OPPOSITION No B 2 791 229
Etnia Dreams Sociedad Limitada, Plaza del Ayuntamiento, número 6, piso 8, puerta 15, 46002 Valencia, Spain (opponent), represented by Manuel Juan Mañez, Etnia Dreams Sociedad Limitada, Plaza del Ayuntamiento, número 6, piso 8, puerta 15, 46002 Valencia, Spain (employee representative)
a g a i n s t
Serge Poisson, Rue Constant Legrève 61, 1300 Limal, Belgium (applicant).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 791 229 is rejected as inadmissible.
2. The opposition fee will not be refunded.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 721 301 ‘Etnik’, namely against all the goods and services in Classes 3 and 35. According to the notice of opposition, the opposition is based on European Union trade mark application No 15 721 301 ‘Etnik’. The opponent invoked Article 8(1)(a) EUTMR.
In accordance with Article 41 EUTMR, the notice of opposition has to be received by the Office in written form within the opposition period, namely within three months from the publication of the contested EUTM application.
According to Rule 15(2)(b)(i) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely, where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR or where the opposition is based on Article 8(3) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark.
According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
- Basis of the opposition
According to Article 8(2)(a) EUTMR, earlier trade marks within the meaning of Article 8(1) EUTMR are those trade marks with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks. According to subparagraph (b) of the same Article, ‘earlier trade marks’ can be applications for the trade marks referred to in subparagraph (a), subject to their registration.
On 21/10/2016, the opponent filed a notice of opposition against the contested trade mark application. The opponent indicated that the basis of the opposition is European Union trade mark application No 15 721 301 ‘Etnik’ with the filing date of 03/08/2016.
The basis of the opposition coincides with the contested trade mark application, namely European Union trade mark application No 15 721 301 ‘Etnik’, filed on 03/08/2016.
Consequently, the right on which the opposition is based is not earlier within the meaning of Article 8(2) EUTMR.
- Translation of relevant parts of the notice of opposition
The opponent included some additional data in the notice of opposition. Specifically, in the ‘Explanation of grounds and other remarks’ field, the opponent presented the following information, in Spanish, which is not the language of the proceedings:
ETNIA DREAMS SOCIEDAD LIMITADA TIENE REGISTRADA LA MARCA ETNIA CON NUMERO DE REGISTRO 011017241, REGISTRO QUE SE LLEVÓ A CABO EL DÍA 27/3/2013, PUBLICADA EN EL BOLETÍN DE MARCAS COMUNITARIAS Nº 2013/062 EL 02/04/2013.
Furthermore, on the same day on which the notice of opposition was filed, the opponent submitted a letter in Spanish.
The abovementioned section of the notice of opposition and the accompanying letter may contain relevant information for the completion of the opponent’s claims. However, they were not submitted in the language of proceedings which according to the opponent’s choice indicated in the notice of opposition is English. In that respect, the following provisions apply:
According to Article 119(5) EUTMR, the notice of opposition shall be filed in one of the languages of the Office.
According to Article 119(6) EUTMR, if the language chosen for the notice of opposition is neither the language of the application for a trade mark nor the second language indicated when the application was filed, the opposing party shall be required to produce at his own expense a translation either into the language of application for the trade mark, provided that it is a language of the Office, or into the second language indicated when the application was filed.
According to Rule 16(1) EUTMIR, the time limit referred to in Article 119(6) EUTMR within which the opposing party has to file a translation of his opposition shall be one month from the expiry of the opposition period.
According to Rule 17(3) EUTMIR, where the opposing party does not submit a translation as required under Rule 16(1) EUTMIR, the opposition shall be rejected as inadmissible. Where the opposing party submits an incomplete translation, the part of the notice of opposition that has not been translated shall not be taken into account in the examination of admissibility.
In the present case, the first and second languages of the application are French and English. It follows that the notice of opposition should have been filed in either French or English.
Therefore, the opponent was required to produce, at its own expense and initiative, a translation of the part of the notice of opposition that was filed in Spanish. The translation had to be produced within one month from the expiry of the three-month opposition period. The opposition period ended on 12/11/2016 and, therefore, the time limit for filing a translation of the opposition expired on 12/12/2016.
The opponent failed to file a translation of the relevant parts of the notice of opposition and of the letter submitted together with the notice of opposition within the time limit. Therefore, the untranslated information cannot be taken into account.
By notification of 25/11/2016, the Office informed the opponent of the deficiencies identified in the examination of the notice of opposition. The opponent was set a time limit of two months, until 06/02/2017, to submit any comments on the matter.
The opponent did reply within the prescribed time limit. By letter that was received at the Office on 24/01/2017, the opponent argues that the opposition was filed using the predetermined form provided on the Office’s website. The opponent explains that, although in the notice of opposition Article 8(1)(a) EUTMR was indicated as the ground for the opposition, on the same day the opponent submitted a letter indicating that it invokes Article 8(1)(b) EUTMR. The opponent emphasises that the entire notice of opposition was completed in English, except for one section, ‘Explanation of grounds and other remarks’. The opponent points out that the form available on the Office’s website is in Spanish and that throughout the entire electronic processing it was translated into English, with the exception of that one section. The opponent is of the opinion that the finding of the opposition inadmissible without prior requesting of a correction is contrary to the law.
The opponent notes that its trade mark ‘Etnia’ for goods and services in Classes 3 and 35 is clearly identified as basis of the opposition in the notice of opposition, and submits the registration number and other particulars of the supposed earlier mark (EUTM No 11 017 241 ‘ETNIA’).
The opponent argues that this situation has caused disproportionate damages, particularly because the opponent has duly undergone the procedure to become a proprietor of a European Union trade mark, that the applicant has chosen French as the first language of the contested application, that the Office does not perform ex officio examination of relative grounds for refusal of trade mark applications, and that the Office neither informs nor gives a time limit for remedying formal deficiencies prior to the finding of the opposition inadmissible.
The opponent refers to the provisions set out in Rule 96(2) EUTMIR which establishes that unless otherwise provided for, documents to be used in proceedings before the Office may be filed in any official language of the Union. The opponent claims that the Office should at least have requested to correct the only section of the notice of opposition that was in Spanish.
As the last point, the opponent invokes Article 41 of the Charter of Fundamental Rights of the European Union setting out a fundamental principle in European Union law which is the right of citizens to good administration.
After giving due consideration to the opponent’s arguments, the Opposition Division maintains that the untranslated information cannot be taken into account.
The entirety of the submissions filed within the opposition period does not contain a clear indication of an earlier mark that would fulfil the requirements of Article 8(2) EUTMR and Rule 15(2)(b) EUTMIR. The fact that the explanation of grounds, submitted in Spanish, includes, inter alia, a reference to a number and a word which may be interpreted as the denomination of a trade mark does not allow for a clear identification of the earlier right as the other requisite identifications are missing in the language of proceedings (i.e. the indication whether the earlier mark is registered or an application for registration, the indication of the Member State including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark).
Although the opponent’s submissions of 24/01/2017 contain indications as to the supposed earlier mark on which the opposition should be based, they do not remedy the deficiencies identified in the opponent’s submissions filed during the three-month non-extendable opposition period. They do not constitute a translation of the relevant parts of the notice of opposition either, due to the fact that they were received by the Office after the expiry of the one-month time limit which was applicable in accordance with Article 119(6) EUTMR and Rule 16(1) EUTMIR.
As regards the opponent’s argument that the Office neither informed of the deficiencies, nor requested a translation of the relevant parts of the opposition notice before establishing that the opposition is inadmissible, it is recalled that a clear identification of the basis of opposition is an absolute admissibility requirement that must be present in the notice of opposition or submitted by the opponent on its own initiative within the opposition period, as laid down in Rule 15(1) and Rule 15(2)(b) EUTMIR.
It is important to note that in order to safeguard the principle of impartiality the Office does not send any communication concerning admissibility deficiencies during the opposition period.
The rest of the opponent’s arguments are incapable of altering the Office findings either.
The mere fact that the Office’s website offers official forms in the five languages of the Office does not discharge the opponent from complying with the language requirements laid down in Article 119(6) EUTMR.
As regards the opponent’s arguments that it has duly registered a European Union trade mark and that it cannot fully exercise its rights because of the disproportionate requirements imposed by the Office, and the fact that the Office does not carry out ex officio examination of relative grounds of refusal of trade marks, the Opposition Division notes that the role of the Office is to apply in practice the legislative acts and norms devised by the competent bodies of the EU.
The opponent argues that it has obtained a single EUTM registration implying that the Office could have deduced the earlier mark on which the opposition was supposedly based.
The Opposition Division notes that, for the purposes of assessing the admissibility of the opposition the Office must base itself solely on the claims contained in the documents submitted by the opponent within the opposition period (21/07/2014, R 1573/2013-4 – ‘OKAY’/‘O-Key’). In inter partes proceedings the Office does not undertake an ex officio investigation in order to construe a case for one of the parties. According to Article 76(1) EUTMR, 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.
The Opposition Division acknowledges the opponent’s arguments in relation to its expectations to receive fair treatment and its rights to good administration. However, those general principles have to be viewed and applied in the context of the specific laws and norms governing opposition proceedings.
Therefore, the opponent’s arguments are dismissed.
The Opposition Division concludes that since the trade mark on which the opposition is based according to the notice of opposition is not earlier within the meaning of Article 8(2) EUTMR, and as the opponent failed to submit, with the time limit, a translation of the relevant parts of the notice of opposition, the opposition must be rejected as inadmissible pursuant to Rule 17(2) and (3) EUTMIR.
Please note that the opposition fee will not be refunded. In accordance with Rule 18(5) EUTMIR, the Office only refunds the opposition fee in view of a withdrawal and/or restriction of the trade mark during the cooling-off period.
The Opposition Division
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.