OPPOSITION No B 2 774 548

Leman Geneva SA, Rue du Nant 8, 1207 Genève, Switzerland (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Rootacase Electronic GmbH, Lise Meitner Str. 1-13, 42119 Wuppertal, Germany (applicant), represented by Tergau & Walkenhorst – Patentanwälte Rechtsanwälte, Eschersheimer Landstraße 105-107, 60322 Frankfurt am Main, Germany (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 774 548 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 of European Union trade mark application No 15 572 233 , namely against goods in Classes 7, 11 and 21. The opposition is based on international trade mark registration No 1 173 683 ‘LEMAN’ designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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.

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 06/10/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 11/02/2017.

With the letter of the Office, dated 16/02/2017, the opponent was informed that the earlier right claimed as a basis of the opposition was not substantiated in the given time limit.

The opponent submitted the required evidence for information purposes only, namely an extract from ROMARIN, the database of the World Intellectual Property Organization, on 27/03/2017, that is, only after the expiry of the abovementioned time limit.

With its submission from the same date, the opponent further requests that the Office considers the opposition substantiated, as it has already been found admissible with a letter of the Office, dated 06/10/2016. The opponent further stated that, as the earlier right is an international registration designating the European Union, the submission of documents proving the existence, validity and scope of protection of the earlier right would not be needed. The opponent quotes the ´Guidelines for Examination in the Office´, Part C, Opposition, Procedural Matters, where it is stated that ´[i]f the earlier mark or application is an EUTM, the opponent does not have to submit any documents as far as the existence and validity of the EUTM (application) is concerned. The examination of the substantiation will be done ex officio with respect to the data contained in the Office’s database’.

However, the substantiation is defined by Rule 19(2) EUTMIR and refers to the proof of existence, validity and scope of protection of the earlier mark as well as the proof of entitlement to file the opposition. After the opponent has been notified of the admissibility of the opposition (with the letter, dated 06/10/2016), it was given two months counted from the end of the cooling-off period in which not only to complete its file, that is, present all the evidence in support of its opposition, but also to prove the existence and validity of the earlier right invoked and its entitlement to file the opposition.

Furthermore, it is noted that the abovementioned quote from the ´Guidelines for Examination in the Office´, explains that the Office examines the substantiation of the earlier rights ex officio only for the European Union trade marks. Following from the requirements of Rule 19(2)(a)(ii) EUTMIR, in the case when the earlier  trade mark is not a European Union  trade mark (which is the case at issue), the opponent has to provide evidence of its filing or registration, by submitting documents emanating from the administration by which the trade mark was registered, which in the case at issue is the World Intellectual Property Organization. The opponent, as explained above, submitted this evidence only after the given time limit.

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.

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 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

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.