OPPOSITION No B 2 585 837

Chefaro Ireland Ltd., First Floor, Block A, The Crescent Building, Northwood Office Park, Dublin 9, Ireland (opponent), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Market America Inc., 1302 Pleasant Ridge Road, Greensboro North Carolina 27409, United States of America and Market (United Kingdom) Ltd., Salisbury House Cranmer Road, London  SW9 6EJ, United Kingdom, (applicants), represented by Kilburn & Strode LLP, 20 Red Lion Street, London  WC1R 4PJ, United Kingdom (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 585 837 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 14 272 272, that is, all the goods in Class 5. The opposition is based on international trade mark registration No 986 470 designating the European Union. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

XLS	TLS
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 not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 09/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended and finally expired on 23/03/2017.

On 22/03/2017, the opponent submitted an extract from the Office’s eSearch database with information on its international registration. However, this document is not sufficient to substantiate the earlier mark on which the opposition is based as it does not emanate from the administration by which the trade mark was registered, that is, WIPO.

The Office, in its letter of 29/03/2017, informed the opponent that it did not substantiate the earlier right claimed as a basis of the opposition before the time limit (no certificate of WIPO submitted).

By letter of 30/03/2017, the opponent submitted an extract from WIPO’s ROMARIN database in relation to the mark on which the opposition is based. Furthermore, the opponent argues that providing a WIPO certificate for an EU designation of an international mark is not compulsory and necessary to evidence the existence of the EU rights in certain conditions. According to the opponent, this is the case where the international mark and its designation have become independent from the basic registration, namely after a period of five years from the date of its registration. This, so the opponent states, follows from Article 6(2) of the Madrid Agreement and Protocol. The opponent argues that the contested EU designation has indeed been registered for more than five years and therefore it has become completely independent from the international registration and should be treated as an EUTM. As a result, Rule 19(2) EUTMIR does not apply.

With regard to the opponent’s arguments, it should be noted that Article 6(2) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks refers to the independence of an international registration from the basic application or the registration resulting therefrom, or from the basic registration. It does not refer to the independence of designations from the international registration. The earlier mark is not an EUTM, but an international registration designating the EU.

According to Rule 19(2) EUTMIR, within the period referred to in paragraph 1, the opposing party shall 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, the opposing party shall provide the following evidence (if the opposition is based on a trade mark which is not a European Union trade mark) … 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.

There is no exemption from the obligation set out in Rule 19(2) EUTMIR.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit 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 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

Natascha GALPERIN

Michal KRUK

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.