OPPOSITION No B 2 768 987

Valoria Residuos, S.L., Antigua Carretera de Burgos, s/n, 39608 Cacicedo de Camargo, Spain (opponent), represented by José Donato García Gómez, C/ La Gloria, 105, 3° E, 39012 Santander (Cantabria), Spain (professional representative)

a g a i n s t

Reclay Holding GmbH, Im Zollhafen 2-4, 50678 Köln, Germany (applicant), represented by Osborne Clarke, Innere Kanalstr. 15, 50823 Köln, Germany (professional representative).

On 17/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 768 987 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 15 506 637 , namely against all the services in Classes 35, 39, 40 and 42. The opposition is based on Spanish trade mark application No 3 611 526 . The opponent invoked Article 8(1)(b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.

SUBSTANTIATION

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(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 submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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 trade mark that is not yet registered, the opposing party must submit a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the evidence submitted by the opponent in support of its earlier trade mark is a document in the form of a database extract in Spanish, accompanied by an English translation thereof. This document does not contain any indication that it has been issued by the competent body, which is the Spanish Trade Mark and Patent Office (Oficina Española de Patentes y Marcas – OEPM), as the trade mark invoked is identified as a Spanish trade mark registration in the notice of opposition.

The Office’s Guidelines are very clear in this respect, since they establish that an unaltered electronic image of an online database extract reproduced on a separate sheet is acceptable as long as it contains an official identification of the authority or database from which it originates (Guidelines for Examination in the Office, Part C, Opposition, Section 1, Procedural matters, page 34, version of 01/10/2017).

Consequently, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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 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.

The Opposition Division

Richard BIANCHI

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.