OPPOSITION No B 2 723 750

Cuadrado, S.A., Polig. Ind. Fuente del Jarro, Ciudad Sevilla, 6, 46980 Paterna (Valencia), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Luderix International, Rue de Versailles, 59650 Villeneuve D'ascq, France (applicant), represented by Cabinet Plasseraud, 31 Rue des Poissonceaux, 59044 Lille Cedex, France (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 750 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 178 593 for the figurative mark , namely against all the goods and services in Classes 25 and 35. The opposition is based on Spanish trade mark registration No 2 083 855 for the figurative mark , Spanish trade mark registration No 1 948 670 for the figurative mark  and Spanish trade mark registration No 1 318 311 for the word mark ‘PICK OUIC. CUADRADO, S.A., VALENCIA’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(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.

The applicant requested that the opponent submits proof of use of the three earlier trade marks on which the opposition is based, namely the Spanish trade marks No 1 318 311, No 2 083 855 and No 1 948 670.

The request for proof of use, together with the observations, was filed on 15/02/2017, i.e. after the original time limit, set by the Office. However, the applicant requested continuation of proceedings pursuant to Article 82 EUTMR, which was granted by the Office as far as the request for proof of use was concerned and both parties were notified on 30/03/2017 that the consequences of having failed to observe the respective time limit are deemed not to have occurred. At the same time, the parties were informed that the Article 82 EUTMR is not applicable to the time limit set for the applicant in order to submit observations in reply to the opposition.  

Given that the earlier trade marks are registered more than five years prior to the relevant date mentioned above, the request for proof of use is admissible.

On 30/03/2017, the opponent was given two months to file the requested proof of use. This time limit expired on 30/05/2017.

However, the opponent did not furnish 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, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

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

Julia SCHRADER

Renata COTTRELL

Denitza STOYANOVA-VALCHANOVA

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.