NCOI | Decision 2782129
Date Published: Oct 15, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 782 129
Total Tim - Serviços de Telecomunicações Móveis e Afins, Unipessoal, Lda.,
Avenida Infante Santo, N.º 2 H, 3.º, 1350-178 Lisbon, Portugal (opponent),
represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon,
Portugal (professional representative)
a g a i n s t
NCOI Holding B.V., Marathon 7, 1213 PD Hilversum, Netherlands (applicant)
represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382
LX Weesp, Netherlands (professional representative).
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 782 129 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 528 086 for the word mark ‘NCOI’, namely
against all the goods and services in Classes 9, 16, 35 and 41. The opposition is
based on Portuguese trade mark registration No 486 319 for the figurative mark
displayed below. The opponent invoked Article 8(1)(b) EUTMR.
NCOI
Earlier trade mark Contested sign
Decision on Opposition No B 2 782 129 page: 2 of 4
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 registered trade mark that is not a
European Union trade mark, the opposing party must submit 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 version in force at the time of commencement of the
adversarial part).
In the notice of opposition the mark was presented in colour. However there was no
evidence from an official source attached to the notice of opposition.
On 17/10/2016 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 22/02/2017.
On 17/11/2016, within the time limit, the opponent submitted the following evidence:
- A certified copy of Portuguese registration certificate of Portuguese Trade
mark registration No 486 319 and its translation to the language of
proceedings, showing the mark in black and white;
- A copy of an extract from the Portuguese official data base INPI showing
Portuguese Trade mark registration No 486 319 in black and white.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier
trade mark, since the evidence does not contain a representation of the sign as
invoked in the notice of opposition, namely in colour or any indication of a colour
claim.
Decision on Opposition No B 2 782 129 page: 3 of 4
Where the national office (the Portuguese Trade Mark Office) does not provide any
indication of a colour claim in its certificate or official, further official documents must
be submitted to prove this claim (e.g. a colour copy of the publication of the mark in
the bulletin).
However no official documents were submitted showing the mark in colour or with a
colour claim.
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
Konstantinos MITROU Lynn BURTCHAELL Denitza STOYANOVA-
VALCHANOVA
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
Decision on Opposition No B 2 782 129 page: 4 of 4
(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.