OPPOSITION No B 2 707 589
Archroma IP GmbH, Neuhofstrasse 11, 4153 Reinach, Switzerland (opponent), represented by Wallinger Ricker Schlotter Tostmann Patent- und Rechtsanwälte, Zweibrückenstr. 5-7, 80331 München, Germany (professional representative)
a g a i n s t
Inkpression Company, 28, Murphy str, 1505 Sofia, Bulgaria (applicant).
On 18/10/2017, the Opposition Division takes the following
1. Opposition No B 2 707 589 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 167 059 for the word mark ‘inkpression’, namely against all the goods in Class 2 and some of the goods and services in Classes 7, 16, 40 and 42. The opposition is based on international trade mark registration No 1 245 229 designating the European Union for the word mark ‘INKPRESSO’. The opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.
According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now 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 is 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 submit 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 evidence 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 that is not a European Union trade mark, the opposing party must submit 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 (in the version in force at the time of commencement of the adversarial part).
The earlier mark on which the opposition is based is international trade mark registration No 1 245 229 designating the European Union. The Office accepts as evidence of the filing or registration of earlier marks certificates issued by the appropriate official body (WIPO in the case of international trade mark registrations), extracts from official databases (WIPO’s ROMARIN or ‘Madrid Monitor’ databases) and extracts from official bulletins of the relevant national trade mark offices and WIPO. Extracts from TMview are also acceptable evidence concerning international registrations, as long as they contain the relevant data, since they reflect the information obtained directly from the WIPO database.
In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.
On 14/06/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following an extension of the cooling-off period and the subsequent opting out of one of the parties, this time limit was extended and expired on 29/08/2017.
The opponent did not submit any evidence concerning the substantiation of the earlier trade mark along with its observations which were received by the Office on 03/08/2017 and 31/08/2017.
According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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.
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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.