OPPOSITION No B 2 435 249

Zyx Ideas, S.L., C/ De la Costa, 30, 08023 Barcelona, Spain (opponent), represented by Marco & Asociados Patentes y Marcas, S.L., C/ Carpinteros, 6 Planta 2ª, Oficina 35, (Parque Empresarial Pinares Llanos), 28670 Villaviciosa de Odon (Madrid), Spain (professional representative)

a g a i n s t

Data Access Sàrl, 57 rue d'Amsterdam, 75008 Paris, France (holder), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 435 249 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 190 922, namely against all the goods in Classes 7, 12, 18 and 25. The opposition is based on Spanish trade mark registration No 3 023 611. The opponent invoked Article 8(1)(a) and (b) EUTMR.

STUDEBAKER	STUDEBAKER
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.

In the present case the notice of opposition was accompanied by a translation, in English, of the registration certificate of the earlier mark but not by a copy of the relevant registration certificate itself.

On 23/12/2014, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired was subsequently extended and expired on 26/01/2017.

In this time limit, the opponent did not submit any evidence concerning the substantiation of the earlier trade mark and on 03/02/2017, the Office informed the opponent that it had not substantiated its earlier right.

On 06/02/2017, the opponent replied that it did not agree with this conclusion since it had sent a copy of the registration title by fax on 07/11/2014 and enclosed a copy of a fax report dated 07/11/2014 at 17:09 showing that a three-page document had successfully been sent to the Office on 07/11/2014 at 17:13 (Result: OK) as well as a three-page document consisting of a cover letter and a copy of the registration certificate of the earlier mark. The fax report also shows the image of the cover letter of this three-page document in which the opponent explains that its earlier fax sent on the same date, namely the thirteen-page fax communication containing the notice of opposition as well as the translation of the registration title of the earlier mark, had been sent by mistake without a copy of such title. The opponent indicated that it was now sending a copy of the 'securities register of Spanish opponent's brands numbers 3057400 and 3057407 as well as their English translations'.

It remains unclear to the Office why the copy of the fax report filed by the opponent is dated 07/11/2014 at 17:09 in relation to a fax that was sent on the same date but at a later time, namely at 17:13. Moreover, although the three-page document enclosed in the opponent's reply of 06/02/2017 contains a copy of the registration certificate of earlier Spanish trade mark No 3 023 611, it remains unclear whether the original fax communication that according to the opponent was sent to the Office on 07/11/2014 effectively contained a copy of this registration certificate of the earlier trade mark. Indeed, in the cover letter of this three-page document – also visible on the fax report – the opponent clearly refers to other trade mark registrations, namely Spanish trade mark registrations No 3 057 400 and 3 057 407. Yet, the present opposition is not based on these earlier trade marks.

Be that as it may, it is to be noted in any event that the search performed by the Office in its telecommunications systems' logs has not proved fruitful. According to these logs, the only fax received by the Office from the opponent on 07/11/2014 is the thirteen-page fax communication that contained the notice of opposition accompanied by the translation of the registration certificate of the earlier mark but without a copy of such title.

In view of this, the Office considers that the opponent did not submit any evidence concerning the substantiation of Spanish trade mark registration No 3 023 611 on which the opposition is based.

It is to be noted that 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Begoña URIARTE VALIENTE

Martina GALLE

Pedro JURADO MONTEJANO

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.