OPPOSITION DIVISION
OPPOSITION No B 2 535 543
MLT GmbH, Küstriner Straße 15, 94315 Straubing, Germany (opponent),
represented by Florian Endrös-Baum, EBA Endrös-Baum Associés,
Galeriestraße 6a, 80539 München, Germany (professional representative)
a g a i n s t
Mlt – Minet Lacing Technology S.A., Z.I. du Clos Marquet, Rue Michel Rondet,
42400 Saint-Chamond Cedex, France (applicant), represented by Curell Suñol
S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 535 543 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 13 657 903, namely against all the goods in Classes 6, 7,
17. The opposition is based on the German non-registered trade mark 'MLT', and on
the German company name 'MLT'. The opponent invoked Article 8(4) EUTMR.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
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:
Decision on Opposition No B 2 535 543 page: 2 of 3
(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 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 will be 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 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 (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 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 non-registered trade mark and of the other earlier sign used in
the course of trade (company name).
On 23/06/2015, the opponent was given two months, commencing after the end of
the cooling-off period, to submit the abovementioned material. This time limit was
subsequently extended and finally expired on 28/08/2017.
The opponent did not submit any evidence of use in the course of trade of the earlier
non-registered trade mark and of the other earlier sign used in the course of trade
(company name) 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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 535 543 page: 3 of 3
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.
The Opposition Division
Pedro JURADO
MONTEJANO
Martina GALLE Begoña URIARTE
VALIENTE
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.