Decision on Opposition No B 2 769 803 page: 2 of 3
. The opponent invoked Article 8(1)(b)
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
filing or, where applicable, the date of priority 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
The applicant requested that the opponent submit proof of use of the trade marks on
which the opposition is based, namely on European Union trade mark registration No
5 424 163 and on Spanish trade mark registration No 2 048 183.
The request was filed in due time and is admissible given that the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
Indeed, the contested application was filed on 30/05/2016. The earlier European
Union trade mark registration No 5 424 163 was registered on 05/06/2010. For
Spanish trade mark registrations the relevant date for calculating the five-year grace
period is the date of publication of the registration, which, in case of the earlier
Spanish trade mark No 2 048 183, is 01/02/1998.
On 11/04/2017 the opponent was given two months to file the requested proof of use.
After an extension of the period for the opponent to reply to the observations of the
applicant and submit the requested proof of use, this time limit expired on
The opponent did not submit any evidence concerning the use of the earlier trade
marks 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.
The opposition must therefore be rejected pursuant to Article 47(2) EUTMR in
conjunction with Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use) as regards the earlier EUTM and pursuant to Article 47(2)
and (3) EUTMR and Rule 22(2) EUTMIR (in the version in force at the time of filing
the request for proof of use) as regards the earlier Spanish mark.