OPPOSITION No B 2 772 617

Xoreax Ltd, 132 Menachem Begin Road, Azrieli Center 5, 27th floor, Tel Aviv, Israel (opponent), represented by Quirijn Meijnen, Raadhuisstraat 52C, 1016DG Amsterdam, Netherlands (professional representative)

a g a i n s t

Insight Editions LP, 800 A Street, San Rafael CA 94901, United States (of America) (holder), represented by Wilson Gunn, 5th Floor Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 772 617 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 and services in Classes 16, 28 and 35 of international registration designating the European Union No 1 297 991. The opposition is based on international trade mark registration No 1 254 410 designating the European Union for goods and services in Classes 9 and 42. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

INCREDIBUILD	IncrediBuilds
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 (emphasis added).

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.

In the present case the evidence filed by the opponent, within its time limit to substantiate the opposition, consists of a printout from the eSearch database.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark.

As explained in the Guidelines (Part C: Opposition, Section 1: Procedural matters, p. 35), as regards international registrations, extracts from the following databases are accepted (26/11/2014, T-240/13, Alifoods, EU:T:2014:994):

• Romarin (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection)

• TMview (as far as it contains all the relevant data).

In reply to the Office’s letter of 05/04/2017 informing the parties that the opponent did not substantiate its earlier right, on 13/04/2017, the opponent filed some observations together with a Romarin extract concerning its earlier international trade mark No 1 254 410 designating the European Union. In particular, it pointed out that the registration of an International registration designating the European Union has the same legal effects as a EUTM and therefore, according to Rule 19 EUTMIR, it is not necessary to substantiate the earlier right. In any case, the opponent considers that the evidence submitted is sufficient to substantiate the earlier trademark since the print out from the eSearch database can be considered as an equivalent document (of the registration certificate) emanating from the administration by which the trade mark was registered.

The practice of the Office has been to accept printouts from eSearch (previously CTM-Online) for international registrations with EU designation. However, this approach contravenes Rule 19(2)(a) EUTMIR (26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28). No exception to this rule is provided in Title XIII of the EUTMR. The current practice came into force on 01/07/2012 and applies to all oppositions filed as from this date (on or after). The old practice will only apply to oppositions with a filing date before 01/07/2012.  

In the present case, the opponent should have filed the relevant registration certificate or an extract from Romarin or TMview, containing all the relevant data. The Romarin extract filed on 13/04/2017 cannot be taken into account since it was filed after the time limit set by the Office to substantiate the opposition (that is 31/03/2017).

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Catherine MEDINA

Frédérique SULPICE

Begoña URIARTE VALIENTE

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.