OPPOSITION No B 2 606 997
Stein Tec GmbH, Kaiserstraße 8, 4310 Rheinfelden, Switzerland (opponent), represented by Geitz Truckenmüller Lucht Christ Patentanwälte PartGmbG, Kriegsstr. 234, 76135 Karlsruhe, Germany (professional representative)
a g a i n s t
Tuffbau Limited, 730 London Road, West Thurrock, Grays, Essex, RM20 3NL, United Kingdom (applicant), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative).
On 18/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 606 997 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 14 346 019 for the figurative mark , namely against all the goods and services in Classes 7, 8, 35 and 37. The opposition is based on European Union trade mark application No 13 943 675 for the figurative mark , German trade mark registration No 39 806 485 for the word mark ‘STEIN TEC’, and German trade mark registration No 39 806 484 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
CEASING OF EXISTENCE OF EARLIER EUROPEAN UNION TRADE MARK APPLICATION No 13 943 675
According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:
- by the proprietors of earlier trade mark referred to in Article 8(2) as well as licensee authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);
[…].
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According to Article 8(2) EUTMR, ‘earlier trade marks’ means:
(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
- EU trade marks;
[…].
(b) applications for the trade marks referred to in subparagraph (a), subject to their registration.
Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.
In the present case, at the moment of filing the notice of opposition, one of the earlier rights on which the opposition is based was an application for European Union trade mark No 13 943 675. Against this application an opposition was pending under No B 2 565 300; it was directed at all the goods for which registration was sought, namely those in Class 19.
On 20/01/2017, the Opposition Division took a decision in opposition proceedings No B 2 565 300, upholding it for all the contested goods and rejecting European Union trade mark application No 13 943 675 in its entirety. Upon the applicant’s request, on 09/02/2017, the Office suspended the present opposition proceedings until a final decision was taken in the proceedings that had led to this suspension, namely opposition No B 2 565 300. The abovementioned decision of the Opposition Division was not appealed and it became final. The present proceedings were resumed and the parties were informed accordingly on 28/04/2017.
As it is apparent from the facts given above, the opponent’s European Union trade mark application No 13 943 675 which was invoked, inter alia, as basis of the opposition did not mature to registration and the corresponding right did not come into existence. Therefore, the opponent is not a proprietor of an ‘earlier trade mark’ referred to in Article 8(2) EUTMR.
Consequently, the opposition does not have a legal basis and does not comply with the requirements of the abovementioned legal provisions, inasmuch as the opponent relies on European Union trade mark application No 13 943 675.
The opposition must, therefore, be rejected as unfounded, insofar as it is based on this earlier right.
SUBSTANTIATION OF EARLIER GERMAN TRADE MARK REGISTRATIONS No 39 806 485 AND No 39 806 484
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.
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.
According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.
In the present case, the evidence filed by the opponent along with the notice of opposition in relation to earlier German trade mark registrations No 39 806 485 and No 39 806 484 consists of extracts from the German trade mark database, obtained on 10/11/2015. These documents are in German, which is not the language of the opposition proceedings.
On 26/11/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 31/03/2016.
On 30/03/2016, the opponent submitted observations and new extracts from the German trade mark database, in German, obtained on 22/03/2016. However, the opponent did not submit the necessary translations.
According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.
The opponent’s observations contain some data concerning the German trade marks at issue, in a narrative form. However, such a partial translation does not meet the requirements set in Rule 98(1) EUTMIR. In this context the Opposition Division notes that the descriptions of the trade mark registration particulars included in the opponent’s observations do not reproduce the structure and contents of the evidence to be translated.
Pursuant to Rule 98(1) EUTMIR, in principle the entire document must be translated and follow the structure of the original document. The Office does not consider that information already given in the language of the proceedings in the notice of opposition, or in documents attached thereto or submitted later (e.g. explanation of grounds etc.) amounts to a valid translation of a registration document, such as a registration certificate, even where such indications have been accepted for admissibility purposes. The translation has to be on a stand-alone basis and cannot be assembled from fragments taken from other documents.
Only irrelevant administrative indications (e.g. previous transfers of ownership that do not affect the opposition, administrative entries on fees, etc.) with no bearing on the case may be omitted from the translation (29/09/2011, T-479/08, Shoe with two stripes, EU:T:2011:549).
Admittedly, for some of the indications included in the evidence a translation is not required, insofar as the corresponding headers are indexed by INID codes and they are, to that extent, self-explanatory (e.g. [111] ‘Registernummer’ stands for ‘registration number’; [220] ‘Anmeldtag’ stands for ‘filing date’). Nevertheless, the evidence contains a number of other entries which are not denoted by INID codes (e.g. ‘Aktenzustand: Marke eingetragen’; numerous entries under the section ‘Verfahrensdaten’). Status of the trade mark or registry recordals that may have an impact on the validity and/or scope of protection of the earlier right are not considered ‘irrelevant administrative indications’ with no bearing on the case.
Therefore, the opponent’s submissions do not contain acceptable translations of the evidence.
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.
It follows that the evidence filed by the opponent concerning earlier German trade mark registrations No 39 806 485 and No 39 806 484 cannot be taken into account.
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, insofar as it is based on earlier German trade mark registrations No 39 806 485 and No 39 806 484.
Consequently, the opposition must be 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
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María Belén IBARRA DE DIEGO |
Solveiga BIEZA |
Andrea VALISA |
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.