OPPOSITION DIVISION
OPPOSITION No B 2 398 462
Sogrape Vinhos, S.A., Lugar de Aldeia Nova, Avintes, 4430-771 Vila Nova de Gaia,
Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon,
14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Boutique Brands Limited, 8 Girdlers Road, London W14 0PU, United Kingdom
(applicant), represented by EIP, Fairfax House 15 Fulwood Place, London WC1V
6HU, United Kingdom (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 398 462 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 European Union trade mark
application No 12 800 538, , namely all the goods for which protection is
sought in Class 33. The opposition is based on European Union trade mark
registration No 1 820 018, for the figurative trade mark . The opponent
invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARKS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
On 05/09/2016, the applicant filed a limitation request in which Class 33 was
amended to read: spirits and spirits-based alcoholic beverages. The opponent was
duly informed and in absence of any reply the opposition was maintained.
Consequently, the opposition is directed against all the above mentioned goods in
Class 33.
Decision on Opposition No B 2 398 462 page: 2 of 3
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication 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 submit proof of use of the trade mark on
which the opposition is based, namely European Union trade mark registration
No 1 820 018.
The request was filed in due time and is admissible as the earlier trade mark was
registered more than five years prior to the relevant date mentioned above.
On 28/03/2017 the opponent was given two months to file the requested proof of use.
Upon the opponent’s request, this time limit was extended by another two months.
The opponent did not submit any evidence concerning the use of the earlier trade
mark 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 (in the version in force at the time of filing the
request for proof of use), 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 47(2) EUTMR and
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
use).
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.
Decision on Opposition No B 2 398 462 page: 3 of 3
The Opposition Division
Oana-Alina STURZA Arkadiusz GORNY Loreto URRACA LUQUE
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.