OPPOSITION No B 2 562 398
Oscaro.com (Société Anonyme), 34 avenue des Champs Elysées, 75008 Paris, France (opponent), represented by Cabinet Flechner, 22 avenue de Friedland, 75008 Paris, France (professional representative)
a g a i n s t
Bikershop Spółka z ograniczoną odpowiedzialnością Spółka komandytowa, Czarnowiejska 6, 31126 Kraków, Poland (applicant), represented by Maria Cichocka, ul. Nefrytowa 29/15, 30-798 Kraków, Poland (professional representative).
On 13/03/2017, the Opposition Division takes the following
1. Opposition No B 2 562 398 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 13 785 753, namely all the goods and services in Classes 12 and 35. The opposition is based on International trade mark registration No 1 105 585. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
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 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 present case the notice of opposition was accompanied by a copy of an extract of the WIPO database with a black and white representation of the trade mark showing that the colour blue was claimed.
On 29/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 10/05/2016.
On 03/05/2016, the opponent sent a letter to the Office requesting the latter for confirmation regarding the sufficient character of the copy of the above extract of the WIPO database to substantiate the earlier right on which the opposition is based, and an additional time period of two months in case it were not sufficient.
The directives of the Office which are also available online indicate in detail the practice of the Office regarding substantiation of earlier rights:
Where the earlier mark has been identified as being in colour during the three-month opposition period, there are two acceptable scenarios.
1) An official colour representation of the mark such as a registration certificate, renewal certificate, official extract, etc. is submitted that contains a reproduction of the mark in colour.
2) An official document is presented with the representation of the mark in black and white, together with a colour claim and a colour indication, both of which are translated into the language of the proceedings.
a. Where the national trade mark office does not provide a detailed colour claim identifying the colours, and instead says ‘Colours claimed’ (or similar wording), this is acceptable as long as this entry is translated into the language of the proceedings.
b. Where the national office (e.g. the Portuguese Trade Mark Office) does not provide any indication of a colour claim on its certificate or official extract, further official documents must be submitted to prove this claim (e.g. a copy of the publication of the mark in the bulletin).
However, the latter scenario is only acceptable if the opponent has also submitted a colour representation of the mark from an unofficial origin (separate sheet of paper, within the observations, attached to the notice of opposition, etc.).
Therefore, if the opponent has identified during the three-month opposition period that its figurative mark is in colour and has only submitted a black and white representation to the Office with no further evidence of a colour claim, the opposition based on that earlier right will be rejected as not substantiated in accordance with Rule 20(1) EUTMIR.
In the present case, the opponent submitted the required evidence on 12/05/2016, that is, only after the expiry of the abovementioned time limit.
According to Rule 19(4) EUTMIR, the Office shall 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.
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.
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.