OPPOSITION No B 2 430 083

Novapress SA, 127, avenue Ledru Rollin, 75011 Paris, France (opponent), represented by Neolex Selarl-Cabinet d'Avocats, 61, rue La Boétie, 75008 Paris, France (professional representative)

a g a i n s t

Litmus Games Limited, 2nd Floor, 59 Lansdowne Place, Hove BN3 1FL, United Kingdom (applicant), represented by Joshi Worldwide IP, Citypoint, 1 Ropemaker Street, London, City of London, EC2Y 9HT, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 430 083 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 and services of European Union trade mark application No 12 731 915 ‘NOVALODE’ (word mark), namely against all the goods and services in Classes 9, 16, 28 and 41. The opposition is based on French trade mark registrations No 4 012 604 ‘NOVA GAME’ and No 3 029 684 ‘NOVA’ (word marks). The opponent invoked Article 8(1)(b) and Article 8(5) 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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 27/11/2014, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was initially set to expire on 01/04/2015. Following an extension of the period before the commencement of the adversarial part of the proceedings, the time limit for the opposing party was also extended and expired on 01/02/2017.

Furthermore, it is noted that by means of the communication of 27/11/2014, the opponent was also informed in respect of, inter alia, the evidence necessary for the substantiation of the earlier rights on which the opposition is based. In particular, as regards translations, the following was mentioned: where it is necessary to translate registration certificates (or equivalent documents) into the language of the proceedings, the translation to be filed by the opponent must faithfully reproduce the structure and contents of the original document, including the standard wording showing to what each entry actually refers. Only administrative indications with no bearing on the case may be omitted from the translation.

On 01/04/2015, the opponent filed copies of two documents entitled Certificat d’enregistrement (four pages in French) and two other documents in the language of the proceedings containing data concerning the trade marks on which the opposition is based. However, such documents do not meet the requirements set in Rule 98(1) EUTMIR.

In this context the Opposition Division notes that the English documents submitted by the opponent have a completely different structure than the documents that are in the French language. Furthermore, they contain data that does not appear in the evidence referred to above, namely the indications shown under the entry ‘Historical’.  Hence, said documents do not reproduce the structure and contents of the evidence to be translated.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

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

Lena FRANKENBERG GLANTZ

Oana-Alina STURZA

Irina SOTIROVA

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.