OPPOSITION No B 2 729 070

MDS SGPS, S.A., Avenida da Boavista, 1277/81, 2º, 4100-130 Lordelo do Ouro, Portugal (opponent), represented by Joana Dez-Réis Grilo, Rua Rodrigo da Fonseca, 82- 2º Esq., 1250-193 Lisboa, Portugal (professional representative)

a g a i n s t

Herenco AB, Skolgatan 24, 551 80 Jönköping, Sweden (applicant), represented by Advokatfirman Vinge KB, Smålandsgatan 20, 111 87 Stockholm, Sweden (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 729 070 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 15 230 337, namely against all the services in Class 36. The opposition is based on Portuguese trade mark registration No 467 778 (for the services in Class 36). The opponent invoked Article 8(1) (b) EUTMR.

HERCO
Earlier trade mark	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.

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.

On 04/08/2016, the opponent was informed of the time-limit, commencing after the ending of the cooling-off period, to substantiate the earlier right invoked as the basis of the opposition and to submit further facts, evidence and arguments in support of the opposition. This time limit expired on 09/12/2016.

By means of the same communication, the opponent was also informed of the particulars to be proven for the purpose of substantiating its earlier right and of the means of evidence allowed (registration certificates or equivalent official documents, such as official publications, either in paper or in electronic form, or extracts from records or official databases, provided they contain, alone or combined, all the particulars of the registration).

On 07/12/2016, the opponent filed observations accompanied by evidence with regard to its earlier mark, namely a translation of a registration certificate from the Portuguese national Office into English, the language of proceedings. It was not, however, accompanied by the registration certificate itself.

The evidence mentioned above submitted by the opponent is not sufficient to substantiate the opponent’s earlier trade mark because no registration certificate grounding the basis of the opposition has been shown.

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

Carlos MATEO PÉREZ

Keeva DOHERTY

Martin EBERL

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.