OPPOSITION DIVISION
OPPOSITION No B 2 754 631
Delhaize Le Lion / De Leeuw B.V., Rue Osseghem 53, 1080 Bruxelles, Belgium
(opponent), represented by Distinctive IP Benelux Sarl, 2, Domaine Brameschhof,
8290 Kehlen, Grand Duché de Luxembourg, Luxemburg (professional
representative)
a g a i n s t
Henrik Heuser, Jean-Schmitz-Str. 12, 53842 Troisdorf, Germany (applicant),
represented by Steffen Koch, Holtorfer Str. 35, 53229 Bonn, Germany (professional
representative)
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 754 631 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 399 025 for the figurative mark
, namely against all the goods and services in Classes 16, 35
and 36. The opposition is based on Benelux trade mark registration No 893 759 for
the figurative mark in Classes 9, 16, 35 and 36.
The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 754 631 page: 2 of 3
SUBSTANTIATION
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(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 submitted 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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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 (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence 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 that is not a
European Union trade mark, the opposing party must submit 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 version in force at the time of commencement of the
adversarial part).
In the present case, the evidence filed by the opponent consisted of the translation of
a registration certificate of the Benelux trade mark registration No 893 759, the only
earlier right on which the opposition is based. The opponent submitted other
evidence with the purpose of demonstrating that the earlier mark ‘has a minimum
level of distinctiveness’, namely registration certificates of trade marks on which the
opposition is not based, and of website extracts.
The evidence mentioned above is not sufficient to substantiate the opponent’s
Benelux trade mark, because there is no original version of the registration certificate
originating from an official body (i.e. issued by the Benelux Office for Intellectual
Property (BOIP).
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.
Decision on Opposition No B 2 754 631 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
Eva Inés PÉREZ
SANTONJA
María del Carmen SUCH
SANCHEZ
Ric WASLEY
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.