OPPOSITION No B 2 328 824

Mundotextil – Industrias Têxteis, S.A., Rua da Saudade 280 a 400, Apartado 23, 4815-901 Vizela, Portugal (opponent), represented by Ana Cristina Ribeiro Costa, Av. General Humberto Delgado, 181, 4800-158 Guimarães, Portugal (professional representative)

a g a i n s t

Brillux GmbH & Co. KG, Weseler Str. 401, 48163 Münster, Germany (holder), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

On 08/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 328 824 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 of international trade mark registration designating the European Union No 1 162 203, namely against all the goods in Class 24. The opposition is based on European Union trade mark registration No 4 128 096. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

Earlier trade mark	Contested sign

CEASING OF EXISTENCE of the opponent’s European Union trade mark registration No 4 128 096

According to Article 41(1) EUTMR, the proprietor of earlier trade marks referred to in Article 8(2) EUTMR may file an opposition to the registration of a European Union trade mark application.

Earlier trade marks in the sense of Article 8(2) EUTMR are, inter alia, European Union trade marks.

Therefore, the existence of an earlier right within the meaning of Article 8(2) EUTMR is a requisite for the filing of an opposition.

In the present case, the opponent based its opposition on European Union trade mark registration No 4 128 096.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 shall 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 shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

However, if the earlier mark or application is an EUTM, the opponent does not have to submit any documents regarding the existence and validity of the EUTM (application). The examination of the substantiation will be done ex officio with respect to the data contained in the Office’s database.

In the present case, earlier European Union trade mark registration No 4 128 096, on which the opposition is based, has expired. The Office informed the opponent on 28/04/2014 that the registration of its earlier EUTM No 4 128 096 was due for renewal on 22/11/2014 and gave the opponent until 01/12/2014 to file a renewal request. The opponent was given a further six months to file a renewal request (i.e. until 01/06/2015), subject to an additional fee for late payment. The opponent did not file any request for renewal and did not pay the fees within the time given. On 23/06/2015, the Office informed the opponent that its EUTM No 4 128 096 had been cancelled from the register on 02/06/2015 and that the cancellation became effective as from 22/11/2014.

If, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has not been renewed), the final opposition decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. Since the contested international registration designating the European Union No 1 162 203 and the earlier right, which has ceased to have effect, no longer coexist, the opposition cannot be upheld (13/09/2006, T-191/04, METRO, § 33 and 36).

On 22/11/2016, the Office informed the opponent that the earlier mark claimed as the basis for the opposition had expired and requested the opponent to inform the Office whether or not it wanted to maintain its opposition. On 20/01/2017, the opponent informed the Office that it maintained its opposition.

Taking into account the above, there is no valid earlier right in the sense of Articles 41(1) and 8(2) EUTMR that can constitute a valid basis for the opposition. Consequently, the opposition must be rejected as unfounded insofar as it is based on this earlier trade mark.

INADMISSIBILITY of Article 8(4) EUTMR as a ground of the opposition

In response to the Office’s letter informing the opponent that the only earlier mark claimed as the basis for the opposition had expired and that therefore the opposition would be rejected as unfounded, the opponent replied on 20/01/2017 that it maintained its opposition based on 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:

(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.

However, this ground was not explicitly claimed in the notice of opposition filed on 20/03/2014. The opponent argues that it can be deduced from the explanation of the grounds in the notice of opposition that this ground was also claimed.

According to Article 41(3) EUTMR and Rule 15(2)(c) EUTMIR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents. The grounds are also considered properly indicated if the earlier mark is identified and it is possible to unequivocally identify the grounds.

According to Rule 17(2) EUTMIR, if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR, and if those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

On 20/03/2014, the opponent filed a notice of opposition against the contested application. In the notice of opposition, the opponent explicitly indicated that the opposition is based on Article 8(1)(a) and (b) and Article 8(5) EUTMR. In the explanation of grounds and other remarks, the opponent mentions, inter alia, that there is a likelihood of confusion, and that its earlier mark is well known and has a reputation that could lead to an unfair advantage for the holder and be detrimental to the distinctiveness or repute of the opponent’s earlier mark.

There is no element in the explanation of grounds in the notice of opposition that could be considered to indicate that the opponent also based its opposition on Article 8(4) EUTMR. Not only are terms such as ‘non-registered trade mark’ or ‘sign used in the course of trade of more than mere local significance’ not used, but there is also no reference to the legislation or law governing the ‘unregistered’ sign and the fact that this legislation or law confers on its proprietor the right to prohibit the use of a subsequent mark. This finding is confirmed by the fact that the opponent also does not include any reference to or argument based on Article 8(4) EUTMR in its further facts and evidence filed on 17/10/2017.

The opposition must therefore, be rejected as inadmissible, as far as it is based on Article 8(4) EUTMR.

INVALIDITY CLAIM

In response to the letter of the Office informing the opponent that the only earlier mark claimed as a basis for the opposition had expired and that, therefore, the opposition would be rejected as unfounded, the opponent stated that the holder filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Furthermore, the opponent states that it claims the invalidity of the contested sign based on Article 51(1) and Article 56 EUTMR. However, these grounds cannot be claimed as a basis of opposition. In view of the above, the holder’s claims must be disregarded as far as this decision is concerned. The opponent has the right to file an invalidity action, as stated in the EUTMR, in separate invalidity proceedings.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Vanessa PAGE

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.