wandering | Decision 2712258
Date Published: Oct 10, 2017
OPPOSITION No B 2 712 258
The Wandering Limited, 99 Stanley Road, Bootle, Merseyside L20 7DA, United Kingdom (opponent), represented by Bircham Dyson Bell LLP, 50 Broadway, London Westminster SW1H 0BL, United Kingdom (professional representative)
a g a i n s t
Gvlifestyle S.R.L., Via Tosarelli N. 184, 40055 Castenaso, Italy and Jato S.R.L., Via Cà Ricchi 7, 40068 San Lazzaro di Savena (BO), Italy (applicants), represented by Dimitri Russo S.R.L., Via G. Bozzi, 47A, 70121 Bari, Italy (professional representative).
On 10/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 712 258 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 15 161 482 ‘wandering’ (word mark), namely those in Classes 14, 18 and 25. The opposition is based on: (1) the non-registered trade mark ‘WANDERING’ and (2) the trade name ‘THE WANDERING’, both of the foregoing claimed to have been used in the course of trade of more than mere local significance in The Netherlands, Estonia, The Czech Republic, Denmark, Poland, United Kingdom, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland and (3) the company name ‘THE WANDERING LTD’ claimed to have been used in the course of trade of more than mere local significance in the European Union. The opponent invoked Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
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 the present case the notice of opposition was not accompanied by any evidence of use of the earlier signs in the course of trade.
On 28/06/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 02/11/2016.
The opponent did not submit any evidence of use in the course of trade of any of the earlier signs on which the opposition is based.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.
COSTS
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 applicants 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 applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Lena FRANKENBERG GLANTZ | Oana-Alina STURZA | Marianna KONDÁS |
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.