OPPOSITION No B 2 548 371

Antonio Pomares Boix, José Ramos, 2, Entlo., 03203 Elche, Spain (opponent), represented by Patentes y Marcas A. Pomares, S.L., C/ José Ramos, 2 Entlo., 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

Agentura “Tria Robit”, SIA, Vīlandes iela 5-2, Riga 1010, Latvia (applicant), represented by Agency Tria Robit, Vilandes iela 5, Riga 1010, Latvia (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 548 371 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 710 736, namely against all the services in Class 45. The opposition is based on Spanish trade mark registration No 2 130 395. The opponent invoked Article 8(1)(b) EUTMR

REGIMARK	Regimark
Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 76(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 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 will 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 must 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.

According to Rule 19(3) EUTMIR, 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.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case, the evidence filed by the opponent together with the notice of opposition consists of a printout with source “Inpamar database” and a translation into the language of the proceedings of an extract from the SITADEX database of the Spanish Patent and Trademark Office. The notice of opposition was not, however, accompanied by an original extract from the official database of the Spanish Patent and Trademark Office.

On 08/09/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate the earlier right invoked as the basis of the opposition and to submit further facts, evidence and arguments in support of the opposition. This time limit expired on 13/01/2016.

By means of the same communication, the opponent was also informed of the particulars to be proven for the purpose of substantiating its earlier right and of the means of evidence allowed (registration certificates or equivalent official documents, such as official publications, either in paper or in electronic form, or extracts from records or official databases, provided they contain, alone or combined, all the particulars of the registration) as well as of the fact that extracts from private records or databases are not acceptable in opposition proceedings.

On 05/01/2016, the opponent filed observations accompanied by evidence with regard to its earlier mark, namely a copy of an extract from a database of unknown origin.

In this regard, the following is to be noted: extracts from databases are accepted as a means of evidence pursuant to Rule 19(2)(a)(ii) EUTMIR only if their origin is an official database, i.e. the official database of one of the national offices or of the WIPO, and if they are equivalent to a certificate of registration or of a last renewal. The documents must contain an official identification of the authority or database from which they originate. Finally, extracts from commercial databases are not accepted, even if they reproduce exactly the same information as the official extracts.

The evidence mentioned above submitted by the opponent on 05/01/2016 is not sufficient to substantiate the opponent’s earlier trade mark because the database from which the information in relation to the above mentioned earlier mark is extracted is unknown, as it lacks any identification in relation to its source.

Furthermore, the Opposition Division points out that the above document submitted by the opponent on 05/01/2016 was not accompanied by a translation into the language of the proceedings. For the sake of completeness, it is to be noted that the document submitted by the opponent together with the notice of opposition and referring to the SITADEX database cannot be accepted to amount to a translation of the document of unknown source submitted by the opponent on 05/01/2016, because this document does not meet the requirements set in Rule 98(1) EUTMIR.

In this context, the Opposition Division notes that the document in the language of the proceedings submitted by the opponent together with the notice of opposition does not contain all the relevant data of the document of unknown source submitted by the opponent on 05/01/2016, because the document in English does not reproduce the structure and contents of the evidence to be translated (the two documents refer to different dates and, furthermore, the section “Acts of processing” obviously does not contain all entries reflected in the Spanish document).

Finally, the Opposition Division also considers that the printout with source “Inpamar database” submitted together with the notice of opposition cannot be accepted, because it is not an extract from an official record or database.

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 will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

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

Biruté SATAITE-GONZALEZ

Keeva DOHERTY

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.