OPPOSITION No B 2 778 226

EKP GmbH, Ebersbergstraße 2, 97422 Schweinfurt, Germany (opponent), represented by Schiedermair Rechtsanwälte Partnerschaftsgesellschaft von Rechtsanwälten und Steuerberatern mbB, Eschersheimer Landstr. 60, 60322 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Euskadiko Kirol Portua S.A., C/Adriano VI, Nº20, 1º, 01008 Vitoria-Gasteiz, Spain (applicant), represented by Consultores Urizar & CIA., Gordóniz, 22 – 5º, 48012 Bilbao (Vizcaya), Spain (professional representative)

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 778 226 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 services of European Union trade mark application No 15 424 468, namely against all the services in Classes 35 and 41. The opposition is based on German trade mark registrations No 302 013 039 503 and No 302 013 039 504. The opponent invoked Article 8(1)(a) and (b) EUTMR.

EKP No 302 013 039 503 No 302 013 039 504
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 notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 14/11/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the above-mentioned material. This time limit expired on 19/03/2017.

The opponent did not submit any evidence concerning the existence, validity and scope of protection of the earlier trade marks.

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.

In view of this, on 23/03/2017, the Office notified the parties that the earlier rights on which the opposition is based had not been substantiated and that the Office would rule on the opposition on the basis of the evidence before it.

In reply to this notification, on 28/03/2017, the opponent submitted a letter to the Office with extracts of the earlier marks from the German Patent and Trade Mark Office (DPMA) in German and indicated that it had also submitted details of both trade marks in its previous submission to the Office on 29/09/2016.

However, the opponent’s submission of 29/09/2016 only contained the opponent’s statement of grounds in support of the opposition but no evidence of the existence, validity and scope of protection of the earlier trade marks.

Furthermore, in relation to the evidence as regards the earlier trade marks submitted for the first time by the opponent on 28/03/2017, according to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. Since the opponent’s time limit to substantiate the earlier marks expired on 19/03/2017, the documents filed by the opponent on 28/03/2017, after the expiry of the time limit, cannot be taken into account.

Therefore, in accordance with Rule 20(1) EUTMIR, the opposition must 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

Milda CERNIAUSKAITE

Sam GYLLING

Begoña URIARTE VALIENTE

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.