OPPOSITION No B 2 810 771

Valle, Ballina y Fernandez, S.A., La Espuncia, s/n, 33300 Villaviciosa (Asturias), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Fida S.p.A., Via della Posta 7, 20123 Milano, Italy (applicant), represented by Perani & Partners SPA, Piazza San Babila 5, 20122 Milano, Italy (professional representative).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 810 771 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, which are all in Class 30, of European Union trade mark application No 15 636 236 for the word mark ‘GLACIA’. According to the notice of opposition, the opposition is based on Spanish trade mark registration No 1 788 395, also for the word mark ‘GLACIA’. The opponent invoked Article 8(1)(b) EUTMR.

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. (emphasis added)

In the present case the evidence filed by the opponent in support of its earlier trade mark is a document with the format of a database extract, in Spanish, together with its translation in English. This document does not contain any indication which may allow inferring that it has been issued by the competent body which, since the trade mark invoked is identified as a Spanish trade mark registration in the notice of opposition, is the Spanish Trade mark and Patent Office (Oficina Española de Patentes y Marcas – OEPM).

The Office’s Guidelines are very clear in this respect since they establish that the unaltered electronic image of an online database extract reproduced on a separate sheet is acceptable as long as it contains an official identification of the authority or database from which it originates (Guidelines for Examination in the Office, Part C, Opposition, Section 1, Procedural matters, page 35, version of 01/02/2017).

Therefore, the evidence submitted is not sufficient to prove the existence, validity and scope of protection of the earlier trade mark invoked.

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

Anna ZIÓŁKOWSKA

Catherine MEDINA

Frédérique SULPICE

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.