OPPOSITION DIVISION
OPPOSITION No B 2 814 864
Imas Makina Sanayi Anonim Sirketi, 2.Organize Sanayi Bolgesi Lalehan Cad.
No:61, Selcuklu Konya, Turkey (opponent), represented by Esquivel, Martin, Pinto
& Sessano European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 –
piso 3, 28001 Madrid, Spain (professional representative)
a g a i n s t
Silvio Franz, Einsteinstraße 68, 14770 Brandenburg, Germany (applicant),
represented by Patentanwälte Bressel und Partner MbB, Park Kolonnaden,
Potsdamer Platz 10, 10785 Berlin, Germany (professional representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 814 864 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 677 974 ‘IMAS’, in classes 6, 7, 9, 14, 28, 40, 41,
42. The opposition is based on the non-registered trade mark ‘IMAS’ in the United
Kingdom, Italy, Netherlands, France, Germany, Hungary, Bulgaria, Belgium, Greece,
Romania and Slovenia for machines and machine tools; band saw machines and
parts, grain milling machines and parts motors and engines (except for land
vehicles); machine coupling and transmission components (except for land vehicles);
agricultural implements other than hand-operated; incubators for eggs. The opponent
invoked Article 8(4) EUTMR.
Decision on Opposition No B 2 814 864 page: 2 of 3
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a European Union trade mark, irrespective of the requirements to be
met under national law in order to acquire exclusive rights.
According to Article 95(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 will be restricted in this examination to the facts,
evidence and arguments submitted 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 (in the version in force at the time of
commencement of the adversarial part), 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 (in the version in force at the time of
commencement of the adversarial part), 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 the present case, the notice of opposition was not accompanied by any evidence
of use of the earlier sign in the course of trade.
On 20/12/2016, the opponent was given two months, commencing after the end of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 25/04/2017.
The opponent did not submit any evidence of use in the course of trade of the earlier
sign on which the opposition is based.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the
opposition must be rejected as unfounded.
Decision on Opposition No B 2 814 864 page: 3 of 3
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
José Antonio GARRIDO
OTAOLA
Erkki Münter Marine DARTEYRE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.