OPPOSITION No B 2 494 931

Audi AG, Auto-Union-Str. 1, 85045 Ingolstadt, Germany (opponent), represented by Annette Krah, Patentabteilung I/EZ-1, 85045 Ingolstadt, Germany (professional representative)

a g a i n s t

TDI Tuning Ltd, Suite 128, Waterhouse Business Centre, Cromar Way, Chelmsford East Sussex CM1 2QE, United Kingdom (applicant), represented by Laudens, Blackwell House  Guildhall Yard, London  EC2V 5AE, United Kingdom (professional representative).

On 20/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 494 931 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 and services of European Union trade mark application No 13 371 554. The opposition is based on international trade mark registration No 644 085 designating the Benelux countries, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, France, Greece, Hungary, Italy, Latvia, Portugal, Slovakia and Slovenia for the word mark ‘TDI’ registered for goods in Class 12, as well as on German trade mark registration No 39 506 096, French trade mark registration No 94 545 011, Benelux trade mark registration No 559 293 and Italian trade mark registration No 701 360 for the word marks ‘TDI’ registered for Class 12. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

TDI
Earlier trade marks	Contested sign

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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 shall 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 shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his 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.

1) Substantiation of earlier German trade mark registration No 39 506 096, French trade mark registration No 94 545 011, Benelux trade mark registration No 559 293 and Italian trade mark registration No 701 360

In the present case the notice of opposition was not accompanied by any evidence as regards these earlier trade marks on which the opposition is, inter alia, based.

On 30/04/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/09/2015. On 24/07/2015 the opponent was informed that the substantiation period has been extended until 24/09/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks in the relevant time period set by the Office.

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 his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

Therefore, the opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

2) Substantiation of earlier international trade mark registration No 644 085 designating the Benelux countries, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, France, Greece, Hungary, Italy, Latvia, Portugal, Slovakia and Slovenia

In principles, any registration certificate or the most recent renewal certificate showing the validity of the earlier mark beyond the time limit that was given to the opponent to substantiate its opposition, issued by a national office, or by WIPO if it concerns an international registration, constitutes valid evidence. (Guidelines for Examination in the Office, Part C, Opposition, Procedural matters, 4.2.3.1)

In the present case the evidence filed by the opponent as regards the international registration consists of an extract from the WIPO data base, Romarin, which comprises information about the relevant earlier right, including its expiry date on 02/09/2015. Although at the time of submission of the relevant document together with the notice of opposition, namely 13/03/2015, this earlier right was still valid, it expired within the period given to the opponent to substantiate its earlier rights, namely 24/09/2015. It was the onus on the opponent to provide the Opposition Division with a renewal certificate or evidence demonstrating that the relevant earlier right has been renewed.  

Consequently, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier right because no evidence of renewal was accordingly provided.

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 his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier right too.

Therefore, on the basis of the above mentioned conclusions on the substantiation of the earlier rights, presented as basis of the opposition, the Opposition Division considered that the opposition is unfounded and it is rejected in its entirety.

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

Steve HAUSER

Cristina CRESPO MOLTÓ

Julie GOUTARD

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.