OPPOSITION DIVISION
OPPOSITION No B 2 825 449
Rolli-Pet Tiernahrung GmbH, Angersberg 18, 4483 Hargelsberg, Austria
(opponent), represented by Vossius & Partner Patentanwälte Rechtsanwälte
mbB, Siebertstr. 3, 81675 München, Germany (professional representative)
a g a i n s t
Changchun Chengji Technology CO., LTD., RM 601, 6/F, Building D, No.155,
Jinhe Street, Gaoxin District, Changchun, People’s Republic of China (applicant),
represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao
(Vizcaya), Spain (professional representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 825 449 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 of European Union trade mark
application No 15 673 429, , namely against all the goods in Class 18.
The opposition is based on international trade mark registration No 660 612
designating Germany and registered for goods in Class 31, Austrian
trade mark registration No 165 867, , registered for goods in
Class 31 and Austrian trade mark registration No 164 742 for the word mark
Decision on Opposition No B 2 825 449 page: 2 of 3
‘PEDDY’, registered for goods in Class 31. The opponent invoked Article 8(1)(b)
EUTMR in relation to all the earlier rights.
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant.
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
filing or, where applicable, the date of priority of the contested trade mark, the earlier
trade mark has been put to genuine use in the territories in which it is protected in
connection with the goods or services for which it is registered and which the
opponent cites as justification for its opposition, or that there are proper reasons for
non-use. The earlier mark is subject to the use obligation if, at that date, it has been
registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
For international registrations designating the European Union, the ‘date of filing’ or,
where applicable, the ‘date of priority’ of the contested mark within the meaning of
Article 47(2) EUTMR, that is to say for the purposes of establishing the five-year
period of use obligation for the earlier mark, is considered to be the date of
registration, the date of subsequent designation of the European Union or the date of
priority of the contested international registration, as applicable. The earlier mark is
subject to the use obligation if, at that date, it has been registered for at least five
years.
The applicant requested that the opponent submit proof of use of the trade marks on
which the opposition is based, namely international trade mark registration
No 660 612 designating Germany and Austrian trade mark registrations No 165 867
and No 164 742.
The request was filed in due time and is admissible given that the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
On 06/07/2017, the opponent was given two months to file the requested proof of
use, namely until 11/09/2017.
The opponent did not submit any evidence concerning the use of the earlier trade
marks on which the opposition is based. It did not argue that there were proper
reasons for non-use either.
According to Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use), if the opposing party does not provide such proof before the
time limit expired, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
use).
Decision on Opposition No B 2 825 449 page: 3 of 3
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.
The Opposition Division
Volker MENSING Manuela RUSEVA Marzena MACIAK
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.