OPPOSITION No B 2 493 297

Gustav Magenwirth GmbH & Co. KG, Stuttgarter Straße 48, 72574 Bad Urach, Germany (opponent), represented by Friese Goeden Patentanwälte PARTGmbB, Widenmayerstr. 49, 80538 München, Germany (professional representative)

a g a i n s t

Manufacturas Tomas S.A., Calle Budapest 19-29 – Pol. Ind. Cabezo Beaza, 30593 La Palma – Cartagena (Murcia), Spain (applicant), represented by José Miguel Muñoz Orgaz, Calle José María de Haro 61 Planta 13-I, 46022 Valencia, Spain (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 493 297 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 415 864, namely against all the goods in Class 12. The opposition is based on international trade mark registration No 1 080 083 designating Germany. The opponent invoked Article 8(1)(b) EUTMR.

MT
Earlier trade mark	Contested sign

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.

On 31/03/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the above mentioned material. Following an extension of the cooling off period, this time limit expired on 05/06/2017.

The evidence filed by the opponent that was received by the Office on 29/05/2017, consists of a registration certificate and an extract from the ROMARIN database of the World Intellectual Property Organization (WIPO).

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier international trade mark registration No 1 080 083 designating Germany for the word mark ‘TM’, because it does not refer to the designation of Germany of the international registration which was claimed in the notice of opposition.

According to the evidence provided, the earlier international registration designates the European Union, Australia, Japan, Republic of Korea, Mexico, New Zealand, Switzerland, China, Russia and Vietnam.

According to Article 145 EUTMR, the Regulation and its Implementing Regulations apply to international registrations designating the European Union. Therefore, an international registration designating the European Union has the same effects as a European Union trade mark registration. Since, according to Article 1(2) EUTMR, a European Union trade mark has a unitary character, an international registration designating the European Union cannot be split into parts by the holder for the purposes of an opposition.

Since the evidence does not support the fact of the existence of an international registration designating Germany, claimed in the opposition, the abovementioned database extracts are not sufficient to substantiate the opponent’s claim as regards international trade mark registration No 1 080 083 designating Germany.

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

Adriana VAN ROODEN

Katarzyna ZANIECKA

Martina GALLE

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.