PADTHAI WOKBAR | Decision 2645326
Date Published: Oct 2, 2017
OPPOSITION No B 2 645 326
Ferralfaim, S.L, Avda. Jacinto Benavente 9, Fuengirola, Spain (opponent), represented by Almudena Abellán Pérez, Plaza de la Fuensanta, nº 2- 8ºC. Edificio Hispania, 30008 Murcia, Spain (professional representative)
a g a i n s t
Agnes Horváth, Budapest, Mikszáth Kálmán utca 13, 1028, Hungary (holder), represented by Balla Szilárd, Budapest, Bíró utca 7, 1122, Hungary (professional representative).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 645 326 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all of the goods and services of international registration designating the European Union No 1 247 943 for the figurative mark, namely against all the goods and services in Classes 30 and 43. The opposition is based on the following rights:
- European Union trade mark registration No 14 136 171 for the figurative mark , based on goods and services in Classes 29, 30 and 43;
- Spanish trade mark registration No 3 566 106 for the figurative mark , based on services in Class 43;
- Spanish trade mark registration No 2 987 748 for the figurative mark, based on services in Class 43.
The opponent invoked Article 8(1)(a) and (b) EUTMR.
ADMISSIBILITY OF THE OPPONENT’S EUROPEAN UNION TRADE MARK No 14 136 171 AND SPANISH TRADE MARK No 3 566 106
The opposition is directed against an international trade mark registration designating the EU. According to Article 151(1) EUTMR, an international registration designating the European Union shall, from the date of its registration pursuant to Article 2(4) of the Madrid Protocol or from the date of the subsequent designation of the European Union pursuant to Article 3ter(2) of the Madrid Protocol, have the same effect as an application for a European Union trade mark.
According to Article 156 EUTMR, international registrations designating the EU are subject to opposition in the same way as published European Union trade mark applications.
Pursuant to the provisions of Article 41 EUTMR, notice of opposition to registration of the trade mark may be given by the proprietors of earlier trade marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks, on the grounds that it may not be registered under Article 8 EUTMR.
According to Article 8(2)(a) EUTMR, ‘earlier trade marks’ within the meaning of Article 8(1) EUTMR are those trade marks 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, including (i) European Union trade marks, and (ii) trade marks registered in a Member State.
In the present case, the EU was designated in the contested international registration on 09/12/2014.
On 26/01/2016, the opponent filed notice of opposition against the contested international registration. The opponent indicated that the basis of the opposition is, inter alia:
- European Union trade mark registration No 14 136 171 with the filing date of 25/05/2015;
- Spanish trade mark registration No 3 566 106 with the filing date of 11/06/2015.
Consequently, the abovementioned rights relied upon by the opponent as the basis of the opposition are not earlier within the meaning of Article 8(2) EUTMR, and the opposition must be rejected as inadmissible, insofar as it is based on these rights.
SUBSTANTIATION OF EARLIER SPANISH TRADE MARK No 2 987 748
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 the present case, the evidence filed by the opponent regarding earlier Spanish trade mark No 2 987 748 consists of a certified copy of the certificate of registration and a translation thereof.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it does not demonstrate that the proprietorship of this right belongs to the opponent, Ferralfaim, S.L. According to the certificate of registration, the owners of this trade mark are Juan Antonio Ferre Martínez and Manuel Alejandro Alcalá Ordóñez. The evidence does not contain any indication about transfer of rights, license agreements between the owners of the trade mark and the opponent, or any other information regarding this discrepancy that would allow for establishing the opponent’s entitlement to file the opposition based on this 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, as far as it is based on this earlier mark.
It follows that the opposition must be rejected in its entirety.
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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
VAN DEN EEDE
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.