OPPOSITION No B 2 330 218
Fashion One Television LLC, 246 West Broadway, New York, New York 10013, United States of America (opponent), represented by Richard Kummer, Bischof-von-Henle-Straße 2, 93051 Regensburg, Germany (professional representative)
a g a i n s t
Fashion TV Programmgesellschaft mbH, Wasagasse 4, 1090 Wien, Austria (applicant), represented by Mitscherlich, Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).
On 20/06/2017, the Opposition Division takes the following
1. Opposition No B 2 330 218 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 231 461 for the figurative mark in Classes 9, 38 and 41. The opposition is based on European Union trade mark registration No 4 844 098 and Spanish trade mark registration No 3 082 978, both for the word mark ‘FASHION ONE’, and on Austrian trade mark registration No 275 811 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR in relation to each of the aforementioned earlier rights.
In its observations of 04/11/2014, the opponent claimed as a basis of the opposition, in addition to the aforementioned earlier trade marks (EUTM No 4 844 098, ES trade mark No 3 082 978 and AT trade mark No 275 811), several other trade marks, including trade marks in Bulgaria, Slovenia and Denmark, as well as trade marks in other, non-EU, territories.
In this regard, the Opposition Division notes that in its notice of opposition of 12/03/2014, submitted within the opposition period (which expired on 23/04/2014), the opponent did not indicate these additional rights as a basis of its opposition. The only earlier rights which were indicated in the said notice of opposition were the European Union trade mark registration No 4 844 098, Spanish trade mark registration No 3 082 978 and Austrian trade mark registration No 275 811.
According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain “a clear identification of the earlier mark or earlier right on which the opposition is based, namely:
(i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) of the Regulation or where the opposition is based on Article 8(3) of the Regulation, 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 Community trade mark.”
The indication of the earlier rights must be unequivocally clear and, as the notice of opposition itself, must be submitted within the opposition period.
Consequently, it is considered that all the additional earlier rights indicated by the opponent in its observations of 04/11/2014 are inadmissible as a basis of the present opposition, because they were claimed after the end of the opposition period. Such a claim is inadmissible because it contravenes Rule 15(2)(b) EUTMIR by broadening the scope of the opposition as defined in the notice of opposition.
Therefore, the examination will proceed in relation to the earlier rights which were validly claimed as basis of the opposition, namely EUTM No 4 844 098, ES No 3 082 978 and AT No 275 811.
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.
According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.
In the present case the evidence filed by the opponent in relation to earlier Spanish trade mark registration No 3 082 978 and Austrian trade mark registration No 275 811 is not in the language of the proceedings (which is English).
On 10/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 22/11/2014.
The opponent did not submit the necessary translations of the certificates of registration of the above-mentioned Spanish trade mark registration No 3 082 978 and Austrian trade mark registration No 275 811.
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.
It follows that the evidence filed by the opponent in relation to the earlier Spanish trade mark registration No 3 082 978 and Austrian trade mark registration No 275 811 cannot be taken into account and those earlier rights were not correctly substantiated.
As regards earlier EUTM No 4 844 098, it must be noted that the earlier trade mark claimed must be existing and valid both at the expiry of the substantiation period and at the moment of rendering the decision on opposition. It must be noted that in cases in which earlier European Union trade marks are invoked, the Opposition Division is entitled to check their details, ex officio, in the European Union trade mark registry. Upon having done so, the Opposition Division has established that the earlier European Union trade mark mentioned above, on which the opposition is based, had been totally revoked by a decision of the Cancellation Division in case No 9055 C, which was unsuccessfully appealed before the Boards of Appeal. Following the Boards decision in case No R 1325/2015-4, the aforementioned decision of the Cancellation Division, rendered on 27/05/2015 became final and was entered in the Register on 01/03/2017.
Therefore, the opposition must fail in relation to the earlier EUTM No 4 844 098 claimed by the opponent, as this right has ceased to exist and cannot serve as a basis of an 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.
Bearing in mind that the opponent has not proven the existence, validity and scope of protection of any of the earlier marks claimed as a basis of the opposition, the opposition must be rejected as unfounded.
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
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.