OPPOSITION No B 2 737 909

Novatron Oy, Myllyhaantie 6 E, 33960 Pirkkala, Finland (opponent), represented by Berggren OY, Tampere, Visiokatu 1, 33720 Tampere, Finland (professional representative)

a g a i n s t

Xortex eBusiness GmbH, Veldner Straße 29, 4120 Neufelden, Austria (applicant), represented by SWS Scheed Wöss Rechtsanwälte OG, Jaxstraße 2-4, 4020 Linz, Austria (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 737 909 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 15 363 451, namely against all the services in Class 42. The opposition is based on international trade mark registration No 1 161 833 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

XSITE	xsites
Earlier trade mark	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 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 this regard, it must be noted that an international trade mark registration designating the European Union has the same legal effect as a European Union trade mark registration, but it is not a European Union trade mark registration. The Office is not competent to administer international registrations and is not the administration by which international registrations are registered, which is the World Intellectual Property Organization (WIPO). Consequently, to substantiate an opposition based on such a trade mark, the opponent must provide the Office with a copy of the relevant registration certificate or an extract from the accepted official databases (as explained in the Guidelines for Examination in the Office, Part C – Opposition, Section 1 – Procedural Matters, available on the Office’s website: https://euipo.europa.eu).

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 05/09/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 10/01/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

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 shall 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

Keeva DOHERTY

Milda CERNIAUSKAITE

Denitza STOYANOVA-VALCHANOVA

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.