OPPOSITION No B 2 804 618

M-Sport Limited, Dovenby Hall, Cockermouth, CA13 0PN, United Kingdom (opponent), represented by IP LAB, 20-22 Wedlock Road, London, London City of N1 7GU, United Kingdom (professional representative)

a g a i n s t

Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809, Munich, Germany (applicant).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 804 618 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 695 133 for the word mark ‘M Sport’. The opposition is based on, UK trade mark registration No 2 263 485 for the figurative mark  for Classes 7, 37, 41 and 42, and the non-registered trade mark in the UK for the figurative mark.  for ‘Motor sport activity generally’. The opponent invoked Articles 8(1)(b), 8(5) and 8(4) EUTMR.

SUBSTANTIATION of UK trade mark registration No 2 263 485

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 15/12/2016 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 20/04/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

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 as far as it is based on this earlier right.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent also based its opposition on one sign used in the course of trade of more than mere local significance.

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 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 will be 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 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 15/12/2016, 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 20/04/2017.

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.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Julie GOUTARD

Birgit FILTENBORG

Loreto URRACA LUQUE

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.