OPPOSITION No B 2 447 863
Maximiliano Naselli, Rakovsli, 157A et.6 tavan, 1000 Sofia, Bulgaria (opponent), represented by Ruskov and Colleagues, Verila Str. 2, 1463 Sofia, Bulgaria (professional representative)
a g a i n s t
Reneta Ganeva, Rakovski Str. 84, 1000 Sofia, Bulgaria (applicant), represented by Ralitsa Venelinova Dimova, j.k. Mladost 2, bl.218, entr.1, app.12, 1799 Sofia, Bulgaria and Milena Kichashka, Mladost 2, P.O. Box 21, 1799 Sofia, Bulgaria (professional representatives).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 447 863 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 305 065, namely against all the goods and services in Classes 9, 35 and 41. The opposition is based on Bulgarian trade mark registration No 133 050. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.
Earlier trade mark
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.
In the present case the evidence filed by the opponent consists of an application certificate and a letter from the Bulgarian Patent Office confirming that the application complies with the formal requirements and will be published.
In addition, on 26/08/2015, within the time limit to submit facts evidence and arguments, the opponent filed a letter in which it stated that the earlier mark had been registered on 18/08/2015 and made reference to an official website where the trade mark status could be checked.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it does not contain all the necessary elements. The opponent should have provided evidence of the registration of the trade mark as required by Rule 19(2)(a)(ii) EUTMIR by means of a certificate of registration or equivalent document, but failed to do so.
For the sake of completeness, it should be also noted that the need to provide evidence of the registration of the earlier mark and the means to do so where clearly explained in the information sheet annexed to the letter sent by the Office to the opponent on 29/04/2015. In addition, the Office’s Guidelines for Examination, Part C, Section 1, page 35, state the following (highlight added):
If the opposition is based on an application, the opponent must submit evidence that the application was filed at the national office or that an international application was filed with WIPO. Once the earlier application has proceeded to registration, the opponent must submit evidence of registration. If, after the adversarial part of the proceedings, the opponent provides evidence that the national application in fact proceeded to registration before the time limit set in Rule 19(1) EUTMIR, the earlier mark will be rejected as unfounded under Rule 20(1) EUTMIR. An application certificate is not sufficient to prove that the trade mark has been registered. In other words, it cannot serve to prove the existence of a trade mark registration.
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.
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
Cristina CRESPO MOLTÓ
José Antonio GARRIDO OTAOLA
Ana MUÑIZ RODRÍGUEZ
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.