Decision on Opposition No B 2 690 595 page: 2 of 3
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
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 trade mark that is not yet registered, the
opposing party must submit a copy of the relevant filing certificate or an equivalent
document emanating from the administration with which the trade mark application
was filed (except in the case of a European Union trade mark application) -
Rule 19(2)(a)(i) EUTMIR in the version in force at the time of commencement of the
In the present case, the opponent did not provide any evidence of the earlier trade
mark applications, on which the opposition is based, being registered within the time
limit given by the Office.
On 13/02/2017 the opponent was given two months (after opting out from an
extension of the cooling-off period), commencing after the ending of the cooling-off
period, to submit the abovementioned material. This time limit expired on 04/05/2017.
On 03/05/2016 the opponent submitted extracts from the Benelux national office of
the three earlier marks on which the opposition was based. The extracts showed that
the marks were pending registrations.
On 08/11/2017, the Office requested the opponent an update on the status of the
earlier trade marks. The opponent submitted the required evidence on the following
day, namely on 09/11/2017. The updated extracts show that the three earlier rights
were all registered in the Benelux on 20/10/2016. Therefore, they were registered
within the period the opponent was given to substantiate its earlier rights, namely
until 04/05/2017. Consequently, this late evidence cannot be taken into account by
the Opposition Division to prove the existence, validity and scope of protection of the
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