OPPOSITION DIVISION
OPPOSITION No B 2 415 613
Vina Santa Carolina S.A., Til Til 2228, Macul, Santiago, Chile (opponent),
represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain
(professional representative)
a g a i n s t
Vinisola S.r.l., Contrada Kazzen, 11, 91017 Pantelleria (TP), Italy (applicant),
represented by Eleonora Trigari, Via Zante,15/H, 20138 Milan, Italy (professional
representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 415 613 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 13 082 871 for the figurative mark , namely against all
the goods in Class 33. The opposition is based on European Union trade mark
registration No 6 804 421 for the word mark ‘CEFIRO’. 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
Decision on Opposition No B 2 415 613 page: 2 of 3
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely European Union trade mark No 6 804 421.
In the present case, the contested trade mark was published on 31/07/2014.
The request was filed in due time and is admissible as the earlier trade mark was
registered more than five years prior to the relevant date mentioned above.
On 28/03/2017, the opponent was given two months to file the requested proof of
use. This time limit was extended until 09/08/2017.
The opponent did not submit any evidence concerning the use of the earlier trade
mark on which the opposition is based. It did not argue that there were proper
reasons for non-use either.
According to Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use), if the opposing party does not provide such proof before the
time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
use).
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.
Decision on Opposition No B 2 415 613 page: 3 of 3
The Opposition Division
Gueorgui IVANOV Patricia LOPEZ
FERNANDEZ DE
CORRES
Frédérique SULPICE
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.