OPPOSITION DIVISION
OPPOSITION No B 2 513 862
Javier Sánchez Salinero, C/ Nuria nº 59, 2º D – Centro Comercial Mirasierra 28034
Mardrid, Spain (opponent), represented by Wolke, Patentes y Marcas, Calle
Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative)
a g a i n s t
Passhotel Limited, 3rd Floor 24 Chiswell Street, London EC1Y 4YX United
Kingdom (applicant), represented by Invention S.R.L., Via delle Armi 1, 40137
Bologna, Italy (professional representative).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 513 862 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark regarding the applicable regulations
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 643 119 , namely services in
Classes 35, 39 and 43. The opposition is based on Spanish trade mark registration
No 3 509 416/8 ‘PASSPORTHOTELS’ registered for services in Class 43. The
opponent invoked Article 8(1)(a) and (b) EUTMR.
SUBSTANTIATION
According to Rule 19(3) EUTMIR (in the version in force at the time of
commencement of the adversarial part), 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.
Decision on Opposition No B 2 513 862 page: 2 of 3
In the present case, the evidence filed by the opponent, namely the registration
certificate proving the existence and scope of protection of its Spanish trade mark
registration is not in the language of the proceedings.
On 27/07/2015 the opponent was given two months, commencing after the ending of
the (extended) cooling-off period, to submit the required evidence and respective
translations. This time limit expired on 11/07/2017.
The opponent did not submit the necessary translation of the Spanish-language
registration certificate of the only earlier right the opposition is based on.
According to Rule 19(4) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will not take into account written
submissions or documents, or parts thereof, that have not been submitted in 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 (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), 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 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 513 862 page: 3 of 3
The Opposition Division
Francesca DRAGOSTIN Marianna KONDAS Michaela SIMANDLOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.