OPPOSITION No B 2 408 535

Informatica Corporation, 100 Cardinal Way, Redwood City, California 94063, United States of America (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft MBB, Rolandsmauer 15, 49074 Osnabrueck, Germany (professional representative)

a g a i n s t

Kabushiki Kaisha Informatix, Muza Kawasaki Central Tower 27 F, 1310 Omiyacho, Saiwai-ku, Kawasaki City, Kanagawa  212-8554, Japan (applicant), represented by CSY London, 10 Fetter Lane, London GB_LND EC4A 1BR, United Kingdom  (professional representative)

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 408 535 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 of European Union trade mark application No 12 878 732 in Classes 9, 39 and 42. The opposition is based on international trade mark registration designating the European Union No 1 184 774, Irish trade mark registrations No 236 947 and No 236 946. The opponent invoked Article 8(1)(b) EUTMR.

International trade mark registration No 1 184 774   Irish trade mark registration No 236 947 INFORMATICA (word) Irish trade mark registration No 236 946
Opponent’s trade marks	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 the Office’s Guidelines, when an earlier right on which the opposition is based reaches the end of protection after expiry of the time limit set by the Office to substantiate the opposition, the opposition is not automatically rejected in the absence of further communications or proof from the opponent. Rather a communication is issued to the opponent in which it is invited to submit evidence of renewal which is communicated to the applicant (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 68 et seq.). If there is no proper evidence of renewal, the earlier registration is not substantiated and will not be taken into account (Guidelines for Examination in the Office, Part C, Opposition).

In the present case the evidence filed by the opponent consists of two Irish registration certificates which were submitted together with the notice of opposition on 18/09/2014. The documents contain information that the Irish marks were registered on 27/09/2006 under No 236 947 and No 236 946. As from 01/07/1996 Irish trade marks are valid for a period of 10 years as from their date of registration. Consequently, the registration of these two marks expired on 27/09/2016 and proof of renewal should have been submitted.

The time limit to submit further evidence in support of the opposition was, after extension, set by the Office at 29/05/2017. The opponent did not send any evidence, nor did it submit any arguments that would explain the absence of proof of renewal.

As far as the invoked international registration, designating the EU, No 12 878 732 is concerned, no evidence of registration has been submitted at all.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR, and by extension Rule 19(2)(a)(ii), the opposing party has not proven the existence, validity and scope of protection of its earlier marks or earlier rights, 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

Ioana MOISESCU

Cynthia DEN DEKKER

Jessica LEWIS

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.