OPPOSITION No B 2 371 345
Cimsa Ingenería de Sistemas, S.A., Paseo de la Habana, 26, 28036 Madrid, Spain (opponent), represented by Maria Nuria Capitán García, C/ Capitán Haya, 13 1° B, 28020 Madrid, Spain (professional representative)
a g a i n s t
Comco Ikarus GmbH, Am Flugplatz 11, 88367 Hohentengen, Germany (applicant), represented by Meyer-Dulheuer & Partner, Franklinstr. 46-48, 60486 Frankfurt, Germany (professional representative).
On 16/06/2017, the Opposition Division takes the following
1. Opposition No B 2 371 345 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 in Classes 12, 28 and 42 of European Union trade mark application No 12 655 551. On 10/07/2014, the opponent limited the extent of its opposition to all the goods in Class 12. The opposition is based on European Union trade mark registration No 1 211 259. The opponent invoked Article 8(1)(b)EUTMR.
Earlier trade mark
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.
Furthermore, if in the course of the proceedings, the earlier right ceases to exist (for instance because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may only be upheld with respect to an earlier right which is valid at the moment when the decision is taken. Since the European Union trade mark application and the earlier right which has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent (13/09/2006, T-191/04, Metro, EU: T: 2006:254, § 33 & 36)
Therefore, if a decision invalidates, revokes or results in some other way in the extinguishment of the earlier right, the opposition will be deemed unfounded insofar as it is based on that earlier right. If all the earlier rights on which an opposition is based cease to exist, the opponent will be granted the opportunity to withdraw its opposition. If it does not do so, the Office will take a decision rejecting the opposition.
On 20/04/2016, the Cancellation Division of the Office declared invalid the only earlier right on which the opposition is based, namely European Union trade mark registration No 1 211 259, in cancellation proceedings No 10 421 C. The decision was not appealed and it is now final.
On 06/12/2016, the opponent was requested to inform the Office within the time limit of 11/02/2017, whether or not, following the invalidity of the earlier EUTM, it maintained the opposition. The letter expressly indicated that, if the opponent did not withdraw the opposition within the time limit set, the Office would issue a decision rejecting the opposition as unfounded. The opponent did not reply to the request.
In consideration of the fact that the opponent did not submit any reply to the aforementioned request, the opposition must therefore 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
Angela DI BLASIO
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.