OPPOSITION DIVISION
OPPOSITION No B 2 561 911
Cofina Media, S.A., Rua Luciana Stegagno Picchio, nº. 3, 1549 023 Lisbon, Portugal
(opponent), represented by Cruz, Menezes & Associados – Soc. Advogados, RL.,
Rua Victor Cordon, nº 10 A, 4.º e 5.º Pisos, 1249-202 Lisbon, Portugal (professional
representative)
a g a i n s t
Franmax UAB, Savanorių pr. 247, 02300 Vilnius, Lithuania (applicant), represented
by Metida Law Firm Žabolienė and Partners, Business center VERTAS Gynéjų str.
16, 01109 Vilnius, Lithuania (professional representative).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 561 911 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against all the services in Class 35 of European
Union trade mark application No 13 848 627. The opposition is based on Portuguese
trade mark registration No 376 018. The opponent invoked Article 8(1)(b) EUTMR.
MÁXIMA
Earlier trade mark Contested sign
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 561 911 page: 2 of 4
SUBSTANTIATION
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).
In the present case, the evidence filed by the opponent on 17/06/2016, on
11/04/2017 and on 12/04/2017 comprises the following:
1. Extract taken from an unspecified database concerning the registration of a
‘national trade mark Nº. 376018’, accompanied by a list of the goods and
services for which registration is granted. The information is displayed in
English language. On the second page, the four letters INPI only precedes
the remaining information.
2. Extract taken from the INPI (Portuguese National Intellectual Property Office)
database containing information about the renewal of the Portuguese trade
mark No. 376 018. This extract only contains the number of six classes in the
section titled ‘Nice Classification’. The information of this document is
displayed in English language.
3. Extract taken from the ‘Boletim da Propiedade Industrial Nº 2015/05/22 in
Portuguese language. No mention of goods and services is made in this
document.
The evidence listed above is not sufficient to substantiate the opponent’s earlier
Portuguese trade mark registration No 376 018, because it does not contain all the
necessary elements.
Decision on Opposition No B 2 561 911 page: 3 of 4
In particular, as is apparent from the above, the extract containing the complete
information about the renewal of the aforementioned trade mark registration does not
specify for which goods and services the mark was renewed, stating only for which
classes of goods and services it was renewed.
Therefore, it is not possible to determine from these documents the goods and
services for which earlier Portuguese trade mark registration No 376 018 was
renewed and for which it is therefore now registered, that is, the scope of protection
of the earlier mark.
For the sake of completeness, the Opposition Division notes in any case that the only
document submitted by the opponent containing a full list of goods and services,
namely the document No.1, it is incomplete as it does not provide any information
about its origin.
In fact, a close examination of this document shows that it does not contain any
incontrovertible indication of the source from which it emanates. As a matter of
example, the four letters ‘INPI’ could designate, inter alia, the French Industrial
Property Office, the Portuguese National Institute of Industrial Property but also the
National Institute of Industrial Property of Brasil.
Extracts from databases or registration certificates are accepted only if they are from
an official source. The unaltered electronic image of an online database extract
reproduced on a separate sheet is acceptable as long as it contains an official
identification of the authority or database from which it originates. In the present
case, the lack of identification of the known official source renders it impossible to
determine whether or not the evidence listed above as No. 1 is official in nature.
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.
In view of all the foregoing, the opposition must therefore be rejected as unfounded.
COSTS
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.
Decision on Opposition No B 2 561 911 page: 4 of 4
The Opposition Division
Angela DI BLASIO Andrea VALISA María Clara
IBÁÑEZ FIORILLO
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.