing authority’ had to be shown.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks, because the EUIPO is not the issuing authority.

To substantiate an earlier trade mark registration, the opponent must provide the Office with evidence of its registration. The Office accepts the following documents:

• certificates issued by the appropriate official body (WIPO)
• extracts from official databases (ROMARIN, TMview)
• extracts from official bulletins of the relevant office (WIPO publication).

Further, it is also stated that the Office does not accept printouts from eSearch plus (previously CTM-Online) for international registrations with EU designation, since this approach contravenes Rule 19(2)(a) EUTMIR (Guidelines for Examination in the Office, Part C, Opposition, Section 1, Procedural Matters, p. 35ff.). No exception to this rule is provided in Title XIII of the EUTMR. This practice came into force on 01/07/2012 and applies to all oppositions filed as from this date (on or after).

The opponent failed to substantiate the existence, validity and scope of protection of its earlier rights. 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

Martin MITURA

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.