OPPOSITION No B 2 773 219

CWN Technologies Limited, 3rd Floor 207 Regent Street, London W1B 3HH, United Kingdom (opponent)

a g a i n s t

Walltopia AD, 1B Bulgaria Blvd., 5570 Letnitsa, Bulgaria (applicant).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 773 219 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 423 114 for the figurative trade mark , namely against all the services in Class 41. The opposition is based on Portuguese trade mark registration No 561 831 for the word mark NINJA. The opponent invoked Article 8(1)(b) EUTMR.

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.

In the notice of opposition filed on 19/09/2016, the opponent identified itself as ‘CWN TECHNOLOGIES LIMITED’. According to the information provided in the opposition notice form, the opponent identified itself as the owner/co-owner/licensee of the earlier right on which the opposition is based, namely Portuguese trade mark whose filing number is 2016 2000 101 625 (application No 561 831).

On 22/09/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit further material in order to substantiate the earlier right. On 27/01/2017, the opponent submitted observations along with a registration certificate from the Portuguese Institute of Industrial Property and its translation into English.

According to the evidence submitted, the opponent in the current proceedings is not the owner of the earlier Portuguese trade mark. The owner of the earlier mark is ‘NINJA INVESTMENTS LIMITED’, which does not coincide with the name of the identified opponent. Therefore, it is clear that the companies are different legal entities.

The Office was not informed of any transfer of the abovementioned trade mark nor did it receive evidence thereof, such as a deed of transfer, a copy of the transfer request or any other evidence showing the change of ownership of the registration. Moreover, it should be highlighted that the opponent did not claim or show evidence that it was acting as a licensee or person authorised by the proprietor.

Consequently, the opponent has not shown that it owns, co-owns or acts as licensee in relation to the earlier right on which the opposition is based.

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 shall 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Eva Inés PÉREZ SANTONJA

Carlos MATEO PÉREZ

Lucinda CARNEY

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.