OPPOSITION No B 2 594 441
Brandit – Gestão de Representações e Marcas LDA, Rua Zona Industrial de Magrou, n.º 230, 4750-561 Barcelos, Portugal (opponent), represented by Marco Sousa, Rua Quinta do Monte, N° 96, 4805-151 Caldas das Taipas, Portugal (professional representative)
a g a i n s t
J. Bünting Beteiligungs AG, Brunnenstr. 37, 26789 Leer / Ostfriesland, Germany (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).
On 18/01/2017, the Opposition Division takes the following
1. Opposition No B 2 594 441 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 604 401 for the figurative mark , filed for goods and services in Classes 16 and 35. The opposition is based on Portuguese trade mark registration No 418 320 for the word mark ‘MYTIME’. The opponent invoked Article 8(1)(a) and (b) EUTMR.
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.
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 evidence filed by the opponent consists of an agreement (marked as confidential, so that the Opposition Division will describe it in only general terms) for the assignment of the earlier mark (in Portuguese, accompanied by a translation into the language of the proceedings).
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it is a private document concerning the agreement on the transfer of the ownership over the earlier mark and does not provide evidence on the existence, validity and scope of protection of the earlier mark. Furthermore, this document not only does not emanate from the administration by which the trade mark was registered but there are no indications that the document was submitted for registration with the competent national administration.
The opponent did not submit any further evidence concerning the substantiation of the earlier trade mark (such as a registration certificate or an extract form the official database of the competent national administration).
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 his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.
The opposition must therefore be rejected as unfounded.
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
Begoña URIARTE VALIENTE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.